WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Mobitronix LLC
Case No. DAE2011-0002
1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates of India.
The Respondent is Mobitronix LLC of Dubai, the United Arab Emirates (“UAE”), represented internally.
2. The Domain Name and Registrar
The disputed domain name <youtube.ae> is registered with AE Domain Administration (.aeDA).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 14, 2011, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On December 18, 2011, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2011. After granting an extension of time to answer, the due date for the Response was set for January 19, 2012. The Response was filed with the Center on January 19, 2012.
The Center appointed The Hon Neil Brown QC, Warwick Smith and Torsten Bettinger as panelists in this matter on February 17, 2012. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
A number of additional and supplementary submissions have been filed in this matter. On January 27, 2012, a supplemental filing was received from the Complainant, in reply to matters raised in the Response, concerning the nature of the Respondent’s activities, which the Complainant stated it could not have been reasonably aware of at the time the Complainant was filed. On February 8, 2012, the Respondent submitted an unsolicited supplemental filing in reply to the Complainant’s further statements.
Following the appointment of the administrative Panel for the case, the Panelists noted a number of discrepancies in the Respondent’s statements. In the interests of fairness, and to afford the Respondent an additional opportunity to supply relevant evidence to support its case, the Panel issued Administrative Panel Procedural Order No. 1 On March 5, 2012. This Order asked, inter alia, for an explanation of the Respondent’s business and/or noncommercial activities undertaken through the disputed domain name, additional supporting evidence demonstrating such use of the domain name, and an explanation of why certain information had been provided in the case file on record.
The Respondent replied to Administrative Panel Procedural Order No. 1 with a series of questions for the Panel. The Respondent reiterated previous concerns about the private and secretive nature of its business, and stated that it did not wish to provide its additional evidence, potentially concerning access to the “members only” portion of its website, to the Complainant.
The Panel thereafter issued Administrative Panel Procedural Order No. 2 on March 15, 2012, clarifying in response to the Respondent’s questions and again seeking the same types of additional information. The Panel reminded the Respondent of the strict communications requirements imposed by paragraph 2(h) of the Rules, and indicated that all submissions must be properly copied to the opposing side. The Respondent submitted its reply on March 16, 2012, and the Complainant filed a further statement in accordance with the Order on March 19, 2012. The Respondent filed an additional, unsolicited, supplemental filing on March 23, 2012.
Accordingly, the available record in the present case is quite extensive. The Panel is mindful of its duty to the Parties pursuant to paragraph 10 of the Rules, to conduct the proceedings in an expeditious manner while providing each side with a fair opportunity to present its case. The Panel has requested some of the additional documents on file, in accordance with paragraph 12 of the Rules, but many of the submissions were unrequested. In the interests of fairness, however, and noting that there are number of factual disputes involved, the Panel will admit and consider all of the evidence and submissions before it.
4. Factual Background
In April of 2005, the Complainant’s predecessor-in-interest started the video file-sharing website “www.youtube.com”, which became an almost overnight success. By December of 2006, the Complainant had acquired the site and business for USD 1.65 billion in Google stock, “www.youtube.com” was one of the top 13 most visited websites in the world, and the company was named TIME magazine’s “Invention of the Year” for 2006. By August of 2006, the site hosted roughly 6.1 million videos and 500,000 user accounts.
The Complainant is the holder of numerous trademark registrations for the term YOUTUBE, including United States Trademark Registration No. 352580, which was registered on January 30, 2006.
The disputed domain name was registered on August 26, 2006. The Respondent states that it was unaware of the Complainant and its online activities at that time. Companies within the group of which the Respondent is a member hold (or have held) two licenses to conduct business in the UAE: one for the Respondent Mobitronix LLC, for use in the cellular phone and electronics business, and one for a company called Sky Light Sanitary Wares Trading, for use in the “sanitary wares” industry. The Respondent provided copies of UAE business licenses issued to these companies for the periods April 5, 2003 – April 4, 2004 (the Respondent), and August 13, 2001- August 12, 2002 (Sky Light Sanitary Wares Trading).
The disputed domain name resolves to a website which displays a picture of a green rubber tube and a caption which reads “YOUTUBe Market Place, Leading Portal of Tube Trading”.1 Links on the site include “Main”, “About”, “News” and “Login”. “Main” refers to the homepage of the site, just described. Clicking on the “About” link causes a small text window to appear, describing the website as an online market place and “a leading portal on tubes trading”, where “tubes & pipes traders, suppliers and customers” can meet to transact business. Additionally, the site states that “[a]part from that, YOUTUBe staff is always ready to source and negotiate best deals for you.” The “News” portion of the website is apparently only available after logging in as a member of the site, which can be done via the “Login” link.
