WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Google Inc. v. PD Hosting Inc., Ken Thomas

Case No. DPH2011-0005

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.com.ph> (the “Domain Name”) is registered with dotPH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 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 September 7, 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 Uniform Dispute Resolution Implementation Rules applicable to proceedings under the 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 September 9, 2011. In accordance with the Rules, paragraph 5.1, the due date for Response was September 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2011.

The Center appointed Warwick Smith 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.

In the absence of a Response, the Panel has checked the record, and is satisfied that the Center has employed “reasonably available means calculated to achieve actual notice [of the Complaint] to Respondent”, as required by paragraph 2.1 of the Rules.

4. Factual Background

The Complainant

The following (uncontested) facts are taken from the Complaint.

The Complainant operates the world’s largest Internet search engine. At its website at “www.youtube.com” (the “Complainant’s website”) it also operates one of the world’s leading online video sharing sites.

The mark YOUTUBE is a coined expression, chosen by a predecessor in title of the Complainant, YouTube, Inc., in February 2005. The Complainant’s website was launched on April 24, 2005. The Complainant acquired YouTube Inc., and with it the right to use the mark YOUTUBE, on November 13, 2006.

According to a Wall Street Journal report referred to by the Complainant, by August 2006 the Complainant’s website was hosting approximately 6.1 million videos. By November 2007, that figure had risen to 2.9 billion videos. According to the web ranking website “www.alexa.com”, the Complainant’s website now ranks as No. 3 on the list of the top 500 websites in the world.

The Complainant’s website is popular in the Philippines, where, according to the Complaint, almost 30% of the population use the Internet.

The Complainant holds numerous registrations around the world for the mark YOUTUBE. These include a United Kingdom registration effected on December 19, 2006 (for services in international class 38), separate United States registrations effective from January 30, 2006 and October 29, 2008, and International registrations effective from March 1, 2006 and December 11, 2008.

The Respondent and the Domain Name

It is not clear from the Complaint (or from the Registrar’s verification email provided to the Center) when the Domain Name was registered. WhoIs particulars provided by the Complainant show only that the Domain Name will expire on February 21, 2019.

The Complainant produced with the Complaint a screen shot of the website (“the Respondent’s website”) to which the Domain Name resolved at or shortly before the filing of the Complaint. It consisted of a single page containing a number of click-on links corresponding to various product categories (e.g. “Air Travel”, “New York Hotel”). Three of the links were to “YouTube”, “You Tube Videos”, and “Video Google”.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name fully incorporates the Complainant’s YOUTUBE mark, and is identical or confusingly similar to that mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized the Respondent to use its well known mark, and the Domain Name is currently “parked”, with the Respondent generating click-through fees from the sponsored links on the Respondent’s website.

3. The Domain Name was registered and is being used in bad faith. The Respondent’s intention has been to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. What the Complainant must prove under the Policy

Under Paragraph 4.1 of the Policy, a complainant has the burden of proving the following:

1. That the disputed domain name 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 in bad faith.

Paragraph 15.1 of the Rules requires 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”.

Where a respondent has not submitted a response, paragraph 5.5 of the Rules requires the Panel, absent exception circumstances, 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.

B. Identical or Confusingly Similar

This part of the Complaint has been proved. The Complainant has established that it is the owner of the mark YOUTUBE in numerous jurisdictions, and that mark is identical to the Domain Name (the “.com.ph” suffix is not taken into account in the comparison).

C. Rights or Legitimate Interests

Paragraph 4.3 of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4.1.2 of the Policy. Those circumstances are:

1. Before any notice to [the respondent] of the dispute, use by [the respondent] 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. Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

3. Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy, which is identical to paragraph 4.1.2 of the Policy, is summarized at paragraph 2.1 of the Center’s online document, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), as follows:

“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

In this case, the Domain Name is identical to the Complainant’s YOUTUBE mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent or any business or organization operated by it may be commonly known by the Domain Name, and thus nothing to suggest that paragraph 4.3.2 of the Policy might provide the Respondent with a defense. The Respondent’s use of the Domain Name appears to have been commercial in character (monetizing the Domain Name for pay-per-click or other advertising revenue), so there is no scope for any “non-commercial use” defense under paragraph 4.3.3 of the Policy.

Those factors, in combination, sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent. The Respondent having failed to file a Response, that burden has not been discharged, so the Complainant’s prima facie proof must prevail. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4.2 of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:

“4. by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Complainant’s YOUTUBE mark is an invented expression, and it would be one of the world’s best known trademarks. In those circumstances it is almost inconceivable that the Respondent would not have been aware of the mark when the Domain Name was registered. Consistent with that view, there are several references to “YouTube” on the Respondent’s website. It also seems highly likely that the Respondent would have checked who owned the corresponding domain name in the “.com” top level domain space before it acquired the Domain Name. The Respondent would have become aware of the Complainant and the Complainant’s website when it did so.

It is true that the evidence does not show exactly when the Respondent acquired the Domain Name, but in the absence of a Response the Panel is prepared to infer that it was after the Complainant or its predecessor had acquired rights in the YOUTUBE mark. “Youtube” is not the kind of expression the Respondent would be likely to have thought of independently of the Complainant and its mark, and there is nothing on the Respondent’s website to suggest that the Domain Name has any connotation other than being a reference to the Complainant’s mark.

This appears to be a case of “opportunistic bad faith”, of the kind discussed in cases such as Veuve Clicquot Ponsardin, Maison Fondée en 1772 v The Polygenix Group, WIPO Case No. D2000-0163 – the very use of a mark as well known as YOUTUBE by someone with no connection with the Complainant or its services, is in itself suggestive of bad faith. In the absence of any Response, the only sensible inference the Panel can draw is that the Respondent has made a deliberate attempt to trade off the Complainant’s reputation in its mark, by attracting to the Respondent’s website Internet users looking for the Complainant’s local (Philippines) “YouTube” website.

The “link farm” nature of the Respondent’s website makes it likely that the Respondent has done that for commercial gain, in the form of pay-per-click or other revenue derived from site visitors clicking on the various links on the Respondent’s website.

The circumstances just described fall within the category of circumstances which are deemed by paragraph 4.2.4 of the Policy to be evidence of bad faith registration and use. There being no evidence pointing to any contrary conclusion, the Complainant has sufficiently proved that the Domain Name has been registered and used by the Respondent in bad faith.

7. Decision

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.com.ph>, be transferred to the Complainant.

Warwick Smith
Sole Panelist
Dated: October 26, 2011