The Brief Case - March 2012

Mar/13/12| The Brief Case - March 2012 Google Loses WIPO Arbitration over YouTube.com.pe by Chase Marshall :: Sedo.com Legal Staff

On February 20, 2012, the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center handed Google Inc. a quick and decisive defeat in a domain name dispute they filed. The domain in dispute? Youtube.com.pe, registered in Peru (.pe, including all second-level extensions, is the Country Code Top Level Domain [ccTLD] for the South American nation).

As many know, Google owns and operates the YouTube website and its home domain, youtube.com, which was registered on February 14, 2005. Google also holds multiple trademark registrations for the term “YouTube,” the first of which was filed with the U.S. Patent and Trademark Office on January 30, 2006. Google has also held a registered trademark for the term in Peru since May 7, 2007.

The domain name at the center of this dispute, youtube.com.pe, was registered in Peru on May 29, 2006. In addition to the registration of this domain name, Google claimed that the website on youtube.com.pe provided links to competitors of their YouTube service. These two factors were the basis of Google’s claim that youtube.com.pe was using the domain name in bad faith by intentionally causing confusion among consumers. Under the Peruvian policy regarding domain name disputes, Google had to prove that:

1) the domain name was identical or similar to the point of creating confusion with respect to: trademarks in Peru; names of individuals; names of official Peruvian government bodies, etc.,
2) the applicant for the domain name had no rights or legitimate interests in the domain name, and
3) the domain name was registered and used in bad faith.

Normally this would seem like an easy decision in favor of Google. Google has a registered trademark in Peru and the domain name at issue is virtually identical to that trademark. Also; the registrant did and does not appear to have any legitimate interest in the domain name; these circumstances lend to a finding that the domain was used in bad faith.

The arbitration panel based its final decision on a strict reading of the Peruvian policy concerning domain name disputes. Unfortunately for Google, Peru has extremely strict trademark law. The law states that the right to sole use of a trademark shall be acquired by registration of the goods to the competent national office. Essentially, Google did not have the exclusive right to use the “YouTube” mark in Peru until it registered the mark with the Peruvian government. And although one does not have to be a Peruvian citizen to register a .pe domain name, one does need a validly registered Peruvian trademark in order to challenge a .pe domain name.

Ultimately, the decision in this arbitration boiled down to the specific dates involved. Because Google didn’t register the “YouTube” trademark in Peru until after the youtube.com.pe domain was registered, Google does not have the right to prevent the use of that domain name. Google lost the arbitration because of the first tenet of the Peruvian domain name dispute policy—at the time that the owner of youtube.com.pe registered the domain, it was not identical or similar to any preexisting Peruvian trademarks.

This decision makes clear that the specific county in which a domain name is registered can make a significant difference when the legitimate use of that domain is challenged. Before registering a domain name, it is extremely important to understand the dispute policy that will be applied should any complaint arise. Differences in trademark law between countries can also play an important role in domain name disputes, so any registrant or buyer should explore those differences in an effort to make smarter investment decisions with reduced or no risk.