The Complainant first contacted the Respondent about its “www.youtube.ae” website, seeking to acquire the domain name on the basis of its trademark rights, in 2007. The Parties continued this discussion off and on for a number of years without coming to a satisfactory agreement. Accordingly, the Complainant filed the present action.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 6(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant makes reference to its numerous trademark registrations worldwide for its YOUTUBE mark, as well as to its widespread and well-publicized use of the term. The Complainant states that the disputed domain name <youtube.ae> is identical to its YOUTUBE trademark, as the TLD suffix is generally not taken into account under the first element of the Policy.
With regard to the second element of the Policy, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent has provided no evidence, in any of its numerous submissions, to demonstrate that it is engaged in a bona fide offering of goods or services under the domain name. Concerning the Respondent’s claim to be operating a noncommercial marketplace website for the benefit of other actors in the “Sanitary Wares” or “Tube Trading” industries (discussed in more detail below in the Respondent’s Contentions section), the Complainant states that the Respondent has provided insufficient evidence to demonstrate such activity.
With regard to the third element of the Policy, the Complainant argues that the disputed domain name was both registered and used in bad faith. The Complainant avers that, given the fact that “youtube” is a coined expression, and given the worldwide success of its “www.youtube.com” website and service, it is extremely unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark rights. The Complainant alleges that the Respondent registered the disputed domain name for commercial gain and in order to prevent the trademark owner from reflecting its mark in a corresponding “.ae” domain name. The Complainant further states that the Respondent’s subsequent use of the disputed domain name was pretextual, designed to create the impression of rights or legitimate interests for the purposes of retaining the disputed domain name.
The Respondent requests the Panel to reject the Complaint and to enter a finding of reverse domain name hijacking against the Complainant. The Respondent’s statements in the case are numerous and, at times, contradictory. A summary of its arguments is outlined below.
With regard to the first element of the Policy, the Respondent does not appear to contest that the disputed domain name <youtube.ae> and the Complainant’s YOUTUBE trademark are identical. The Respondent alleges that it was wholly unaware of the Complainant and its activities at the time of registration of the domain name, and that the Complainant did not have a trademark registration for YOUTUBE in the UAE at that time. The Respondent states that, through its Sky Light Sanitary Wares Trading business, the group of companies of which the Respondent is a member had been involved in the “Tube Trading” industry for a number of years, and that the idea for its YOUTUBe project presented itself to the Respondent during attendance at a “Big 5” construction industry trade show in 2005. Furthermore, the Respondent notes that numerous businesses around the world utilize expressions involving the word “you”, and that this domain name was the most logical choice given the industry-specific terminology for the “Tube Trading” industry.
Concerning the second element of the Policy, the Respondent has provided an array of arguments. The Respondent has alternatively referred to its activities at the disputed domain name both as a business and as a nonprofit activity. When asked for additional clarification as to the precise nature of its activities by Panel Order, the Respondent stated that the “[p]roject developed on youtube.ae is a supplementary non-commercial business oriented project”, and further that “[r]un by Respondent, YOUTUBe Market Place Project oriented for a business segment, for all companies, who is working in Tube Industry, including Respondent group of companies as well. Project called noncommercial and non-profitable as it’s not designed to generate any commercial gain from itself or services offered on it.” The Respondent has also provided two statements with regard to its role in this online market place. The website active at the disputed domain name states that “YOUTUBe staff is always ready to source and negotiate best deals for you”, while the Respondent indicated in its reply to the Panel that “[m]embers communicating to each other and conducting negotiations on deals directly without involvement of Respondent.”
Accordingly it appears, from the totality of the Respondent’s submissions, that the YOUTUBe portal is claimed to operate as an independent marketplace where manufacturers and purchasers active in the Respondent’s claimed area of interest (sanitary wares including tubes), are able to buy and sell their goods in a confidential and highly secretive manner. The Respondent may or may not take an active role in negotiating deals on the website to which the disputed domain name <youtube.ae”> resolves. The Respondent states that it has been using the disputed domain name in this fashion since 2006.
The Respondent also contended that it has been, or is commonly known by, the disputed domain name. It further contended that it had a right to register and continue to use a domain name containing dictionary words or phrases suggestive of its business, if the domain name was not registered because of its value as a trademark.
