WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. PD Hosting Inc., Ken Thomas
Case No. DPH2011-0004
1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Ranjan Narula Associates, India.
The Respondent is PD Hosting Inc., Ken Thomas of Road Town, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <youtube.ph> is registered with dotPH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 2011 transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 25, 2011. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(1) and 4(1), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2011. In accordance with the Rules, paragraph 5(1), the due date for Response was September 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 13, 2011. The Panel finds that it was properly constituted. 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.
The language of the administrative proceeding is English, for two reasons: first, the language of the registration agreement is English; second, paragraph 11 of the Rules, states that the language of the administrative proceeding be English.
4. Factual Background
The Complainant, Google Inc., is a company registered in the State of Delaware in the United States of America (“United States”) that has operated an Internet services business since 1997. In November 2006 the Complainant purchased and continues to operate a company called Youtube Inc which has operated an Internet based video sharing business under the name “youtube” since April 2005.
The Complainant holds separate registrations for the YOUTUBE mark, and variations of that mark, in numerous jurisdictions including, but not limited to, the United States, Argentina, Australia, Austria, Brazil, Canada, China, the European Union, Japan, India, Israel, Mexico, Norway, Philippines, Singapore, Republic of Korea, Switzerland, and Venezuela. As an example, its Australian registration for the word YOUTUBE (No 1126999) is registered from July 28, 2006 in classes 38, 41 and 42.
The Complainant conducts business on the Internet using numerous domain names containing the word “youtube” including its video sharing website resolving from the domain name <youtube.com> which was registered in February 2005. The Complainant is well-known globally.
The Respondent has registered the Disputed Domain Name <youtube.ph> until February 21, 2019.
The Respondent used the Disputed Domain Name to a web page containing various advertisements and links and a textual reference to “you tube videos”.
5. Parties’ Contentions
The Complainant cites its worldwide registrations of the trademark YOUTUBE including in the United States, European Union and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.
The Complainant submits that its trademark is distinctive and well-known and that its rights in this mark predate the Respondent’s registration of the Disputed Domain Name <youtube.ph>. It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark YOUTUBE and that the similarity is not removed by the addition of the country code “.ph” (citing PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademarks. The Complainant also contends that where, as here, a domain name resolves to a pay-per-click (“PPC”) website featuring sponsored links to various commercial websites, no rights or legitimate interests can exist.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to paragraph 4(1)(3) of the Policy making contentions directed at each of the non-exhaustive indicia listed in paragraph 4(2). On the issue of registration, the Complainant contends that the term “You Tube”“ is a “coined word and not a dictionary word” and that this is indicative of bad faith registration by the Respondent. The Complainant also argues that its mark is so well-known that it would be “extremely unlikely that the Respondent created the Domain Name independently” (presumably alluding to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). On the issue of use, the Complainant contends that the Respondent’s “use of the Domain Name to resolve to a parked page containing click-through ads constitutes bad faith use and registration” which is expressly prohibited by paragraph 4(2) of the Policy and numerous UDRP decisions” (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; and Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(1) of the Policy, a complainant has the burden of proving the following:
(1) That the Disputed 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) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) That the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
Paragraph 15(1) of the Rules instructs the 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.”
If a respondent does not submit a response, paragraph 5(5) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(2) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate. The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate registered trademark rights in the mark YOUTUBE in many countries throughout the world, commencing in or around 2005. In the Philippines, the Complainant has produced evidence of two trademarks registered on November 8, 2006, one for the mark YOUTUBE with registration number 42006012116 for services in classes 38 and 41 and the other registration number 042006012115 covering the YOUTUBE mark and device in classes 38 and 41. The Panel therefore finds that the YOUTUBE mark is a registered trademark in the Philippines, and notes that the Complainant also has unregistered trademark rights in the mark for purposes of the Policy. This is achieved through extensive usage of the YOUTUBE mark by the Complainant throughout the Philippines supported by uncontested evidence ranking the YOUTUBE video sharing service as the fifth most popular website for Philippine based Internet users. The Panel finds that the Complainant has rights in the YOUTUBE mark in the Philippines.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark YOUTUBE (b) followed by the “.ph” country code top level domain (“ccTLD”) all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name may be disregarded. Nor does the addition of ccTLD ".ph" have the necessary distinguishing effect sufficient to prevent the Disputed Domain Name from being confusingly similar to the Complainant’s trademark (see Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison), WIPO Case No. DPH2004-0001. In this case, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “youtube”.
