Google LLC v. James Sarino
Claim Number: FA2204001994158
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is James Sarino (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtube2mp3downloader.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 28, 2022, eNom, LLC confirmed by e-mail to the Forum that the <youtube2mp3downloader.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@youtube2mp3downloader.com. Also on April 29, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that the YOUTUBE mark is a coined term that was created by its then-owner YouTube, Inc. in February 2005 for use as the brand of a video sharing service. The <youtube.com> website was launched on April 24, 2005, and the YOUTUBE mark and related logos have been prominently featured since then at the website and otherwise in marketing for the service. The popularity of the <youtube.com> website grew quickly. In July 2006, Nielsen Netratings named <youtube.com> the fastest growing website between January and June 2006. The website ended that period with a monthly unique audience of 19.6 million, and with 724 million web page views. In August 2006, the Wall Street Journal reported that the <youtube.com> website hosted approximately 6.1 million videos and had about 500,000 user accounts. Time magazine hailed YouTube as the best invention of the year in its 2006 edition. In November 2006, Google acquired YouTube, Inc., and in 2007 was assigned the YOUTUBE mark and YouTube, Inc.’s other marks and their associated goodwill. In February 2007, Brandchannel announced that the YOUTUBE brand ranked third in its 2006 Reader’s Choice Awards, behind only GOOGLE and APPLE. By November of that year, comScore reported that YouTube users watched 2.9 billion videos and Nielsen Netratings reported that the service had 67.5 million unique users. Since then, YouTube rapidly became the leading online video sharing site that it is today. For 2013, Nielsen Netratings rated YouTube as the fifth “Top U.S. Web Brand” and the number one “U.S. Online Video Brand” with more than 128 million unique viewers. Interbrand recently ranked YouTube as the #30 best global brand. According to Alexa, YouTube is currently the second most viewed website in the world and it ranks in the top ten in numerous countries. Today, YouTube has more than 2 billion monthly logged-in users, and more than 500 hours of content are uploaded to YouTube every minute. There are localized versions of YouTube in more than 100 countries around the world and across 80 languages, making YouTube accessible to more than 95% of the world’s Internet users. Each day, people watch more than a billion hours of video on YouTube and generate billions of views. Complainant’s YouTube service reaches more 18-34 and 18-49 year olds in the U.S. than any television network (broadcast or cable) – and it does that on the YouTube mobile platform alone. Complainant has rights in the YOUTUBE mark through its registration with multiple trademark agencies, including in the United States in 2009.
Complainant alleges that the disputed domain name is identical or confusingly similar to its YOUTUBE mark as it fully incorporates the mark and merely adds the non-distinctive generic or descriptive terms “2”, “mp3”, and “downloader”, as well as the generic top-level domain ".com”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its YOUTUBE mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to purport to enable Internet users to directly violate Complainant’s YouTube terms of service for commercial gain. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name opportunistically and in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark. Respondent uses the disputed domain name to attract and confuse Internet users with an impression of association with Complainant. Respondent uses the disputed domain name in association with a website that purports to enable Internet users to violate Complainant’s YouTube Terms of Service for commercial gain. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark YOUTUBE and uses it to provide a well-known video sharing service. The mark is famous.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain name was registered in 2012.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark, refers to Complainant’s service, and purports to enable Internet users to violate Complainant’s You Tube terms of service.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates Complainant’s YOUTUBE mark in its entirety, merely adding the generic or descriptive terms “2”, “mp3”, and “downloader”, as well as the generic top-level domain ".com”. Incorporating the entirety of a complainant’s mark in a disputed domain name with the addition of digits, generic, or descriptive terms and a gTLD is generally not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not authorized or licensed to Respondent any rights in the YOUTUBE mark. Respondent is not commonly known by the disputed domain name: WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information of record shows that the registrant is “James Sarino”. Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website purports to enable Internet users to violate Complainant’s YouTube terms of service. Panels have found that a respondent’s use of domain name to enable users to violate a complainant’s terms of service is not bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Hui Chen / FoxPDF Software Inc / Chen Hui, FA1940677 (Forum May 24, 2021) (no rights or legitimate interests where the respondent used the <youtube-mp3.online> and <onlineyoutube.com> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Google Inc. v. David Miller, FA1067791 (Forum Oct. 24, 2007) (finding that respondent’s use of the <youtubex.com> domain name in association with a website that enabled Internet users to download and save video clips from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore the Panel finds that Respondent fails to use the disputed domain name to make bona fide offering of goods or services or a legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving website purports to enable Internet users to violate Complainant’s terms of service. Past panels have found that use of disputed domain name to enable users to violate a complainant’s terms of service is evidence of bad faith use and registration. See Google LLC v. Hui Chen / FoxPDF Software Inc / Chen Hui, FA1940677 (Forum May 24, 2021) (finding bad faith use and registration where the respondent used the <youtube-mp3.online> and <onlineyoutube.com> domain names with websites that enabled users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service); see also Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (finding use of the <listentoyoutube.com> domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy); see also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of the <10youtube.com > domain name in association with a website that enabled download of content from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy); see also Google Inc. v. David Miller, FA1067791 (Forum Oct. 24, 2007) (finding use of the <youtubex.com> domain name in association with a website that enabled download of video clips from Google’s YouTube website in violation of Google’s YouTube Terms of Service to constitute bad faith use and registration under the Policy). Therefore the Panel finds that Respondent registered and uses and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and refers to Complainant’s services. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this too constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtube2mp3downloader.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 27, 2022
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