Maplebear Inc. DBA Instacart v. Zhichao Yang
Claim Number: FA1911001872103
Complainant is Maplebear Inc. DBA Instacart (“Complainant”), represented by Candice E. Kim of Greenberg Traurig LLP, California. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instaacrt.com>, registered with Above.Com Pty Ltd..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2019; the Forum received payment on November 20, 2019.
On November 24, 2019, Above.Com Pty Ltd. confirmed by e-mail to the Forum that the <instaacrt.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@instaacrt.com. Also on November 27, 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 December 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <instaacrt.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the INSTACART trademark acquired through its portfolio of registered trademarks and the goodwill in the mark acquired through use of the mark in its online and mobile applications shopping business.
Complainant submits that it offers the largest online grocery catalog in the world and its customers shop for groceries from more than 300 national, regional, and local retail partners of the Company through its INSTACART mobile app or from the website to which its <instacart.com> domain name resolves. Complainant claims to serve more than 20,000 different grocery stores across North America and its website to which the <instacart.com> domain name resolves regularly receives over ten million views per month.
Complainant argues that the disputed domain name <instaacrt.com> is confusingly similar to the INSTACART mark because it is nearly identical to the INSTACART mark except for the fact that it transposes the letter “c” and the letter “a.” Notably, there is no addition or omission of any letters and the difference is virtually imperceptible as to sight, sound, or meaning. SeeTwitch Interactive, Inc. v. xie huijie, FA 1599255 (Forum Feb. 12, 2015) (finding that respondent’s <twtich.tv> domain was confusingly similar to complainant’s TWITCHTV mark because “[s]imply transposing two letters in a mark is not a significant enough change to avoid a classification of confusingly similar, and that the addition of punctuation is an irrelevant change under Policy ¶ 4(a)(i).”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent selected the disputed domain name to profit from the goodwill associated with Instacart’s INSTACART mark. Registrant registered the disputed domain name without Complainant’s consent or authority on November 11, 2019—years after Complainant launched its service in 2012. Complainant alleges that Respondent is engaging in typosquatting, which is additional evidence that Respondent lacks rights and legitimate interests with respect of the disputed domain name. See Chegg Inc. v. yang qijin FA 10050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
Complainant is deriving pay-per-click revenue from the website to which the disputed domain name resolves. Complainant has adduced evidence in the annexes to the Complaint that links on Respondent’s website lead to websites for Instacart’s direct competitors. Complainant argues that such use does not constitute legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant submits that the disputed domain name is so obviously connected with Instacart and its services that its very use by someone with no connection to Instacart suggests opportunistic bad faith. See The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc., D2006-0800 (WIPO Aug. 18, 2006) (finding that <elizabethtaylorperfume.com> domain name so obviously connected with Complainant, who sold perfume under the ELIZABETH TAYLOR trademark, that its use suggested opportunistic bad faith).
Complainant also argues that Respondent is engaging in typosquatting to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Instacart’s mark, noting that an Internet user must merely type the letter “a” before the letter “c” to accidentally arrive at disputed domain name
Complainant further argues that Respondent’s use of Complainant’s INSTACART mark in the disputed domain name to lure Internet users to competing websites constitutes bad faith use and improper registration of the disputed domain name under the Policy.
On November 12, 2019, Instacart’s counsel sent a letter to Respondent at the email address shown in the WHOIS information <instaacrt.com@privacy.above.com>, advising Respondent of Instacart’s rights in the INSTACART mark and demanding that Respondent cease and desist from all use of Instacart’s INSTACART mark and immediately transfer the the disputed domain name to Instacart. Respondent had not replied as of the date that the Amended Complaint was filed.
Complainant submits that Respondent’s failure to respond to Instacart’s cease and desist demand also indicates that Respondent acted in bad faith in the registration and use of the Infringing Domain Name. See America Online, Inc. v. Viper, D2000-1198 (WIPO Nov. 28, 2000); America Online, Inc. v. Antonio R. Diaz, D2000- 1460 (WIPO Jan 19, 2001).
