Waymo LLC v. Brent Ritz
Claim Number: FA1901001824478
Complainant is Waymo LLC (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Washington, D.C., USA. Respondent is Brent Ritz (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <waymofreight.com>, <waymocapital.com>, <waymoeats.com>, and <waymorush.com>, registered with GoDaddy.com, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 10, 2019; the Forum received payment on January 10, 2019.
On January 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <waymofreight.com>, <waymocapital.com>, <waymoeats.com>, and <waymorush.com> domain names (the Domain Names) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 7, 2019 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@waymofreight.com, postmaster@waymocapital.com, postmaster@waymoeats.com, and postmaster@waymorush.com. Also on January 15, 2019, 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 March 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Paragraph 3(c) of the Rules 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.” The available evidence here demonstrates that all four of the Domain Names were registered by the same person, having the same address, on the same date, with the same registrar. See, Complaint Exhibit D. On this evidence the Panel finds all four Domain Names are registered to the same person or entity and will proceed as to all of them.
A. Complainant
Complainant is a technology company currently developing autonomous vehicle technology and related vehicle, transportation, and logistics offerings. Complainant has rights in the WAYMO mark based upon its registration of the mark with trademark agencies around the world (e.g., Reg. No. 1,359,180, registered Nov. 28, 2018 in the European Union). Complainant also has common law rights in the mark dating back to 2016. Respondent’s Domain Names are confusingly similar to Complainant’s mark in that they all incorporate the WAYMO mark in its entirety, each merely adding a generic term (“freight,” “capital,” “eats,” or “rush”) and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the Domain Names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Instead, Respondent uses the <waymofreight.com> domain name to pass off as Complainant to divert users to its web site for commercial gain, and the <waymocapital.com>, <waymoeats.com>, and <waymorush.com> Domain Names all resolve to parked pages.
Respondent registered and uses the Domain Names in bad faith. Respondent engages in a pattern of bad faith registration based on Respondent’s registration of four domain names in the instant proceeding and two additional domain names infringing on another famous mark. Further, Respondent uses the <waymofreight.com> Domain Name to attempt to pass off as Complainant for commercial gain, and inactively holds the <waymocapital.com>, <waymoeats.com>, and <waymorush.com> Domain Names. Moreover, Respondent had actual knowledge of Complainant’s rights in the WAYMO mark prior to registering the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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 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 (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 Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant claims rights in the WAYMO mark based upon its registration of the mark with trademark agencies around the world. Registration with governmental trademark authorities is sufficient to establish a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides a list of its global registrations for the WAYMO mark. However, this list is generated by Complainant and is not accompanied by registration certificates or other documentary evidence from any of the governmental trademark authorities listed. See, Complaint Exhibit F. Complainant’s unsupported, self-serving claim of foreign registrations for its WAYMO mark is not evidence of any of those registrations and cannot be taken as proof of its rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant also submitted evidence of its application, filed July 19, 2017, to register its mark with the USPTO. See, Complaint Exhibit 5. While the application date for a registered trademark has been held to establish the priority date for that registration, the mere filing of an application for USPTO registration does not guarantee that a registration will ultimately issue and does not constitute competent evidence of rights in a mark. Complainant’s application for a USPTO registration of its WAYMO mark is not sufficient in and of itself to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i).
It is also well-settled, however, that a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit I contains copies of print media articles describing the efforts of Google to develop autonomous vehicles from as early as 2009, and stating that Complainant succeeded to the interests of Google in this project and became a distinct entity named Waymo in 2016. Complaint Exhibit J is an article discussing Complainant’s national campaign to promote and educate the public regarding autonomous vehicles and related services. Complainant’s name is not prominent in Complaint Exhibit J but there are photos of one of its autonomous vehicles displaying Complainant’s mark and logo on the sides. This evidence demonstrates that Complainant was using and advertising its WAYMO mark to identify itself in 2016, and that public awareness of the mark has become fairly widespread, particularly in the autonomous vehicle industry, since that time. Finally, while Complaint’s trademark application with the USPTO is not sufficient in and of itself to confer rights in the mark, it is certainly additional evidence that Complainant is currently using the mark in its business operations and supports Complainant’s contentions of common law rights in the mark. On this evidence, the Panel finds that Complainant has common law rights in the WAYMO mark sufficient to meet the requirements of Policy ¶ 4(a)(i).
Respondent’s Domain Names are confusingly similar to Complainant’s WAYMO mark. They wholly incorporate the mark, each merely adding a generic term (“freight,” “capital,” “eats,” or “rush”) and the gTLD “.com.” These changes are not sufficient to distinguish the Domain name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the WAYMO mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) he is not commonly known by the Domain Names, (ii) Complainant has not authorized or licensed him to use its WAYMO mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use because he is using one of them to impersonate Complainant and divert Internet traffic to his own commercial web site, and the other three Domain Names resolve to parked pages. These allegations are supported by competent evidence.
The WHOIS report submitted as Complaint Exhibit D lists the registrant of all four Domain Names as “Brent Ritz.” This name bears no resemblance to any of the Domain Names. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (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), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit G is a screenshot of the web site resolving from the Domain Name <waymofreight.com>. It prominently displays the title “Waymo Freight” and under the title “About Waymo Freight” states the following: “The Next Generation of Self-Driving Autonomous Vehicles, Self Driving Cars and Cargo Solutions Provider Worldwide.” There is a place for the visitor to Contact Waymo by email. The whole look and feel of this site suggests that the sponsor is Complainant or at a minimum an affiliate of Complainant. Respondent is clearly using the <waymofreight.com> Domain Name to pass off as Complainant to divert users for commercial gain. This has often been held by UDRP panels not to qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate use for the purposes of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complaint Exhibit H contains screenshots of the web pages resolving from the <waymocapital.com>, <waymoeats.com>, and <waymorush.com> Domain Names. All three are sponsored by the registrar and contain a statement that the relevant Domain Name is parked for free. It is well-settled that using a domain name for a parked page does not qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use for the purposes of Policy ¶¶ 4(c)(i) or (iii). Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Names discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent registered and is using the <waymofreight.com> Domain Name to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv). Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Second, as demonstrated above, Respondent fails to make any active use of the <waymoeats.com>, <waymocapital.com>, and <waymorush.com> Domain Names. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have often held that inactive holding of a domain name is evidence of bad faith generally under Policy ¶ 4(a)(iii). CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”).
Finally, it is evident from the well-known efforts of Complainant’s parent organization to develop autonomous vehicles prior to 2016 and Complainant’s becoming a separate entity named Waymo in 2016, from the fact that that mark was incorporated verbatim into the Domain Names, and from the obvious passing off as Complainant (or an affiliate) on the web site resolving from the <waymofreight.com> Domain Name that Respondent had actual knowledge of Complainant’s mark in January 2017, when it registered the Domain Names. See, Complaint Exhibit D for registration date. In light of the open-ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <waymofreight.com>, <waymocapital.com>, <waymoeats.com>, and <waymorush.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 11, 2019
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