Google LLC v. Geovany Ferreira
Claim Number: FA2205001998583
Complainant is Google LLC (“Complainant”), represented by Paxton Endres of Dickinson Wright PLLC, Michigan, USA. Respondent is Geovany Ferreira (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubeconversor.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil Jimenez as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2022; the Forum received payment on May 31, 2022.
On June 1, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <youtubeconversor.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@youtubeconversor.com. Also on June 3, 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.
A timely Response was received and determined to be complete on June 21, 2022.
On June 29, 2022 Complainant submitted an Additional Submission in response to Respondent’s reply to the Complaint, which was deemed to be in compliance with Supplemental Rule 7.
On June 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil J. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
According to Complainant, Google LLC, 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.
Complainant contends as well that the YOUTUBE marks have been widely promoted among members of the general consuming public since 2005, and have exclusively identified Google’s digital content delivery destination and community. As a result, the YOUTUBE marks symbolize the substantial goodwill associated with Google and are of significant value, and famous.
Complainant also states that the <youtubeconversor.com> Domain Name was registered on December 31, 2019, well after Google (or its predecessor in interest) acquired enforceable rights in the YOUTUBE marks and applied for registration of the same. The Domain Name resolves to a website that prominently features the mark “YouTube Conversor” in a brand-like manner at the top of and throughout the page. The website also encourages and claims to enable Internet users to download and save content from Complainant’s YouTube website in an mp3 format.
Lastly, Complainant argues that the service offered by Respondent at Respondent’s website directly violates, or encourages users directly to violate, Complainant’s YouTube Terms of Service. Specifically, YouTube’s Terms of Service expressly prohibits (i) the downloading and saving of content from the YouTube website unless expressly authorized by Complainant, and (ii) the circumventing (or attempted circumventing) of any part of the YouTube service including features that prevent or restrict the copying or other use of Content.
B. Respondent
In turn, Respondent stated in his response (drafted in Portuguese and attaching an English translation allegedly made by Google Translator) that he was notified of what he deemed is a dispute related with a domain, but he did not understand well what was happening because the domain is disabled and he has no interest in it. Respondent adds (in an also quite poor Portuguese) that when he purchased the domain he was never informed that he could not use it because the domain was available for registration, but in any case he wishes to remove any relationship between him and the disputed domain name.
C. Additional Submissions
In the Additional Submission Complainant indicates that Respondent suggests that he was unaware that Google owned the YOUTUBE mark, and therefore, believed he had a right to use the Domain Name. In Complainant’s words such a claim has no merit because Google’s YOUTUBE mark is famous and it is also a household name that has been widely promoted among members of the general consuming public since 2005.
It is stated as well in the Additional Submission that Respondent offered no other explanation for his registration of the Domain Name and did not contest any of the assertions in the Complaint. Respondent was aware of Complainant’s YOUTUBE mark and deliberately registered the Domain Name for the sole purpose of targeting Complainant and its YouTube service, and this constitutes strong evidence of bad faith registration and use.
Lastly, it is contended in the Additional Submission that Respondent’s willingness to depart with the Domain Name is powerful evidence that Respondent does not own any rights or legitimate interests in the Domain Name.
The Panel has thoroughly reviewed the Complaint together with the evidence submitted to support the allegations, the Response to the Complaint and the Additional Submission made by the Complainant, and based on all the documents, the Panel finds:
- That Complainant is the exclusive owner of the trademark YOUTUBE (word mark and designs) which are duly registered in several countries around the world, and in force;
- That the trademark YOUTUBE is a widely recognized trademark, famous and well-known by consumers around the world. The documentation attached to the Complaint leave no doubt as regards the extension of the knowledge of the trademark, as well as of the YouTube.com website owned by Complainant.
- That the disputed domain name <youtubeconversor.com> does resolve to a website that enables Internet users to download and save content from Complainant’s YouTube website in an mp3 format. In addition, the Panel is satisfied with the evidence submitted to demonstrate that the <youtubeconversor.com> domain name resolves to a website that features advertisements that divert traffic to third-party websites.
- That as stated in the Complaint, the Portuguese term conversor added to the disputed domain <youtubeconversor.com> means “converter” in English, it being a generic word that immediately informs consumers about the services available on the portal, i.e. the possibility of “converting” a YouTube video into an mp3 format archive.
