The firm of Fred-Young & Evans LP are representing a Nigerian, Mr Chianugo Peter, in his suit for 150 million dollars' compensation from Google LLC and GoDaddy.com over the shutdown of his YouTube Audio.com domain name after eight years of promotional and marketing works on the name. The Plaintiff sought a declaration that since GoDaddy and Google encouraged him to make use of the YouTube Audio.com domain name for the past eight years, they are estopped from claiming that the domain name infringes any of their trademarks or deny him the use of the YouTube Audio.com domain name.
Mr. Chianugo Peter, through his lawyer, Emmanuel Ekpenyong Esq. of Fred-Young & Evans LP, filed the suit before Justice Obiora Egwuatu of Federal High Court, Abuja Division, Nigeria. The Plaintiff, in an originating process with Suit No. FHC/ABJ/CS/238/2023, sued GoDaddy.com LLC and Google LLC as 1st and 2nddefendants respectively. In the suit filed on 14th April 2023, the Plaintiff sought the Court’s declaration that he registered the YouTube Audio business name, commenced trademark registration on the logo of the business name and secured the YouTubeAudio.com domain name from the GoDaddy in good faith to carry on genuine business to host his application thereon to attract users.
The Plaintiff sought a declaration that since GoDaddy and Google encouraged him to make use of the YouTubeAudio.com domain name for the past eight years they are estopped from claiming that the domain name infringes any of their trademarks or deny him the use of the YouTubeAudio.com domain name. He also sought a declaration of the Court that he is entitled to compensation from the defendants for the loss of the YouTubeAudio.com brand and goodwill which has accrued on the brand and domain name for 8 years of promotional and marketing works from 2nd July 2015 to 7th December 2022.
The Plaintiff sought an order directing the defendants to pay him the sum of $50 million for promotional and marketing works on the YouTube Audio business name and YouTube Audio.com domain name for eight years' rom July 2, 2015 to Dec. 7, 2022. The Plaintiff also sought an order of Court directing the defendants to pay the sum of US $ 100, 000, 000 (One Hundred Million United States Dollars) to the plaintiff for loss of anticipated profits associated with the brand equity and goodwill of YouTube Audio and YouTubeAudio.com domain name amongst other claims.
In his Statement of Claim, the Plaintiff stated that he was the owner of the YouTube Audio, also known as YTAudio which could be accessed through platforms such as Google Play Store and Apple Store in Nigeria. YouTube Audio is a creative mobile application that encourages users nto be more creative and enjoy utilizing audio as a primary source of entertainment, information, and expression. Sometime in 2015, he acquiredYoutubeAudio.com and YoutubeAudio.ca. domain names from GoDaddy without any caveat that it infringed the YouTube trademark or any other products of Google. At the time he applied to GoDaddy to obtain the YouTubeAudio.com andYoutubeAudio.ca domain names, GoDaddy carried out an availability check and confirmed that the names were available for him.
The Plaintiff stated that GoDaddy did not inform him that neither YouTubeAudio.com nor YoutubeAudio.ca domain name was similar to YouTube or any trademark of Google. It was upon this premise that the Plaintiff consistently paid for the domain name and carried out promotional and marketing works on the domain name. Besides, from 2015 to April 2022 he carried out extensive promotional and marketing works on the domain name and Google did not lay claim to the domain name or insist that it was similar to the YouTube trademark. The Plaintiff even paid Google to host the YouTube Audio.com application on the Google Play Store in 2021 without any query that the domain was similar to the YouTube trademark or any of its other trademarks.
The Plaintiff stated the YouTube Audio was duly registered on 22nd February 2016 as a business name with the Corporate Affairs Commission (CAC) under the laws of the Federal Republic of Nigeria as BN 2395035 and continuously filed tax returns with the Federal Inland Revenue Service in Nigeria (FIRS). The YouTube Audio.com domain was fully established and had a management team, business address, foreign and local bank accounts with several banks, including master card and cheque books. It was after eight years of serious promotional, and marketing works on theYouTubeAudio.com domain name to make it attractive to users and launch its application thereon that the defendants suddenly claimed that the domain name was similar to the YouTube trademark.
The Plaintiff states that GoDaddy registered the YouTubeaudio.com domain name and gave him the assurance that he had acquired a right over the name. Google also gave him the assurance that he had acquired a right over the name when it took no action throughout the eight years period when he carried out promotional works on the name and even gave approval for the YouTube Audio application to be listed on Google Play Store in 2021. It was based on the assurances of the defendants that he relied upon and incurred tremendous cost and expenses in registering and branding the YouTube Audio.com business and domain name and carried out wide promotional works on the name for eight years.
The Plaintiff further states that on 29th April 2022, the Google, through its Solicitor, Aluko & Oyebode contacted him to express its concerns about YouTube Audio and its similarities with YouTube. Google’s lawyer called for amicably settlement of the issue and advised him to change its business name, social media pages, domain names and trading style to YTAudio. The Plaintiff through his lawyer agreed to an amicable settlement of the issue only if Google was willing to compensate him for promotional works on the YouTube Audio.com domain name. Instead of taking steps to compensate him, GoDaddy shut down his domain on a claim that it infringed the YouTube trademark upon the decision of an arbitration proceedings commenced against him by Google before the Forum under the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).
On the basis of the forum’s decision, GoDaddy shut down the Plaintiff’s YouTubeAudio.com domain name and transferred it to Google on7th December, 2022 even though Google did not have a monopoly of the “YouTube” acronym as there are other independent companies and domain names with the “YouTube” acronym such as “YouTube Downloader”, “YouTube Promoter”, “ssyoutube.com”, “YouTube to MP4 Converter” amongst others.
When the matter came up for report of service of originating processes on the defendants, only the Plaintiff and Google were represented. Justice Egwuatu adjourned the matter until 11th October 2023 for mention.
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