Chegg Inc. v. CONAN LAU / DOMAIN NAME CORPORATION
Claim Number: FA1503001608678
Complainant is Chegg Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is CONAN LAU / DOMAIN NAME CORPORATION (“Respondent”), Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chegb.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2015; the Forum received payment on March 9, 2015.
On March 9, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <chegb.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2015 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@chegb.com. Also on March 10, 2015, 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 April 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Complainant owns the CHEGG.COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.3,970,742, registered May 31, 2011). Complainant uses the CHEGG.COM mark in connection with its online book rental service, homework assistance, scholarships, course review, and internship posting for students in high school and college. The <chegb.com> domain name is confusingly similar to Complainant’s CHEGG.COM mark. The <chegb.com> domain name misspells the CHEGG.COM mark by replacing the letter “g” with “b.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Respondent lacks rights or legitimate interests in the <chegb.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name features competing hyperlinks on its resolving website, which diverts Internet users who are seeking Complainant’s website to Respondent’s website. Additionally, Respondent has engaged in typosquatting, which is further evidence that Respondent lacks rights and legitimate interests in respect of the disputed domain name.
Respondent has engaged in bad faith registration and use of the <chegb.com> domain name. Respondent has listed the disputed domain name for sale, which constitutes evidence of bad faith. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of its online book rental service, homework assistance, scholarships, course review, and internship posting for students in high school and college.
2. Complainant owns the CHEGG.COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.3,970,742, registered May 31, 2011).
3. The <chegb.com> domain name was registered on January 17, 2012. It resolves to a website featuring competing hyperlinks and which thus diverts Internet users who are seeking Complainant’s website to Respondent’s website.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHEGG.COM mark. Complainant argues that the <chegb.com> domain name is confusingly similar to Complainant’s CHEGG.COM mark as it misspells the CHEGG.COM mark by replacing the letter “g” with “b.” Prior panels have found that if a respondent misspells a registered mark, simply by changing a single character, the disputed domain name is confusingly similar under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore, the Panel finds the <chegb.com> domain name is confusingly similar to the CHEGG.COM mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEGG.COM mark and to use it in its domain name, merely replacing the second letter “g” of the trademark with the letter “b”, which does not detract from the confusing similarity that is present;
(b) Respondent registered the disputed domain name on February 21, 2014. The website to which it resolves features competing hyperlinks and thus diverts Internet users who are seeking Complainant’s website to Respondent’s website;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Conan Lau / Domain Name Corporation” as the registrant of record. See Compl., at Attached Ex. I. Further, Complainant contends that Respondent has not been given permission to use Complainant’s mark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e) Complainant submits further that Respondent lacks rights or legitimate interests in the <chegb.com> domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant demonstrates in Exhibit H to the Complaint that Respondent’s disputed domain name features competing hyperlinks on its resolving website which diverts Internet users who are seeking Complainant’s website to Respondent’s website. The Panel notes that some of the featured hyperlinks include “Rent Textbooks & Save 90%” and “Shop Digital Textbooks.” Prior panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel concludes that Respondent’s use of competing hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further agrees that as Respondent here presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii);
(f) Complainant also argues that Respondent has engaged in typosquatting, which is further evidence that Respondent lacks rights and legitimate interests in respect of the disputed domain name. Internet users might mistakenly reach Respondent’s website by misspelling Complainant’s actual website which is at www.chegg.com if they inadvertently type <chegb.com>, which varies from the trademark by only one character. Taking advantage of Internet users’ typographical errors, known as typosquatting, has been found by prior panels to be illustrative of respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel finds that Respondent’s typosquatting conduct is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant asserts that Respondent uses pay-per-click hyperlinks on the resolving website, which redirect users to various third-party websites. Internet users may reach websites such as <bookrenter.com>, <ecampus.com>, and <brytewave.com>, Complainant’s competitors, by clicking on these links. See Compl., at Attached Ex. H. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives referral fees through the use of its disputed domain name, and registered the disputed domain name to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with “click-through” fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent has engaged in typosquatting, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). Users would merely need to mistype the CHEGG.COM mark by mistyping a single character to be mistakenly directed to Respondent’s website at www.chegb.com rather than Complainant’s website. Past panels have found that respondents who take advantage of common typing errors engage in bad faith use and registration under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, the website to which the disputed domain name resolves carries numerous references to “Chegg” which, taken together, give the false impression to the internet user that it is an official website that is part of or affiliated with Complainant. This, together with the whole of the evidence, brings the case squarely within the provisions of Policy ¶ 4(b)(iv) and is further evidence of bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed
<chegb.com> domain name using the CHEGG.COM mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chegb.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 7, 2015
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