Duck Duck Go, Inc. v. Hou Chang Li / sun guihua / sunguihua
Claim Number: FA2008001907210
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox, Ohio, USA. Respondent is Hou Chang Li / sun guihua / sunguihua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <duckuckgo.com> and <duckudckgo.com>, registered with GoDaddy.com, LLC and Cloud Yuqu LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2020; the Forum received payment on August 4, 2020. The Complainant was received in English.
On August 5, 2020, GoDaddy.com, LLC and Cloud Yuqu LLC confirmed by e-mail to the Forum that the <duckuckgo.com> and <duckudckgo.com> domain names are registered with GoDaddy.com and LLC; Cloud Yuqu LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Cloud Yuqu LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Cloud Yuqu LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 11, 2020, the Forum served the English language Complaint and all Annexes, including a English and Chinese language Written Notice of the Complaint, setting a deadline of August 31, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@duckuckgo.com, postmaster@duckudckgo.com. Also on August 11, 2020, the English and Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language of the Proceeding
UDRP Rule 11(a) provides that, in the ordinary course, the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the disputed domain names contain entirely English words and characters;
(ii) the webpage resolving from the domain name <duckudckgo.com> prompts Internet users to install a “security extension” with installation instructions displayed in English; and
(iii) the same webpage follows standard English grammar and syntax, and there are no spelling or grammar errors, as might be expected if Respondent were not proficient in English.
In light of these contentions, none of which is contested by Respondent, and because there is reason to believe that translating the documents required to prosecute this proceeding in Chinese would put Complainant to a substantial financial burden and unnecessarily delay this proceeding, we look to the further provisions of UDRP Rule 11(a), which permit this Panel to proceed in a language other than that of the pertinent registration agreement “having regard to the circumstances of the administrative proceeding,” and, in so doing, we conclude that it would be in the interests of justice and economy for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion in determining that the language of a UDRP proceeding should be English, notwithstanding the different language of the governing registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
UDRP Rule 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names here at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that both domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts the following:
(1) each of the domain names has been registered in China;
(2) each of the domain names has a similar structure which closely resembles Complainant’s DUCKDUCKGO mark; and
(3) at various times, each of the domain names has resolved to identical web pages with identical security extension prompts.
Because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, we conclude that the request must be granted. Accordingly, this Decision will refer throughout to the pair of identified respondents as a single Respondent.
PARTIES' CONTENTIONS
A. Complainant
Complainant provides a variety of privacy protection services to Internet users.
Complainant holds a registration for the DUCKDUCKGO service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,527,274, registered on November 4, 2008, and renewed as of December 7, 2017.
Respondent registered the domain names <duckuckgo.com> and <duckudckgo.com> on February 18, 2012, and June 10, 2020, respectively.
Both of the domain names are confusingly similar to Complainant’s DUCKDUCKGO mark.
Respondent has not been commonly known by the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the DUCKDUCKGO mark.
Respondent does not use the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names to induce Internet users to download malware.
Respondent also uses the domain names to host pay-per-click links to third party websites, from the operation of which Respondent presumably receives financial gain.
Respondent does not have any rights to or legitimate interests in either of the domain names.
Each of the domain names is an instance of typo-squatting.
Respondent knew of Complainant’s rights in the DUCKDUCKGO when the domain names were registered.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the DUCKDUCKGO service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <duckuckgo.com> and <duckudckgo.com> domain names are confusingly similar to Complainant’s DUCKDUCKGO mark. The domain names incorporate slightly misspelled versions of the mark, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding the <klentools.com> domain name confusingly similar to the KLEIN TOOLS mark).
See also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018):
Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <duckuckgo.com> and <duckudckgo.com> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <duckuckgo.com> and <duckudckgo.com> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the DUCKDUCKGO mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “sunguihua” and “Hou Chang Li,” which does not resemble either of them. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the challenged domain names to induce Internet users to download malware. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017):
Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).
Complaint also alleges, again without objection from Respondent, that Respondent uses the contested domain names to host pay-per-click links to third party websites, from the operation of which Respondent presumably receives financial gain. This employment is likewise neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that a respondent failed to provide evidence of either a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name where the domain name resolved to a website offering hyperlinks to commercial websites operating in competition with the business of a UDRP complainant).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The evidence before us demonstrates that Respondent employs the disputed <duckuckgo.com> and <duckudckgo.com> domain names to disseminate malware to unsuspecting Internet users. This use of the domain names illustrates that Respondent both registered and uses them in bad faith. See, for example, Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1473573 (Forum January 21, 2013) (finding that because a respondent used a disputed domain name to facilitate downloading malicious software to the computers of a resolving website’s visitors, that respondent had registered and used the domain name in bad faith as provided in Policy ¶ 4(a)(iii)).
We are also convinced by the evidence that Respondent uses the disputed <duckuckgo.com> and <duckudckgo.com> domain names, which we have found to be confusingly similar to Complainant’s DUCKDUCKGO mark, to host third-party hyperlinks from the operation of which Respondent presumably receives financial gain as a consequence of the confusion thus caused among unsuspecting Internet users. Under Policy ¶ 4(b)(iv), this stands as further proof of Respondent’s bad faith in registering and using them. See, for example, Dovetail Ventures, LLC v. Klayton Thorpe, FA1625786 (Forum August 2, 2015) (finding that a respondent acted in bad faith under Policy ¶ 4(b)(iv) where it used a disputed domain name to host hyperlinks from which that respondent presumably gained financially).
Finally, under this head of the Policy, it is plain that each of the challenged domain names is an instance of typo-squatting, i.e.: the deliberate misspelling of the mark of another in a domain name so as to take advantage of typing errors commonly made by Internet users in entering into their web browsers the names of enterprises with which they wish to do business online. Typo-squatting, without more, evidences bad faith in the registration and use of the contested domain names. See, for example, Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum September 7, 2018):
Typo[-]squatting itself is evidence of relevant bad faith registration and use [of a domain name that is confusingly similar to the mark of a UDRP complainant].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <duckuckgo.com> and <duckudckgo.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 14, 2020
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