- That Respondent expressly renounced to the <youtubeconversor.com> domain, since he mentioned in his Response that he does not wish to have any relationship with said domain name. This circumstance, however, does not mean that a study of all aspects of the dispute should not be carried out, since the Panel considers it necessary to render a decision on the merits on the case of a domain name that has been registered and used with the implications of the case at hand.
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.
Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark YOUTUBE, which is registered around the world (word mark and logos). In addition, it was demonstrated that the mentioned trademark is widely used and promoted to an extent that it would not be possible to validly argue that the existence of said mark was not known. The youtube.com website is famous to an extent that at present being a youtuber is a profession practiced by more and more people of every country every day.
The Panel concurs with Complainant in that the disputed domain name entirely comprises the trademark YOUTUBE, and even though the word conversor and the generic extension ‘.com’ were added, the domain name <youtubeconversor.com> does suggest that the Domain Name and the associated website are authorized by Google for converting the digital files from YouTube into another format. The Panel thus considers that in spite of the attempted “changes” introduced by Respondent to the trademark YOUTUBE, there is no doubt that the disputed domain is based on said trademark. The webpage <youtubeconversor.com>, contains undeniable proof of the usage of the trademark YOUTUBE by the Respondent.
It is therefore evident for the Panel that the disputed domain is likely to be viewed as incorporating the YOUTUBE trademarks by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <youtubeconversor.com> belongs to Complainant, or that there is a business association between the Complainant and the Respondent.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <youtubeconversor.com> is confusingly similar to the trademark YOUTUBE owned by the Complainant.
Complainant argues that Respondent has no rights or legitimate interests in the <youtubeconversor.com> domain name. Specifically, Complainant claims that Respondent would have to demonstrate that it had rights or legitimate interests in the domain name because Complainant’s mark is so well known. In the present case, no rights or legitimate interests in the <youtubeconversor.com> domain exist since in fact Respondent stated in his Response that the disputed domain name has been disabled, and he no longer wishes to be affiliated with the disputed domain name.
The Panel concurs with Complainant’s assertion as regards the fact that the usage of the disputed domain name by the Respondent cannot be held as a bona fide offering of goods and services. Indeed, the fact that the disputed domain name resolves a page that presents pay-per-click hyperlinks and encourages users to violate Complainant’s YouTube Terms of Service by allowing users to “convert” YouTube videos into an mp3 archive, and where Complainant’s trademark YOUTUBE is used without any kind of shame, indicates that Respondent’s use of the disputed domain name does not constitute 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).
Further, Complainant argues that the <youtubeconversor.com> domain name resolves to a website that prominently features advertising that rotates from time to time from one advertisement to another. Advertisements that divert traffic to third-party websites do not constitute either a bona fide offering of goods or services, or a noncommercial or fair use per Policies Paragraphs 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016).
It is clear for the panel, after a thorough review of the documentation and evidence submitted to the case, that the Complainant is the type of entity which, due to the well-known (better said, famous) condition of its trademarks, the efforts it makes to position and promote them, and the recognition it gains in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” just to let registrants share the sales revenues obtained by the legitimate owners of the trademarks.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <youtubeconversor.com>
According to Paragraph 4(b) of the Policy, certain circumstances are evidence of bad faith in the registration and use of a given domain name. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name <youtubeconversor.com> with the registered, well-known and famous trademark YOUTUBE clearly evidences a prima facie intention of the Respondent to attract internet users for a commercial gain. The identical reproduction of a third party’s distinctive trademark within a domain name is hardly the result of casualty, and to the contrary suggests a clear intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark, and thus benefit from said confusion.
As mentioned before, the fact that the Respondent uses the disputed domain name to resolve to a website that allows users to “convert” YouTube videos into mp3 archives, and where Complainant’s trademark YOUTUBE is used by the Respondent on his website as if said trademark was available for usage by everyone, does indicate that Respondent registered the disputed domain <youtubeconversor.com> attempting to attract internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s trademark YOUTUBE. Thus, the bad faith in this behavior is blatant and undeniable.
Moreover, using a domain name confusingly similar to a registered trademark to commercially benefit through competing pay-per-click links can evince bad faith registration and use according to Policy in Paragraphs 4(b)(iii) and/or (iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy in Paragraph 4(b)(iii)”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy in Paragraph 4(b)(iv).”).
Due to all the above, it is imperative to conclude that the disputed domain name <youtubeconversor.com> was registered and is being used in 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 <youtubeconversor.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jiménez, Panelist
Dated: July 13, 2022
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