Furthermore Complainant argues that Respondent’s use of a proxy service to register the disputed domain name in order to shield his identity and elude enforcement efforts by the legitimate trademark owner demonstrates Respondent’s bad-faith use and registration of the disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service, D2006-0696 (WIPO Sep. 14, 2006) (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Complainant submits that Respondent is engaged in a pattern of registering the domain names of well-known marks in bad faith. Complainant lists some 28 UDRP cases filed since 2013 in which the Respondent was the named respondent. Complainant submits that this demonstrates that the Respondent is a repeat offender who regularly registers and uses in bad faith domain names that are confusingly similar to the trademarks of others. In each of these a finding of registration and use in bad faith was made against the Respondent. Further, many of the domain names in such cases featured typographical variants of the complainant’s mark(s) together with the use of PPC pages incorporating content relevant to the trademarks concerned. For example, in the case of Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1322, the panel noted that the Respondent had registered some 2,273 domain names which included typographical variants of famous trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of an online and mobile application business for grocery shopping and delivery company founded in 2012 and also owns a large portfolio of registrations for the INSTACART trademark across the world including United States registered trademark INSTACART registration number 4,903,628 INSTACART, registered on February 23, 2019 for goods and services in international classes 9, 35, 39 and 42.
Complainant is also the owner of the Internet domain name <instacart.com> which resolves to its website on which it provides its services under the INSTACART mark.
The disputed domain name was registered on November 11, 2019 with the public WhoIs concealing the registrant’s name and stating that the registrant is “REDACTED FOR PRIVACY”.
The disputed domain name resolves to a website with links to competitors of Complainant.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the identity of the Respondent disclosed by the Registrar in response to the Forum’s request for verification of the registration details in the course of this proceeding.
The uncontested evidence of Complainant is that Respondent has been named as respondent in 28 cases filed under the Policy since 2013.
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 provided uncontested evidence of its ownership of rights in the INSTACART trademark and service mark acquired through its portfolio of registered trademarks including United States registered trademark INSTACART registration number 4,903,628 INSTACART, registered on February 23, 2019 for goods and services in international classes 9, 35, 39 and 42 and the goodwill it has acquired through its use of the mark in commerce in its mobile app and Internet business.
The disputed domain name <instaacrt.com> is confusingly similar to the INSTACART mark because it is nearly identical to the INSTACART mark because it merely transposes the letter “c” and the letter “a.”. As Complainant correctly argues, the difference is virtually imperceptible as to sight, sound, or meaning.
This Panel finds that the disputed domain name is confusingly similar to the INSTACART trademark in which Complainant has rights. Complainant has therefore succeeded in the first element in the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that the disputed domain name is almost identical to Complainant’s INSTACART trademark and the address of Complainant’s very popular website; that Complainant has not given license or permission to Respondent to use its mark; that Complainant is engaged in typosquatting by registering and using the domain name almost identical to Complainant’s mark, name and domain name; that Complainant is using the disputed domain name to publish links to Complainant’s competitors for commercial gain which cannot be considered either a bona fide or non-commercial use.
In such circumstances the burden of production shifts to Respondent to prove his rights or legitimate interests. Respondent has failed to discharge that burden and so this Panel finds that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element in the test in Policy ¶ 4(a)(ii).
Complainant has proven on the balance of probabilities to the satisfaction of this Panel that the disputed domain name was registered in bad faith. It is most implausible that the disputed domain name was chosen and registered for any reason except to take predatory advantage of Complainant’s reputation and for the purposes of typosquatting by confusing Internet users. The disputed domain name is almost identical to Complainant’s mark and the transposition of two letters is indicative of deliberate typosquatting.
The use of the disputed domain name to provide links to competitors of Complainant is further evidence of bad faith registration.
This Panel also finds that the disputed domain name has been used in bad faith. Respondent is using the disputed domain name to resolve to a website that has links to Complainant’s competitors. On the balance of probabilities Respondent is collecting click-through revenue by taking predatory advantage of the reputation of Complainant’s name, mark and website, to confuse and lure internet users to Respondent’s website in bad faith.
With regard to the evidence of Respondent’s alleged pattern of typosquatting, the finding of the panel in Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1322 was in fact somewhat more nuanced than how it was presented by Complainant. Complainant alleges that “the panel noted that the Respondent had registered some 2,273 domain names which included typographical variants of famous trademarks” whereas, in fact the Panel more specifically stated that “pursuant to verifications of the web, the Complainant has found that the Respondent is the owner of 2,273 domain names, some of which include variations of famous trademarks, namely <amercianexspress.com>, <aqatarairways.com> and <barclycards.com>.” Nonetheless the Panel accept that there is more than sufficient evidence to find that on the balance probabilities Respondent is engaging in a pattern of registration of third party trademarks and typosquatting.
This Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element in the test in 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 <instaacrt.com> domain name be TRANSFERRED from Respondent to Complainant.
________________________________
James Bridgeman SC
Dated: December 22, 2019
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