Google filed a UDRP complaint with the National Arbitration Forum over the registration of the domain names youtbe.com, youtub.com, youtue.com and yutube, and other domain names, all of which are registered to the same entity, Power Brand Center Corp, according to WHOIS records. Based on estimates provided by Compete.com Youtub.com alone attracted 6,000 unique views in the month of October 2011.
Google has recovered the rights to 37 of it’s YouTube related brand domain names, however the National Arbitration Forum held that 13 of the domain names, including youtubr.com and youtbue.com, rightfully remain with the current registrant.
All of the typo domain names resolve to survey sites imitating YouTube, which enable the typosquatter to derive revenue on each occasion an internet user inputs their contact information into survey forms, contests and offers of products and other services.
All of the names forward internet users to videorewardspace.com which features a logo similar to Google’s YouTube logo offering prizes in exchange for personal information. The logo copied the look and feel of the YOUTUBE website and logo to deceive users into mistakenly registering for text messaging plans and/or downloading adware toolbars
The UDRP criteria for determining competing claims over ownership are set out in the UDRP Policy on domain name disputes.
Paragraph 4(a) of the UDRP Policy requires a Complainant 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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
Google Inc., acquired YouTube, LLC in 2006, and was assigned all of its trademarks in 2007, giving them rights in the relevant domain names the subject of the dispute. Google also submitted as evidence to the Panelist numerous worldwide trademark registrations that it owns for the YOUTUBE mark which it acquired in 2006.
Although the Panel found Google had established rights in their registered trademarks as at the date of filing, the Panel held that evidence of common law rights and secondary meaning in its mark were not sufficient for the purpose of satisfying s4(a)(i) of the policy.
Google had no difficulty in establishing that the collection of domain names it sought to recover were confusingly similar to the marks it alleged it had rights in under s4(a)(i). The domain names either omitted or added letters and numbers to its mark, omitted the period after the “www,”added generic terms to the mark, and the generic top-level domain, .com. or .net.
It is well established that the use of misspellings of a mark and typographical errors does not preclude a finding of confusing similarity, particularly where each domain name contains a version of its mark as the main component of the domain name in contention. The Panel clearly agreed that the Respondent’s registration of the disputed domain names, containing generic terms, the addition or removal of letters and numbers, the omission of the period, and the addition of a gTLD, met the requirement of confusing similarity under 4(a)(i) of the UDRP Policy.
The decision is perplexing as most people would consider that Google had acquired the necessary secondary meaning in the YouTube mark for it to successfully establish common law rights pursuant to Policy.
Having satisfied itself that 4(a)(i) of the policy was met, the Panel then considered 4(a)(ii), specifically that the Respondent had no rights or legitimate interests in the disputed domain names. Once a Complainant has established a prima facie case under 4(a)(ii), the burden of proof shifts to a Respondent to show that it does possess rights and legitimate interests in the subject domain names. The Panel was able to infer a lack of rights or legitimate interests in the Respondents in the disputed domain names merely by virtue of their failure to respond to the complaint.
Google submitted the Respondent was not commonly known by the disputed domain names and that the WHOIS information for the disputed domain names identified the Respondent through several aliases, none of which were commonly known by the disputed domain names.
Without any evidence of the Respondent being commonly known by the disputed domain names before it, the Panel found that the Respondent lacked rights and legitimate interests in the disputed domain name pursuant to 4(c)(ii) of the Policy.
After considering the use to which the Respondent had put the domain names, which was essentially a phishing scheme, the Panel easily concluded that the use of the domain name was clearly not a bona fide offering of goods or services under 4(c)(i) of the Policy nor was there any basis for finding that it qualified as a legitimate noncommercial or fair use.
However, in an unusual finding, the National Arbitration Panel, then considered 13 of the domain names in contention, all of which had one thing in common, namely that they were registered by the current owner prior to Google’s registered trademarks with the United States Patent and Trademarks Office (USPTO) on January 30, 2006.
The Panel concluded that Google hadn’t provided satisfactory evidence sufficient to establish common law rights which predated the Respondent’s domain name registrations of the YouTube variants.
Therefore, the Panel held that it would not be possible for the Respondent to have registered the 15 domain names registered prior to Google’s trademark filings, in bad faith under 4(a)(iii) of the Policy, under circumstances where its domain name registrations predated Google’s rights in the marks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief be granted to Google and the domain names in respect of 39 of the typo domain names be transferred to Google.
The decision seems highly abherrent as a trademark owner is able to establish common law rights in a mark upon the first use of the mark in commerce.
Trademark rights arise with the first use of a trademark in commerce. In this particular instance, the first use in commerce date on the trademark was April 24, 2005, which predated the registration by the Respondent of the 13 domain registrations the Panel granted it the rights to retain.
Whilst it isn’t known precisely what evidence Google put before the Panelist determining regarding the status of their common law rights. Such disputes are decided based on the electronic filing of submissions by both parties and one would have expected Google to have advanced such evidence to the National Arbitration Forum to prove their rights.
s15(a) of the UDRP states that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable“.
At least theoretically, this phrase is very broad, giving a Panel the discretion to decide disputes based on any rules and principles of law it deems applicable, leaving aside the issue of statements or evidence submitted. The UDRP’s purpose was to develop a single procedure to resolving disputes expeditiously, resident in different legal jurisdictions. The framers of the Policy didn’t stipulate any one controlling doctrine or overarching trademark law which would be applied universally to determine the outcome of a dispute. Rather 15(a) gives a Panel full discretion in deciding which law, if any, it will apply to a particular dispute before it.
This absence of a single controlling trademark law might end up making the difference in resolving conflicting claims under the UDRP policy. The Panel decision seems unsound just considering the bad faith issue. The UDRP states that registering a domain name primarily to disrupt a competitor’s business constitutes evidence of bad faith. Based on past decisions it hasn’t taken much for complainants to convince panels of such a bad faith intent, and in this instance the multiple registration of domain names by aliases connected to one entity, combined with the deliberate misdirecting of consumers for the purpose of generating revenue based on the complainant’s mark seems to present compelling evidence of bad faith. (being an intent to attract users by use of a trademark in a misleading way for commercial gain)
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