With regard to the third element of the Policy, the Respondent avers that it has neither registered nor used the disputed domain name in bad faith. The Respondent states that it was unaware of the Complainant’s existence in August of 2006, and that it conceived of the name for its project after visiting the trade show in 2005. The Respondent claims to have been making a legitimate noncommercial use of the disputed domain name since 2006, in a manner supportive of its other business activities. Furthermore, the Respondent claims that a finding of bad faith is inapt as the Respondent’s industry and activities bear no relation to the Complainant’s use of its “www.youtube.com” website.
The Respondent’s request for a finding of reverse domain name hijacking is founded on its belief that the Complainant has acted in bad faith with regard to the bringing of the present Complaint. The Respondent states that the Complainant’s election to file the Complaint in December, near the Christmas holidays, was an act of bad faith in that the Respondent was unable to quickly secure legal representation due to the holiday season. The Respondent also alleges that the Complainant’s unwillingness to amicably settle the dispute on the Respondent’s preferred terms, particularly where the Complainant is a large and successful international company, is demonstrative of bad faith activity. The Respondent further accused the Complainant of obscuring or hiding information related to prior meetings between the parties (evidence of which was not furnished by either party, outside of a single email chain), acting in bad faith by changing their legal advisers between 2007 and 2011, and additionally stated that the Complainant “[i]ntentionally spies on [its YOUTUBe] project”.
6. Discussion and Findings
This Complaint has been brought under the UAE Domain Name Dispute Resolution Policy which closely mirrors the Uniform Domain Name Dispute Resolution Policy (“UDRP''). Accordingly the principles developed by panels under the UDRP are relevant and instructive in many respects.
A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The textual string of the disputed domain name in this matter is “youtube”, which is identical to the Complainant’s well-known trademark. The Complainant has demonstrated to the Panel’s satisfaction that it has secured numerous registrations for the mark in jurisdictions around the world, and indeed that at least one of its trademark registrations predated the Respondent’s registration of the disputed domain name.
Additionally, it is well established that a TLD suffix, in this instance the ccTLD suffix “.ae”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Ferrari S.p.A. v. ST Network International Limited, WIPO Case No. DAE2009-0004, and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name <youtube.ae> is identical to the Complainant's YOUTUBE mark and that the Complainant has established the requirement of paragraph 6(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has argued that the Respondent lacks rights or legitimate interests in the <youtube.ae> domain name, and the Respondent has presented its case concerning the activities undertaken on its website.
Paragraph 6(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panels that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the disputed domain name. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, paragraph 2.1, and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
As discussed in more detail above, the Respondent has provided a number of arguments in the course of its case. After reviewing the evidence on record, however, the Panel has found the Respondent’s submissions to be both contradictory and insufficient. In the interest of fairness, the Panel provided the Respondent with an additional opportunity to present its arguments and supply critical evidence. Moreover, the Panel has accepted a number of additional unsolicited filings and admitted them into the record, in order to give the Respondent a full and fair opportunity to present its case.
The Respondent has stated that Sky Light Sanitary Wares Trading was doing business in the sanitary wares industry prior to the registration of the domain name, and that it was then doing business in the mobile phone industry. However, the Respondent has provided no evidence of any actual trading done by these enterprises. Nor has it provided any concrete evidence to demonstrate the link between these claimed businesses and its activities under the disputed domain name. It has been either unable or unwilling to explain how its different services and/or businesses interconnect, or to provide evidence demonstrating that it was undertaking any legitimate activity with regard to the domain name prior to receiving notice of the parties' dispute in 2007. The Respondent has stated that it is using the disputed domain name to undertake a noncommercial project that is supportive of its other businesses, but has failed, in the view of the Panel, to adequately explain the nature of this arrangement or provide sufficient supporting documentation.
The Respondent has provided some evidence of the activities currently undertaken through its YOUTUBe portal, in the form of a series of “client appreciation letters” and by providing access to the “members only” portion of its website. The letters of appreciation are extremely vague, and as such do not provide the Panel with any indication as to the nature or scope of activities conducted, nor the Respondent’s role in such transactions or negotiations. The “members only” access to the Respondent’s site likewise provided little additional information beyond that already demonstrated in the Respondent’s initial filing.
After reading through and reviewing all of the Respondent’s further submissions, the Panel remains unconvinced that the Respondent was using the domain name in connection with any legitimate activity, noncommercial or otherwise, prior to receiving notice of the Complainant’s dispute concerning the site in 2007. The Respondent has made numerous bold allegations, for example stating that its network of companies has “over 100 employees and […] 2005 annual turnover reaching US Dollars One Billion”, without providing concrete evidence of any of its claimed business activities related to the disputed domain name.
