Google LLC v. Colleen Spillman
Claim Number: FA2303002035252
Complainant is Google LLC ("Complainant"), United States, represented by Matthew J. Snider of Dickinson Wright PLLC, United States. Respondent is Colleen Spillman ("Respondent"), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <listentoyoutube.us>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on March 9, 2023; Forum received payment on March 9, 2023.
On March 10, 2023, NameSilo, LLC confirmed by email to Forum that the <listentoyoutube.us> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On March 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@listentoyoutube.us. Also on March 10, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, 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 (together with a predecessor in interest) has delivered digital content and provided related services under the YOUTUBE mark since 2005. YouTube rapidly became the leading online video sharing site, and now has more than 2 billion monthly logged-in users and localized versions in more than 100 countries. Complainant owns longstanding trademark registrations for YOUTUBE in the United States and other jurisdictions worldwide. Complainant claims that the mark is famous around the world, citing a previous decision under the Uniform Domain Name Dispute Resolution Policy ("UDRP") recognizing it as such. See Google Inc. v. Alex Dori, FA 1623672 (Forum July 13, 2015).
The disputed domain name <listentoyoutube.us> was registered in February 2011. It is being used for a "Listen To YouTube" website that prominently and repeatedly displays Complainant's YOUTUBE mark in what Complainant describes as "a brand-like manner." The website prompts the user to enter the link for a YouTube video and then provides a link to a downloadable file. Complainant states that Respondent's website violates or encourages users to violate Complainant's YouTube Terms of Service, which prohibit users from downloading content from YouTube without authorization and from attempting to circumvent features that restrict the copying of YouTube content. The website also displays pop-up windows that, Complainant alleges, are harmful and may attempt to disseminate malware. Complainant states that Respondent is not commonly known by the disputed domain name; is not authorized by, endorsed by, or otherwise associated with Complainant; and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <listentoyoutube.us> is confusingly similar to its YOUTUBE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
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 or is being used in bad faith.
Given the similarity between the UDRP and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <listentoyoutube.us> incorporates Complainant's registered YOUTUBE trademark, adding the generic terms "listen" and "to" and the ".us" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Google LLC v. Host Master / 1337 Services LLC, FA 2032818 (Forum Mar. 28, 2023) (finding <listentoyoutube.online> confusingly similar to YOUTUBE); Google LLC v. Rachel F Baily, FA 1936792 (Forum May 13, 2021) (finding <youtubeshorts.us> confusingly similar to YOUTUBE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that displays pay-per-click advertisements, likely attempts to disseminate malware, and violates or encourages users to violate Complainant's Terms of Service. For the reasons set forth in Google LLC v. Wu Di, FA 1943822 (Forum June 1, 2021) (ordering transfer of <youtubemusicdownloader.com>), the Panel considers it extremely unlikely that Respondent's use of Complainant mark would qualify as a nominative fair use. See also Google LLC v. Domain Manager, FA 1755084 (Forum Jan. 18, 2018) (rejecting similar arguments with respect to <listentoyoutube.com>).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's mark and is using it for a misleading website that displays pop-up advertisements and apparent malware site links, and that violates or encourages users to violate Complainant's Terms of Service. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Google LLC v. Host Master / 1337 Services LLC, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <listentoyoutube.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 8, 2023
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