Chegg Inc. v. ICS Inc
Claim Number: FA1502001605987
Complainant is Chegg Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cehgg.com> and <chuegg.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2015; the Forum received payment on February 20, 2015.
On February 23, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cehgg.com> and <chuegg.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@cehgg.com, postmaster@chuegg.com. Also on March 3, 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 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
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 <cehgg.com> and <chuegg.com> domain names are confusingly similar to Complainant’s CHEGG.COM mark. The <cehgg.com> domain name misspells the CHEGG.COM mark by transposing the letters “e” and “h.” The <chuegg.com> domain name misspells the CHEGG.COM mark by adding the letter “u.”
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 <cehgg.com> and <chuegg.com> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names feature competing hyperlinks on its resolving websites, diverting Internet users who are seeking Complainant’s website to Respondent’s websites. Respondent has engaged in typosquatting, which is further evidence that Respondent lacks rights and legitimate interests in respect of the disputed domain names.
Respondent has engaged in bad faith registration and use of the <cehgg.com> and <chuegg.com> domain names. Respondent has listed the disputed domain names for sale, which constitutes evidence of bad faith. Respondent is a “serial cybersquatter” and has multiple prior UDRP decisions that resulted in a finding of bad faith or transfer. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. 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).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant states that it owns the CHEGG.COM mark through its registration with the USPTO (e.g., Reg. No. 3,970,742, registered May 31, 2011). Complainant states that it 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. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, although Respondent reportedly resides in the Cayman Islands, the Panel finds that Complainant’s USPTO registration is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i).
Complainant asserts that the <cehgg.com> and <chuegg.com> domain names are confusingly similar to Complainant’s CHEGG.COM mark. Complainant states that the <cehgg.com> domain name misspells the CHEGG.COM mark by transposing the letters “e” and “h.” Complainant further states that the <chuegg.com> domain name misspells the CHEGG.COM mark by adding the letter “u.” Past panels have found that if a respondent misspells a registered mark, either by transposing two letters or adding an additional character, the disputed domain name is confusingly similar under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds the <cehgg.com> and <chuegg.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain names, as there is no evidence that Respondent is commonly known by the disputed domain names. The WHOIS record for the disputed domain name lists “ICS Inc” as the registrant of record. Complainant argues it has never authorized Respondent to use the CHEGG.COM trademark. 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent lacks rights or legitimate interests in the <cehgg.com> and <chuegg.com> domain names, as evidenced by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names feature competing hyperlinks on the resolving websites, diverting Internet users who are seeking Complainant’s website to Respondent’s websites. Some of the featured hyperlinks include “Rent College Textbooks” and “Print a Book.” Past panels have found that a respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel concludes that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel agrees that as Respondent presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant claims both disputed domain names are listed for sale. Past panels have agreed that a respondent’s willingness to sell the disputed domain can be considered evidence that Respondent lacks any rights or legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). The Panel finds that Respondent’s willingness to sell the disputed domain names is evidence that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant also argues that Respondent has engaged in typosquatting, which further demonstrates Respondent’s lack of rights or legitimate interests in respect of the disputed domain name. Users might mistakenly reach Respondent’s website by misspelling Complainant’s actual website <chegg.com> if they inadvertently type <cehgg.com> or <chuegg.com>. Taking advantage of Internet users’ typographical errors, known as typosquatting, has been found by past panels to be illustrative of a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Respondent’s typosquatting conduct is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent has listed the disputed domain names for sale, which constitutes evidence of bad faith pursuant to Policy ¶ 4(b)(i). Complainant claims the <cehgg.com> domain name is listed for $5,079 and the <chuegg.com> domain name is listed for $999. Past panels have found that respondents demonstrate bad faith when they offer to sell a disputed domain name for compensation beyond out-of-pocket costs. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Complainant alleges that Respondent is a “serial cybersquatter,” and has multiple prior UDRP decisions that resulted in a finding of bad faith or transfer. Complainant has provided evidence of Respondent’s prior UDRP cases held against it in Complainant’s exhibits. See Nationstar Mortg. LLC v. ICS Inc., FA 1450756 (Nat. Arb. Forum Aug. 15, 2012); Baylor Univ. v. ICS Inc., FA 1458525 (Nat. Arb. Forum Oct. 2, 2012). Past panels have agreed that multiple prior UDRP decisions are sufficient evidence to establish a respondent’s bad faith registration and use. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Thus, the Panel finds that Respondent’s pattern of bad faith registrations is evidence of bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet users seeking Complainant’s website. Complainant asserts that Respondent uses pay-per-click hyperlinks on the resolving websites, which redirect users to various third-party websites. Internet users may reach websites such as <bookrenter.com> and <valorebooks.com>, Complainant’s competitors, by clicking on these links. Past 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent intentionally attracts Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain names, and registered the disputed domain names to attract and mislead consumers for its own profit. Past panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use of hyperlinks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Complainant contends that Respondent has engaged in typosquatting, which is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). Internet users would merely need to mistype the CHEGG.COM mark, either by adding an additional character or transposing two characters, to be mistakenly directed to Respondent’s <cehgg.com> and <chuegg.com> websites, rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel therefore finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cehgg.com> and<chuegg.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 3, 2015
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