There is no evidence that the Respondent was commonly known by the disputed domain name when it was registered in August 2006.
Accordingly, the Panel finds that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, and that the Complainant has made its case under paragraph 6(a)(ii) of the Policy.
C. Registered or is Being Used in Bad Faith
Under the UAE Domain Name Dispute Resolution Policy, a complainant must demonstrate that a disputed domain name was either registered in bad faith or used in bad faith.
In the present matter, the Complainant has demonstrated the notoriety of its “youtube.com” website as of August 2006, when the disputed domain name was registered. The Panel finds it inconceivable that the Respondent, who is apparently an experienced Internet user, was unaware of the Complainant’s service at the time it selected the disputed domain name. (Even apart from the notoriety of the website at <youtube.com> by August 2006, it seems highly unlikely to the Panel that an experienced Internet user like the Respondent would not have checked whether an identical domain name had then been registered in the “.com” gtld., and if so, who owned it. The Respondent says that it went to the trouble of running a UAE trademarks search – why would it not also have taken the simpler step of checking for a “.com” website?)
That the Respondent is a savy Internet user is apparent from a previous UDRP case, in which the Respondent was found to have acted in bad faith by registering and using the domain name <skype.ae>. See Skype Limited v. Mobitronix LLC, WIPO Case No. DAE2011-0001. The Respondent in that case claimed to have registered the Skype name in connection with one of its business enterprises, but had not yet developed content for the disputed domain name.
The Panel in the present matter finds it very unlikely that the Respondent, who now appears to have a history of registering famous trademarks in .AE domain names, selected the <youtube.ae> domain name as a matter of pure coincidence. Taking all of the facts and circumstances into consideration, the Panel is convinced that the Respondent registered the domain name in bad faith, with the intent to realize commercial gain.
In the Panel’s view, the Respondent likely registered the disputed domain name with the intent to resell the domain to either the trademark holder or a competitor, for an amount that exceeded its out of pocket costs. The Respondent’s subsequent use of the domain name appears to be a pretext, designed to enable it to retain the domain name and “force” a high-value purchase offer from the Complainant.
The Panel comes to this conclusion after providing the Respondent with numerous opportunities to provide substantiating evidence concerning its alleged intentions in selecting the disputed domain name. The Respondent has come forward with no evidence of any “tube trading”, which was allegedly undertaken from at least the year 2001 when the Sky Light Sanitary Wares Trading business license was issued, and has provided no evidence to support its assertion that it initially conceived of the idea for a “tube trading” portal for reasons related to its attendance at the Big 5 trade fair in 2005. Likewise, no evidence has been provided to demonstrate that the Respondent was using the disputed domain name in connection with a legitimate purpose at any time prior to the first contact by the Complainant’s counsel in August 2007.
Accordingly, the Panel finds that on the balance of probabilities, the Respondent registered the disputed domain name with the intent to take advantage of the Complainant’s trademark, in order to realize unwarranted commercial gain. Therefore, the Panel finds that the Complainant has succeeded under paragraph 6(a)(iii) of the Policy.
The Panel takes the opportunity of reminding parties to concentrate on the issues and the importance of submitting evidence necessary to prove or disprove the elements set out in paragraph 6 of the Policy (or paragraph 4 of the UDRP if that policy is applicable). See Glory Establishment v. FutbolMasters Ltd., FW, FM, Steve Leighton, WIPO Case No. D2007-0439. The present case was lost by the Respondent substantially because, while Complainant was able to carry its burden of proof on balance under each Policy element, the Respondent failed to produce any cogent evidence in support of its contentions, notwithstanding the ample opportunity it was given to do so.
7. Reverse Domain Name Hijacking
The Respondent has requested the Panel to enter a finding of Reverse Domain Name Hijacking against the Complainant. As indicated, the Panel has found the Complainant’s case to be well-founded, and accordingly, that the Complainant has not engaged in reverse hijacking.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <youtube.ae> be transferred to the Complainant.
The Hon Neil Brown QC
Date: March 29, 2012
1 The Panel notes Respondent’s unusual capitalization for the name of its project shown on the website active at the disputed domain name. Despite the Respondent’s statements that the site is designed to serve the “Tube Trading” industry, it has elected to capitalize all of the letters for the name of the project except for the letter “e”.