Google LLC v. Robert Brink
Claim Number: FA2207002003368
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is Robert Brink (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <youtubekonverter.com> and <youtubemp3pro.net>, registered with URL Solutions, Inc.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2022; the Forum received payment on July 7, 2022.
On July 14, 2022, URL Solutions, Inc. confirmed by e-mail to the Forum that the <youtubekonverter.com> and <youtubemp3pro.net> domain names (the Domain Names) are registered with URL Solutions, Inc. and that Respondent is the current registrant of the names. URL Solutions, Inc. has verified that Respondent is bound by the URL Solutions, Inc. 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 July 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 8, 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@youtubekonverter.com, postmaster@youtubemp3pro.net. Also on July 19, 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 August 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE DOMAIN NAMES
The Complaint relates to two Domain Names. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In this case, both Domain Names were registered with the same registrar within three days of each other (WHOIS reports submitted as Complaint Annexes 4a and 4b). The information furnished to the Forum by the registrar states that both Domain Names were registered to the same person at the same address. Finally, the Domain Names resolve to websites that are virtually identical to each other in appearance and general layout, and which offer exactly the same services (screenshots of both websites submitted as Complaint Annexes 11a and 11b). Both Domain Names are registered by the same domain name holder, and the Panel will consider both of them in this proceeding.
A. Complainant
Complainant owns and operates YouTube, Inc., an online video sharing site. It has rights in the YOUTUBE mark through its registration of that mark with trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <youtubekonverter.com> and <youtubemp3pro.net> Domain Names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, merely adding the generic terms “konverter”, a misspelled version of “converter”, and “mp3” and “pro,” and the “.com”/“.net” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the Domain Names. It has no association with Complainant and Complainant has not authorized or licensed Respondent to use its mark, Respondent has not been commonly known by the Domain Names, and Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead uses them to host pay-per-click links and offer services enabling violation of YouTube’s terms of service.
Respondent registered and uses the Domain Names in bad faith. It had actual knowledge of Complainant and its YOUTUBE mark when it registered the Domain Names, it attempts for commercial gain to attract Internet users to its websites by creating confusion as to the source, sponsorship, affiliation or endorsement of its websites, it uses the Domain Names to enable Internet users to violate the terms of YouTube’s terms of service and to host pay-per-click advertising, and it has engaged in a pattern of bad faith registration and use of Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The YOUTUBE mark was registered to Google, Inc. with numerous governmental trademark authorities around the world, including the USPTO (USPTO Reg. No. 3,525,802, registered October 28, 2008) (USPTO registration certificate submitted in Complaint Annex 10). The Panel assumes from the fact that the address of Google, Inc. as shown on the Annex 10 USPTO registration certificate and the address of Complainant as listed in the Complaint are the same, that Complainant acquired ownership of this registration either pursuant to a conversion of Google, Inc. to an LLC, by assignment, or otherwise. Complainant’s ownership of this USPTO registration of the YOUTUBE mark establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <youtubekonverter.com> and <youtubemp3pro.net> Domain Names are identical or confusingly similar to Complainant’s mark. They both incorporate the mark in its entirety, merely adding the generic terms “konverter” in one case and “mp3” and “pro” in the other, and a gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the YOUTUBE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent has no affiliation or association with Complainant and Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, (ii) Respondent has not been commonly known by the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites resolving from them purport to furnish a means for the visitor to download and save content from Complainant’s web site in violation of YouTube’s Terms of Service and they also host pay-per-click links. These allegations are addressed as follows:
Complainant states that Respondent is not affiliated or associated with it and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information furnished to the Forum by the registrar lists the registrant of the Domain Names as “Robert Brink.” This name bears no resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names.
