WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Google Inc. v. Sajad Amirzadegan
Case No. DIR2016-0009
1. The Parties
The Complainant is Google Inc. of Mountain View, California, United States of America, represented by Rouse and Co. International, United Arab Emirates.
The Respondent is Sajad Amirzadegan of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain names <utube.ir> and <youtube.ir> are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2016. On the same date, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On March 9, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on March 11, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (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 March 16, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2016. No Response was received. Accordingly, on April 6, 2016, the Center notified the parties of the Respondent’s default.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 15, 2016. 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.
4. Factual Background
The trademark YOUTUBE is a coined term used in connection with a website for sharing videos and was launched in 2005 by YouTube Inc. It quickly became a huge success and in 2006, the Complainant bought YouTube Inc. and became the owner of the trademark YOUTUBE.
YOUTUBE is a registered trademark all over the world and is considered a top web brand and its website is one of the most popular websites. The number of users has exceeded one billion.
The disputed domain name <youtube.ir> was first registered in October 2006. It was registered in the Respondent’s name in 2009 while the disputed domain name <utube.ir> was first registered in July 2009 and then registered in the Respondent’s name in 2010. The disputed domain names are used for video sharing websites. Clicking on the links on the websites to which the disputed domain names resolve leads to the site “www.fars.tv” which is a video sharing website as well.
5. Parties’ Contentions
The Complainant contends that it has started the use of the trademark YOUTUBE prior to the registration of the disputed domain names and owns trademark registrations and applications in many countries including the Islamic Republic of Iran. It has, therefore, protectable rights in the trademark YOUTUBE. It further contends that the disputed domain name <youtube.ir> is identical to the Complainant’s trademark as it incorporates it in an identical manner. The disputed domain name <utube.ir> incorporates a phonetically identical word and is hence confusingly similar. It also contends that using the country-code Top-Level Domain (ccTLD) “.ir” does not eliminate the confusing similarity but creates the impression that the disputed domain names are affiliated with the Complainant and destined for providing its services in the Islamic Republic of Iran.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names as there is no evidence to establish such rights or interests. The Complainant has not authorized the Respondent to use its trademark nor is the latter associated or affiliated with the Complainant. There is no evidence that the Respondent is known by the disputed domain names or that he was commonly known by those names prior to their registration. The Complainant further contends that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. In fact, the Respondent is intentionally and misleadingly diverting Internet users to its sites which compete with the Complainant.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The trademark YOUTUBE is a well-known trademark and given its fame, the extensive media coverage and its trademark filings, it is inconceivable that the Respondent has created the disputed domain names independently. Furthermore, the trademark YOUTUBE has no meaning other than as the Complainant’s trademark. The Respondent is trying to confuse Internet users and divert traffic to its websites by benefitting from the goodwill of the Complainant’s trademark. The bad faith of the Respondent is further evidenced by the fact that he offered to sell to the Complainant the disputed domain name <youtube.ir>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered or are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided the Panel with a list of its world-wide trademark registrations as well as copies of a number of trademark registration certificates for the trademark YOUTUBE. The registrations made by the Complainant go as far back as March 2006 and cover the Islamic Republic of Iran. The Panel is satisfied that the Complainant has established its ownership of the trademark YOUTUBE.
The Respondent is using the trademark YOUTUBE in a visually and phonetically identical manner in the disputed domain name <youtube.ir> and in a phonetically identical manner in the disputed domain name <utube.ir>. It is established that the use of a ccTLD is not a differentiator, i.e. does not typically eliminate confusing similarity.
Therefore, the Panel finds the disputed domain name <youtube.ir> to be identical to the Complainant’s trademark and the disputed domain name <utube.ir> confusingly similar to it, and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has indicated that it has never authorized the use of its trademark by the Respondent. Furthermore, there are no indications that the Respondent is commonly known by either of the disputed domain names. It appears to the Panel that the Respondent is using the disputed domain names in order to attract Internet users to its websites via confusion with the Complainant’s mark and hence is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the disputed domain names. In fact, the Respondent did not submit a Response and in the absence of a Response, the Panel believes that the Complainant meets the requirement of prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names. See Investissement Marius Saradar S.A.L. (Holding Company) and Banque Saradar S.A.L. v. John Naffah and Z Publishing Inc, WIPO Case No. D2000-0853.1
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
The trademark YOUTUBE is one of the most well-known trademarks, especially in the Internet world. The disputed domain names are used in connection with the sharing of videos which is the exact purpose for which the famous trademark YOUTUBE is used. Furthermore, YOUTUBE is an invented word. For all of these reasons, the Panel is convinced that the Respondent knew of the existence of the trademark YOUTUBE at the time of registering the disputed domain names and has used it within the disputed domain names with the aim of attracting Internet users to its own websites. The Respondent is using the disputed domain names in bad faith and benefitting from the goodwill established in the Complainant’s trademark. The bad faith of the Respondent is further demonstrated by the fact that he was willing to sell the disputed domain name <youtube.ir> to the Complainant. See Wal-Mart Stores, Inc v. DomainsbyProxy.com, Inc., WIPO Case No. D2014-1695.
Therefore, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <utube.ir> and <youtube.ir> be transferred to the Complainant.
Date: April 20, 2016
1 While the Complaint was brought under the irDRP and not the Uniform Domain Name Dispute Resolution Policy (UDRP), given the similarities between the two, the Panel finds relevant to the present dispute decisions rendered under the UDRP, and will refer to these throughout.