Kijiji International Limited Corporation v. Sumit Ghosh / Facedominator LLC
Claim Number: FA2008001909542
Complainant is Kijiji International Limited Corporation (“Complainant”), represented by Amy Tindell of Holland & Hart LLP, United States. Respondent is Sumit Ghosh / Facedominator LLC (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kijijidominator.com> and <gumtreedominator.com>, registered with NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2020; the Forum received payment on August 21, 2020.
On August 24, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <kijijidominator.com> and <gumtreedominator.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@kijijidominator.com, postmaster@gumtreedominator.com. Also on August 24, 2020, the 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 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it operates in the field of online commerce and shopping and is a subsidiary of eBay, Inc. Since at least as early as 2005, Complainant has used the KIJIJI mark in connection with online classified advertising services. These services are organized by geographic location and are utilized by consumers to post local advertisements for sale and exchange of goods and services. Complainant’s online classified advertising services are offered under the KIJIJI mark in more than 300 cities in Canada, Italy, Hong Kong, and Taiwan. There are over 7 million listings on the <www.kijiji.com> website, which attracts 17 million monthly visitors. Complainant’s domain <kijiji.ca> is the most popular online classified service in Canada and ranks in the top 15 websites in Canada. Complainant also has a strong online presence with almost 30,000 Twitter followers, almost 750,000 followers on Facebook, and over 10,000 followers on LinkedIn. Since 2000, the websites under Complainant’s GUMTREE brand have grown to be the leading classifieds site in the United Kingdom, Ireland, Australia and South Africa, and the GUMTREE brand has continued to expand into other countries and regions. The website <www.gumtree.com> has over 1.8 million ads on the site at any one time and over 1/3 of the UK’s population visit it per month, making it the UK’s #1 classifieds website. The GUMTREE LinkedIn account has over 6,000 followers, its Facebook page has over 500,000 followers, and its Twitter account has over 40,000 followers. Complainant has rights in the KIJIJI and GUMTREE marks based upon registration in the United States in, respectively, 2008 and 2009.
Complainant alleges that the disputed domain names are identical and/or confusingly similar to its marks as they each incorporate one of Complainant’s marks in its entirety, merely adding the generic term “dominator” and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names. Respondent does not have permission to use Complainant’s KIJIJI or GUMTREE marks and is not commonly known by the disputed domain names. Additionally, Respondent doesn’t use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to advertise software products that illegally access Complainant’s protected website information. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business by scraping data from Complainant’s websites. Additionally, Respondent’s illegal activity is independent evidence of bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the KIJIJI and GUMTREE marks when it registered the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks KIJIJI and GUMTREE and uses them to offer online commerce and shopping services.
Complainant’s rights in its marks date back to, respectively, at least 2008 and 2009.
The disputed domain names were registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites advertise software products used to illegally access Complainant’s protected website information. The resolving websites refer to Complainant’s marks and legitimate websites.
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:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The disputed domain names each incorporate one of Complainant’s marks in its entirety, merely adding the generic term “dominator” and the “.com” gTLD. Addition of a generic term and a gTLD is insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain names are identical or confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent does not have permission to use Complainant’s KIJIJI or GUMTREE marks and is not commonly known by the disputed domain names: when no response is submitted, WHOIS information can be used to identify a respondent and even if a respondent appears to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). Here, the WHOIS information of record lists “Sumit Ghosh / Facedominator LLC” as the registrant and Respondent has not provided any further additional evidence that it is commonly known by the disputed domain names. Thus the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names to advertise software products used to illegally access Complainant’s protected website information. Specifically, the software advertised on Respondent’s websites can be used to extract personal data from Complainant’s websites for promotional purposes; the software products being advertised violate Complainant’s terms and conditions as well as copyright, contract, and unfair competition laws. Use of a disputed domain name for illegal purposes does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 2.13.1: “Panels have categorically held that the use of a domain name for illegal activity … can never confer rights or legitimate interests on a respondent.” See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems … As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Thus, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent offers software that scrapes data from Complainant’s websites; Respondent profits from this activity. Prior panels have found that use of a confusingly similar domain name to operate a website connected to website scraping activity constitutes bad faith use under the Policy. See, Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Giap Nguyen Van and Giao Tran Ngoc, D2018-2762 (WIPO January 2, 2019) (“the Panel is satisfied that the user data scraping services offered at the disputed domain names, <fbcandy.com> and <fbsendy.com> are clear indicia of use in bad faith”); see also CBS Lyrics, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Yongqiang Zhang, D2016-0807 (WIPO June 8, 2016) (scraping activity in association with disputed domain name constituted bad faith). Thus the Panel finds bad faith pursuant to Policy ¶ 4(b)(iv).
Further, Respondent’s activity disrupts Complainant’s business because it allows Complainant’s competitors to increase traffic to their own sites. Use of a disputed domain name in competition with a complainant evidences bad faith disruption of business under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Thus the Panel finds bad faith pursuant to Policy ¶ 4(b)(iii).
Further, also as already noted, Respondent’s activity is illegal. Use of a disputed domain name in connection with illegal activities suggests bad faith under Policy ¶ 4(a)(iii). See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii) on this ground also.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving websites refer explicitly to Respondent’s business and websites. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kijijidominator.com> and <gumtreedominator.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 17, 2020
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