Complaint Annexes 11a and 11b consist of screenshots of pages of the web sites resolving from the Domain Names. They prominently display the YOUTUBE mark and purport to offer the visitor a means of downloading and saving YouTube videos. They instruct the visitor to do so by entering the URL for the desired video in a space provided. The Complaint states that when the URL is entered the visitor is directed to a third-party website at <docshare.tips>, where the desired YouTube video is presented for download. The Complaint contains a screenshot of the <docshare.tip> website which shows a Youtube video available for download. The Complaint refers the Panel to Complaint Annex 11c, which is also screenshot of the <docshare.tip> website. It displays the site name in the same font and color and contains the same logo as the Complaint version, but its substantive content does not conform in any way to the screenshot of the website included within the Complaint. Instead it advertises itself as a tool to upload documents and displays links unrelated to Complainant’s business. It contains no mention of Complainant or its YOUTUBE mark. On this somewhat confusing and inconsistent evidence, the Panel is satisfied that at a minimum Respondent represents that it can enable the download of YouTube videos. The Complaint screenshot of the <docshare.tip> website tends to demonstrate that Respondent actually delivers on that representation, while the Annex 11c screenshot shows at most a pay-per-click site linking to businesses unrelated to Complainant and does not offer any evidence of downloading YouTube videos.
Since the Complaint version of the <docshare.tip> website is in fact an actual screenshot of the site, the Panel is persuaded that at some time Respondent was actually facilitating the download of YouTube videos, notwithstanding the Annex 11c screenshot, which was apparently captured at a different time. Complaint Annex 12 is a copy of Complainant’s YouTube Terms of Service. Appearing at page 3 of this Annex is a clear, unambiguous restriction against reproducing, downloading or distributing any part of the service or content from the YouTube site. Using a domain name to encourage illegal use of Complainant’s system is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”), Google LLC v. david stonehill, FA1808821 (Forum Nov. 1, 2018) (no rights or legitimate interests created by the respondent’s use of the domain name in connection 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), Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the domain name in connection 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), Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the 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)).
The Complaint alleges that the websites resolving from the Domain Names, depicted on Complaint Annexes 11a and 11b, feature advertising that rotates from time to time from one advertisement to another and based thereon alleges that Respondent is engaging in a pay-per-click program. The Panel was unable to observe any such advertisements or links on either of these Annexes. The only evidence of an apparent pay-per-click scheme appears on Complaint Annex 11c, which displays a different website. Respondent’s websites may redirect traffic to that site but there is no evidence that Respondent owns or operates that site, or that it would receive any pay-per-click revenues generated by it. Complainant’s allegation of a pay-per-click scheme involving the Domain Names is not proven.
Notwithstanding Complainant’s failure to prove a pay-per-click scheme, Complainant has made its prima facie case. On the evidence first discussed above, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. While there is no direct evidence that Respondent charges for its downloading services, that can reasonably be presumed, as there would be no other reason for Respondent to invest time and expense in the development and operation of its websites. Respondent has targeted a famous brand to lure Internet traffic to its site for commercial purposes. This conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is thus evidence of bad faith.
Second, Respondent registered and is using the Domain Names to promote and facilitate activity that violates Complainant’s Terms of Service. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to induce others to violate a complainant’s terms of service has been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Google LLC v. david stonehill, FA1808821 (Forum Nov. 1, 2018) (finding bad faith use and registration where the respondent used the 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), Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (finding use of the 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), Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of a domain name for activity that violated the complainant’s terms of service to constitute bad faith use and registration under the Policy).
Finally, it is evident that Respondent had actual knowledge of Complainant’s mark in November 2016, when it registered the Domain Names (WHOIS reports submitted as Complaint Annexes 4a and 4b show the creation dates). Complainant’s mark was famous and well-known throughout the world by that time (printouts of media articles and Nielsen website ratings submitted as Complaint Annexes 7, 8 and 9). Respondent copied it verbatim into the Domain Names, and Respondent’s use of the Domain Names affirmatively depends upon the existence of Complainant’s YouTube site. There is no question that Respondent knew of Complainant and its mark when it registered the Domain Names. Given the non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubekonverter.com> and <youtubemp3pro.net> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
August 15, 2022
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