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SonYouTube.com : #Google beat #Sony in getting this #domain

When famous trademarks such as Sony and YouTube get combined into a domain, the end result is mostly likely a UDRP.

In the case of the domain SonYouTube.com the “winner” is Google, owners of the YOUTUBE mark.

Apparently Sony didn’t seem interested, as it took six years for this domain to be usurped via the UDRP process by Google.

The Respondent in this case is a French man who did not respond formally, but agreed to transfer the domain. “Son YouTube” means “his YouTube” and the Respondent had been provider a service for downloading YouTube videos.

Will SonyYoutube.com be next?

Full details on this boilerplate case follow:

Google LLC v. Nicolas Roussey

Claim Number: FA2005001896006

PARTIES

Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, United States. Respondent is Nicolas Roussey (“Respondent”), France.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sonyoutube.com>, registered with OVH sas.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 12, 2020; the Forum received payment on May 12, 2020.

On May 13, 2020, OVH sas confirmed by e-mail to the Forum that the <sonyoutube.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 May 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2020 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@sonyoutube.com. Also on May 15, 2020, 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 meeting the requirements of the Policy and its attendant Rules, the Forum transmitted to the parties a Notification of Respondent Default.

Complainant has filed an Additional Submission, which has been determined to comply with the applicable requirements of the Policy and Rules. Accordingly, the contents of that Additional Submission have been taken into account in reaching the Panel’s Decision.

On June 9, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant, in its initial Complaint and Additional Submission, asserts, among things, the following:

Complainant operates a worldwide Internet search service.

Complainant holds a registration for the YOUTUBE trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,525,802, registered October 28, 2008, and renewed as of November 6, 2018.

Respondent registered the domain name <sonyoutube.com> on or about September 2, 2014.

The domain name is confusingly similar to Complainant’s YOUTUBE mark.

Respondent is not authorized to use Complainant’s YOUTUBE mark.

Respondent has not been commonly known by the domain name.

Respondent fails to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the domain to provide a service to Internet users permitting them to download video content from Complainant’s official website in violation of Complainant’s terms of service, thus depriving Complainant of income to which it is entitled.

Respondent does not have rights to or legitimate interests in the domain name.

Respondent knew of Complainant’s rights in the YOUTUBE mark when it registered the domain name.

Respondent registered and uses the domain name in bad faith.

B. Respondent

Respondent failed to submit in this proceeding a Response compliant with the requirements of the Policy and its accompanying Rules. However, in an e-mail message addressed to the Forum, Respondent has recited that:

I agree with Google[‘s] request to transfer [the] domain name

<< sonyoutube >> ….

DISCUSSION

Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following in order to obtain from a Panel a decision that a domain name be transferred:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. Respondent has no rights to or legitimate interests in respect of the domain name; and

iii. the same domain name has been registered and is being used by Respondent in bad faith.

Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum January 13, 2004:

In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.

See also Disney Enterprises, Inc. v. Morales, FA 475191 (Forum June 24, 2005):

[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.

DECISION

Respondent does not contest the allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the domain name that is the subject of this proceeding be transferred to Complainant. Rather, in the face of Complainant’s demand that the domain name be transferred to it, Respondent has expressed in writing its willingness to surrender the same. The parties have thus effectively agreed in writing to the transfer of the domain name from Respondent to Complainant without the need for further proceedings.

Accordingly, it is Ordered that the domain name <sonyoutube.com> be TRANSFERRED forthwith from Respondent to Complainant.

Terry F. Peppard, Panelist

Dated: June 12, 2020


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