Google Inc. v. Sanjay Nimbalkar
Claim Number: FA0708001068746
Complainant is Google Inc. (“Complainant”), represented by James
L. Vana, of Perkins Coie LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwyoutube.com>, registered with Lead Networks Domains Pvt.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 27, 2007.
On September 19, 2007, Lead Networks Domains Pvt. confirmed by e-mail to the National Arbitration Forum that the <wwwyoutube.com> domain name is registered with Lead Networks Domains Pvt. and that the Respondent is the current registrant of the name. Lead Networks Domains Pvt. has verified that Respondent is bound by the Lead Networks Domains Pvt. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 17, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
On October 24, 2007, Respondent requested an extension of the date by which a timely Response could be filed. The National Arbitration Forum subsequently granted this request, extending the date by which a timely Response could be filed until November 6, 2007.
A timely Response was received and determined to be complete on November 6, 2007.
Both parties submitted timely additional submissions pursuant to the Forum’s Supplemental Rule 7.
On November 14, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that the disputed domain name <wwwyoutube.com> is confusingly similar to YOUTUBE, a mark in which Complainant claims to have rights; that Respondent lacks rights or legitimate interests in the domain name; and that Respondent registered and is using the domain name in bad faith. In support of these allegations, Complainant states, inter alia, that it and its predecessor in interest have used YOUTUBE as a highly distinctive trademark continuously since on or before March 1, 2005; that prior to August 14, 2005, when Respondent registered the disputed domain name, YOUTUBE had become widely known as an identifier for the services offered by Complainant and its predecessor; that Complainant possesses common-law trademark rights in the YOUTUBE mark and has registered or applied to register the mark in the United States and elsewhere; and that the disputed domain name, being comprised of the YOUTUBE mark appended to “www” (meaning “world wide web”) and the generic “.com” top-level domain suffix, is confusingly similar to the mark. Complainant further contends that Respondent lacks rights or legitimate interests in the domain name, on the grounds that Respondent’s use of the domain name for a website that merely contains links to other commercial websites, presumably generating “clickthrough” revenues for Respondent, constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name; that Respondent is not commonly known by the domain name; and that Respondent has not been licensed or authorized to use the YOUTUBE mark. Finally, Complainant alleges that Respondent must have been aware of the YOUTUBE mark when he registered the disputed domain name, and selected it because of its similarity to the mark in order to profit from “clickthrough” revenues generated by attracting Internet users through confusion with the mark. (Complainant also makes additional assertions relevant to bad faith, including a claim that Respondent has engaged in a pattern of registering domain names containing misspellings of registered trademarks.)
Respondent denies all of the allegations in the Complaint, and states that it “should be dismissed with compensatory costs,” as it lacks merit and represents “a gross abuse of the process.” Respondent states that both he and Complainant are “into the business of search engine monetization,” and that the Complaint “is mutually destructive” of this business. Respondent characterizes himself as a “bonafidy [sic] purchaser for value without notice,” and elsewhere in the Response refers to having purchased the domain name from another registrant, Max Low, having paid “a very high valuable consideration for the same based on the earnings of the said domain name.” Respondent also furnishes a list of 500 domain names, all beginning with “www,” that he asserts are representative of 1.5 million such names that are being used by Complainant and that violate trademark rights of third parties. Respondent states that these domain names “are being redirected” (apparently by the unrelated third parties that registered these names) “to the Complainant’s search engine and as a consequence thereof, the Complainant derives financial gains from this [sic] domain names.”
C. Additional Submissions
Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) vests the Panel with sole discretion to request further statements or documents from either of the Parties. In this case the Panel considers that the Complaint and Response provided the Panel with a sufficient basis to rule upon the present matter. Having reviewed those documents together with the additional submissions filed by the parties, the Panel finds no circumstances present that warrant supplementation of the record. The Panel therefore declines to consider the parties’ additional submissions.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, that Respondent lacks rights or legitimate interests with respect to the disputed domain name, and that Respondent registered and has used the disputed domain name in bad faith.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The disputed domain name, <wwwyoutube.com>, contains the Complainant’s well-known and distinctive common-law mark YOUTUBE, preceded by the letters “www” (meaning “world wide web” and commonly found preceding domain names used for websites), with the generic top-level domain suffix “.com” appended thereto. The Panel has no doubt that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and the burden therefore shifts to Respondent to rebut this showing with evidence of its rights or legitimate interests. See, e.g., Am. Online, Inc. v. Thricovil, FA638077 (Nat. Arb. Forum Mar. 22, 2006). Respondent has failed to meet this burden. Furthermore, the fact that Respondent may have purchased the domain name from a prior registrant does not give rise to rights or legitimate interests under the Policy, any more than does paying a registration fee to a domain name registrar. See, e.g., Enterprise Rent-A-Car Co. v. D’Souza, FA1045134 (Nat. Arb. Forum Oct. 12, 2007). The Panel concludes that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests with respect to the disputed domain name.
In the Panel’s view, Respondent’s acquisition and use of the domain name seems calculated to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and to profit from that traffic. Under Paragraph 4(b)(iv) of the Policy, such circumstances serve as evidence that Respondent registered and is using the domain name in bad faith, and the Panel so concludes.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwyoutube.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 28, 2007
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