In this case, it is the well-known trademark YOUTUBE that has been appropriated and wholly incorporated into the Disputed Domain Name.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(1) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(3) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(1) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(2) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(3) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“), paragraph 2.1).
Here the phDRP differs from the UDRP in one material respect. Under paragraph 4(c) of the UDRP, a nameholder may not claim rights and legitimate interests if he or she uses the domain "to tarnish the trademark or service mark at issue." However, this provision does not appear in the phDRP.
It is well established that a respondent has a right to register and use a domain name containing dictionary words or phrases to attract Internet traffic if the domain name was not registered because of its value as a trademark (WIPO Overview 2.0, paragraph 2.2).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a page composed of advertisements and links with a textual reference to the Complainant’s trademark and is thereby attempting illegitimately “to attract internet users and consumers for commercial gain by abusing the goodwill and reputation associated with the Complainant’s ‘YOUTUBE’ mark”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 the panel stated that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”.
The Complainant alleges that the use to which the Disputed Domain Name has been put “does not represent a use in connection with a bona fide offering of goods and services” (see: Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc., WIPO Case No. D2008-0627; Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449; Pepperdine University v. The CJ Group, LLC., WIPO Case No. D2007-1389; L’Oreal v. Tracey Johnson, WIPO Case No. D2008-1721). The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a PPC landing webpage containing various advertisements and links and a textual reference to “you tube videos”.
In the absence of a Response, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(2) of the Policy sets out certain circumstances to be construed as evidence of both.
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(2) you have 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 you have engaged in a pattern of such conduct; or
(3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “you will not knowingly use the domain name in violation of any applicable laws or regulations effective in the jurisdiction where you reside or conduct business. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights in the manner described in this Paragraph”. The evidence is that the YOUTUBE mark occupies the first several pages of search results on the Google search engine. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’oréal v. Domain Park Limited, WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
There is an absence of specific information (including from the Registrar) about when the Respondent first registered the Disputed Domain Name, but given the absence of any Response, the Panel has little difficulty in accepting that the trademark YOUTUBE is so well-known in the Philippines for video sharing that it is inconceivable that the Respondent might have registered a domain name comprising or incorporating the YOUTUBE mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, supra). Indeed, the content of the Respondent’s website includes the words " you tube videos” from which the Panel infers that the Respondent is plainly aware of the Complainant’s rights to the YOUTUBE trademark, indicating that such use is in bad faith.
This Panel has considered a difference between the UDRP and the phDRP which bears upon the issue of third party rights. Under paragraph 2(b) of the UDRP, the name holder warrants that "to (his) knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and under paragraph 2(d) that he "will not knowingly use the domain name in violation of any applicable laws or regulations." To this Panel, it seems that since these representations cover the "rights of any third party" arising under the law of any country, it was probably considered by the drafters of the phDRP overbroad such that name holders may not intelligently make such representations as they cannot be expected know all the laws and regulations of all countries as well as the rights of third parties thereunder. Hence, the phDRP limits those representations to the laws existing where the name holder resides or conducts business.
This Panel therefore has had appropriate regard to the unfair competition laws of the Philippines, including as they are enumerated in the relevant statute.
In registering the disputed domain name, the Respondent has not only sought a free-ride on the family of geographical domain names registered and used by the Complainant under the different extensions, but at the same time has prevented the Complainant from registering a domain name incorporating the well known trademark YOUTUBE with the ccTLD “.ph”, thereby denying the Complainant the benefit of its goodwill and reputation to this eventual enlargement of its family of domain names (see Skype Limited v. Hanna Jeong, WIPO Case No. DPH2011-0001).
The Panel finds that the Respondent’s conduct in use of the Disputed Domain Name to resolve to a PPC landing page is deliberate diversion of Internet users as referred to in paragraph 4(2)(4) of the Policy. Steering unsuspecting Internet visitors to a PPC page by taking advantage of the confusion created by the similarity of the Disputed Domain Dame to the Complainant’s trademarks is the very essence of bad faith identified in numerous previous decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562; Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814 and eprimo GmbH v. Fei Fei / Lan Fei, WIPO Case No. D2009-0598).
This Panel finds that the Respondent has taken the Complainant’s well-known trademark YOUTUBE and incorporated that mark into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to a PPC parking page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(1)(3) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(9) of the Policy and 15 of the Rules, the Panel orders that the domain name <youtube.ph> be transferred to the Complainant.
Dated: October 26, 2011