Waymo LLC v. Ronald Tsitsey
Claim Number: FA2010001918515
Complainant is Waymo LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, United States. Respondent is Ronald Tsitsey (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue is <waymo.website> (“Domain Name”), registered with Registrar of Domain Names REG.RU LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2020; the Forum received payment on October 27, 2020. The Complaint was received in English.
On October 28, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <waymo.website> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 November 3, 2020, the Forum served the English Language Complaint and all Annexes, including an English and Russian language Written Notice of the Complaint, setting a deadline of November 23, 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@waymo.website. Also on November 3, 2020, the English and Russian 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 formal response from Respondent (the content of the informal e-mail responses will be summarized later in the decision), the Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Name be transferred from Respondent to Complainant.
The language of the Registration Agreement in this case is Russian. The Complaint has been provided in English and Complainant has requested that the language of the proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Russian language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Respondent has sent three e-mails to the Forum, each in the English language. The Respondent has an English-language LinkedIn profile, has registered numerous English-language domain names and redirects the Domain Name to Complainant’s (English-language) website.
After considering the circumstances of the present case, including the material referred to above indicating that the Respondent is clearly able to communicate in English, and noting that the Respondent has not made any request that the proceeding continue in Russian, the Panel decides that the proceeding should be continued in the English language.
A. Complainant
Complainant, Waymo LLC, develops autonomous vehicle technology and related logistics offerings. Complainant has rights in the WAYMO mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,908,535, registered on November 12, 2019). Respondent’s <waymo.website> domain name is confusingly similar to Complainant’s mark because it fully incorporates Complainant’s WAYMO mark and simply adds the “.website” generic top level domain (“gTLD”) to form the Domain Name.
Respondent does not have rights or legitimate interests in the <waymo.website> domain name. Respondent is not commonly known by the Domain Name and Complainant has not licensed or authorized Respondent to use the WAYMO mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent redirects the Domain Name to Complainant’s own website at blog.waymo.com (“Complainant’s Website”).
Respondent registered and uses the <waymo.website> domain name in bad faith. Respondent engages in a pattern of bad faith registration. Additionally, Respondent’s bad faith is evidenced by redirecting the Domain Name to Complainant’s own website which also indicates actual knowledge of Complainant’s rights in the WAYMO mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Respondent sent three e-mails to the Forum, the contents of which are set out below:
November 3, 2020: WHAT DO YOU WANT FROM ME? ALL OF THIS DOCS FOR WHAT? ARE YOU TRY TO SCARE ME? I DONT CARE, ALL DOMAINS REGISTERED WITHOUT ANY IDEAS FOR PROFIT!
November 6, 2020: I'm really sorry, but i dont want to have some issues. I bought domains not to make any profit, please send me details, what i need to do.
November 6, 2020: Can you send me ways how to solve this problem?
Complainant holds trademark rights for the WAYMO mark. The Domain Name is identical to Complainant’s WAYMO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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:
(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”).
Complainant has rights in the WAYMO mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g Reg. No. 5,908,535, registered on November 12, 2019). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <waymo.website> Domain Name is identical to the WAYMO mark as it fully incorporates the WAYMO mark adding only the “.website” gTLD. Addition of a gTLD to a mark is irrelevant in examining confusing similarity under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WAYMO mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Ronald Tsitsey” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is used to redirect to the Complainant’s Website. The use of a confusingly similar domain name to resolve to a complainant’s website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use as it may provide a false impression that the Respondent is affiliated with or authorized by Complainant. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii)...”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, August 17, 2020, Respondent had actual knowledge of Complainant’s WAYMO mark since the Domain Name redirects to the Complainant’s Website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the coined WAYMO mark and use it to redirect visitors to the Complainant’s Website other than to create a false impression that the Respondent is affiliated with or authorized by Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s WAYMO Mark for commercial gain by using the confusingly similar Domain Name to resolve Complainant’s Website thereby creating a false impression of affiliation. Indeed, given the nature of the Domain Name, it would be difficult to conceive of a way the Domain Name could be used that would not create a false impression of association with Complainant. Under Policy ¶ 4(a)(iii), redirecting a disputed domain name to a complainant’s own website may still constitute bad faith. See Ameriquest Mortgage Co. v. Banks, D2003-0293 (WIPO June 6, 2003) (concluding that respondent acted in bad faith by using the disputed domain name to redirect Internet traffic to Complainant’s own website because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet” . . . [and] creates a risk that Respondent could collect and use data about Internet users intending to access Complainant’s website”); see also Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied 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 <waymo.website> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 27, 2020
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