Is it “fair use” when you use a known brand or mark to offer a service, even if you don’t collect money for it?
Not really and there are rules in place for exactly that.
Apparently, YouTubetoMP3music.com uses the YouTube brand as part of its domain name.
Google LLC that operates YouTube filed a UDRP, stating that the Respondent registered the domain in bad faith. To establish that, Google asserted that the web site is spreading malware and provided evidence from a third-party explaining the “Music Search for Chrome” malware that Respondent distributes.
In other words, when a “free” service is violating a famous mark openly it could be monetizes its traffic using unlawful methods. Final decision: transfer the domain YouTubetoMP3music.com to the Complainant.
Google LLC v. junchi zhang
Claim Number: FA2108001961458
PARTIES
Complainant is Google LLC (“Complainant”), represented by Matthew J. Snider of Dickinson Wright PLLC, Michigan, USA. Respondent is junchi zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youtubetomp3music.com>, registered with NameCheap, Inc.
PANEL
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on August 27, 2021; the Forum received payment on August 27, 2021.
On August 27, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <youtubetomp3music.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2021 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@youtubetomp3music.com. Also on September 3, 2021, 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 September 27, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <youtubetomp3music.com> domain name is confusingly similar to Complainant’s YOUTUBE mark.
2. Respondent does not have any rights or legitimate interests in the <youtubetomp3music.com> domain name.
3. Respondent registered and uses the <youtubetomp3music.com> domain name in bad faith.
B. Respondent did not file a Response.
FINDINGS
Complainant, Google LLC, holds a registration for the YOUTUBE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,525,802, registered Oct. 28, 2008).
Respondent registered the <youtubetomp3music.com> domain name on April 16, 2019,and uses it to download and convert content off Complainant’s YOUTUBE website in violation of Complainant’s terms of service, and to distribute malware.
DISCUSSION
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”).
Identical and/or Confusingly Similar
The Panel finds that Complainant has rights in the YOUTUBE mark through its registration with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) (“Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <youtubetomp3music.com> domain name uses the YOUTUBE mark, and simply adds the descriptive phrase “to mp3 music” and the “.com” gTLD. Under Policy ¶ 4(a)(i), these changes do not distinguish a domain name from the mark it incorporates. 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.”). The Panel therefore finds that Respondent’s <youtubetomp3music.com> domain name is confusingly similar to Complainant’s YOUTUBE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <youtubetomp3music.com> domain name, as it is not commonly known by the domain name and is not an authorized user of the YOUTUBE mark. The WHOIS information of record identifies “junchi zhang” as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Complainant also argues that Respondent fails to use the <youtubetomp3music.com> domain name for a bona fide offer of goods or services or a legitimate noncommercial or fair use, but rather uses it to download and convert content off Complainant’s YOUTUBE website in violation of Complainant’s terms of service. Previous Panels have found that such use of a disputed domain name does not qualify as a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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)). Complainant provides screenshots of the website at <youtubetomp3music.com> demonstrating Respondent’s illegitimate use of the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant also claims that Respondent’s <youtubetomp3music.com> domain name is used in connection with a malware distribution scheme. Using a disputed domain name to distribute malware further demonstrates a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides evidence from a third-party explaining the “Music Search for Chrome” malware that Respondent distributes. The Panel finds that this use also demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent use of the <youtubetomp3music.com> domain name to operate a malware distribution scheme demonstrates bad faith. Under Policy ¶ 4(a)(iii), using a domain name to attempt to distribute malicious software constitutes bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Accordingly, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent uses the <youtubetomp3music.com> domain name to allow Internet users to download content off of Complainant’s <youtube.com> in violation of Complainant’s YouTube Terms of Service, showing bad faith. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant also contends that Respondent registered the <youtubetomp3music.com> domain name with actual knowledge of Complainant’s rights in the YOUTUBE mark. Under Policy ¶ 4(a)(iii), registration of a disputed domain name which knowingly contains another’s trademark establishes bad faith, and can be demonstrated by the notoriety of a mark and the use Respondent makes of the domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant provides evidence establishing that the YOUTUBE mark is well known. Along with the fame of the YOUTUBE mark, Complainant shows that Respondent allows users to download content off of Complainant’s <youtube.com>. The Panel finds that Respondent registered the disputed domain name with knowledge of Complainant’s rights in the YOUTUBE mark, in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s <youtubetomp3music.com> domain name was registered and is used in bad faith because Respondent attempts to capitalize on the fame of Complainant’s YOUTUBE mark for commercial gain. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Management, Inc. v. Lewis, FA1337417 (Forum Sept. 2, 2010) (finding that the similarity of respondent’s domain name and complainant’s mark evidenced an intention by respondent to capitalize on complainant’s fame and to profit by attracting Internet users to respondent’s website, revealing bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <youtubetomp3music.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 28, 2021
