Chegg, Inc. v. james muigai
Claim Number: FA2003001888223
Complainant is Chegg, Inc. (“Complainant”), represented by Jami A. Gekas of Foley & Lardner LLP, Illinois, United States. Respondent is james muigai (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheg-g.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2020; the Forum received payment on March 16, 2020.
On March 14, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <cheg-g.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@cheg-g.com. Also on March 18, 2020, 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 9, 2020 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 be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in its portfolio of trademark registrations described below and submits that since at least as early as 2003, Complainant, or its predecessor in interest, have exclusively used the coined and inherently distinctive name and marks CHEGG and CHEGG.COM to brand Complainant’s textbook rental and other related educational and entertainment services and products. Complainant states that since 2014, it has spent more than $200 million in sales and marketing expenditures to advertise and promote its goods and services under the CHEGG mark.
Complainant submits that the disputed domain name is confusingly similar and virtually identical to Complainant’s CHEGG mark in appearance, sight, sound, and connotation arguing in particular that the disputed domain name incorporates the CHEGG mark in its entirety and merely inserts a hyphen and appends the generic <.com> top level domain at the end of the mark. Complainant submits that these additions are not sufficient to negate the confusing similarities between the disputed domain name and Complainant’s CHEGG mark arguing that past panels established under the Policy have consistently found that insertion of a hyphen into a complainant’s registered trademark is insignificant and does not obviate the risk of confusion. See, e.g., Deckers Outdoor Corporation v. Registration Private, Domains By Proxy, LLC / Eric Mafolo, WIPO Case No. D2019-2042 (finding the disputed domain name <www.decker-s.com> confusingly similar to the complainant’s DECKERS mark despite the insertion of a hyphen).
Complainant adds that “it is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Isleworth Land Co. v. Lost In Space, SA, FA0117330 (Forum Sep. 23, 2002). Thus, Respondent’s addition of the top-level domain name <.com> does nothing in this case to negate confusing similarity.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name, as the disclosed WHOIS registration record data identifies Respondent as the registrant.
Complainant adds that to its knowledge, Respondent has never been, and is not, commonly and legitimately known as CHEG-G.COM, CHEG-G, or any derivation of same and has not acquired trademark or service mark rights in the disputed domain name. Complainant also asserts that Respondent is not a licensee or affiliate of Complainant or otherwise authorized to use its CHEGG marks.
Complainant refers to a screenshot of the website to which the disputed domain name resolves and argues that Respondent can show no past or present legitimate use of the disputed domain name. Complainant submits that upon information and belief, said website was designed to imply an association with Complainant and Complainant’s services and that Respondent’s use of the CHEGG mark in the disputed domain name in this manner was a blatant attempt to divert consumers searching for Complainant’s services and to confuse consumers into believing that they were dealing with Complainant. Complainant argues that Respondent’s purpose was either to secure commercial gain through the sale of its purported educational services, or alternatively it was for the purpose of collecting personal information such as e-mail addresses of confused consumers in order to facilitate phishing or other illicit cyber-activities.
Complainant submits that to the extent Respondent’s website existed for the purpose of collecting personal information such as e-mail addresses to facilitate phishing or other illicit cyber-activities, such use cannot and does not amount to a bona fide use or a legitimate non-commercial or fair use, and any arguments to the contrary are without merit. See Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO case No. D2010-2204 (“Complainant provided evidence that Respondent has a link at the website to an application form for allegedly opening an account with Respondent, which is used to harvest the confidential personal information of unsuspecting Internet users. This fraud, called phishing, cannot constitute a bona fide offering of goods or services.”).
Complainant further argues that to the extent Respondent’s website actually provides the educational services it purports to offer, such use cannot and does not amount to a bona fide use or a legitimate non-commercial or fair use, and any arguments to the contrary are without merit. See Homer TLC, Inc. v. Eve Johnson a/k/a New Tesch, FA0809001223077 (Forum Oct. 28, 2008) (finding use of disputed domain names to resolve to a website purporting to offer goods and services in direct competition with complainant to not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under to Policy ¶ 4(c)(iii)).
Complainant submits that it is required to make a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name, and then the burden shifts to Respondent to demonstrate that he does, in fact, have rights or legitimate interests in the domain name at issue. Rockport Co. v. Marcelo, FA1612001709459 (Forum Feb. 2, 2017).
Complainant also alleges that Respondent registered and is using the disputed domain name in bad faith and again refers to the website to which the disputed domain name resolved on March 20, 2020 which purports to offer “Homework Answers,” “Tutors,” and “quality assignment help online and top notch assignment writing services to students” from “[o]ur faculty of experienced professional academic writers includ[ing] ex-professors from leading universities.”
Complainant submits that these services are closely related to, or compete with, Complainant’s services, thus demonstrating that the disputed domain name was registered in bad faith. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that the evidence shows that Respondent registered the domain name at issue solely as a device to solicit Complainant’s customers or divert prospective customers, either to compete directly with Complainant or to facilitate phishing attacks against Complainant’s customers or prospective customers. Complainant submits that Respondent’s selection, registration and use of the domain name at issue, is per se bad faith registration and use according to Policy ¶ 4(b)(iii).
Complainant further submits that the evidence shows that Respondent is intentionally trying to divert Internet users to alternative sites which is evidence of bad faith, especially when done for the purpose of facilitating phishing. See The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, Case No. D2012-2093 (WIPO Dec. 19, 2012) (“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant hosts a learning and education platform, offering tutoring and related educational and entertainment services to high school and university students and is the owner of a portfolio of registered trademarks that includes:
United States Trademark CHEGG, registration number 5,058,869 registered on October 11, 2016 on the Principal Register for services in international classes 38, 41 and 42;
United States Trademark CHEGG, registration number 4,021,925, registered on September 6, 2011 on the Principal Register for goods and services in international classes 9, 35 and 41.
Complainant’s registered trademark portfolio includes the following trademarks that incorporate the mark CHEGG: CHEGG STUDY (U.S. Reg. 4,777,915), CHEGG.COM (U.S. Reg. No. 3,970,742), CHEGG (U.S. Reg. No. 4,463,008), CHEGG (U.S. Reg. No. 4,225,485), CHEGG (U.S. Reg. No. 4,140,413), CHEGG (U.S. Reg. No. 3,191,844), CHEGG FOR GOOD and Design (U.S. Reg. No. 4,467,934), CHEGG IT OUT (U.S. Reg. No. 4,485,490), and CHEGG.COM #1 IN TEXTBOOK RENTALS and Design (U.S. Reg. No. 4,739,263).
Complainant markets its products and services via its website which can be accessed from the domain name <chegg.com>. which was registered on February 23, 2000.
The disputed domain name was registered on November 5, 2018 and resolves to a website at <cheg-g.com> which purports to offer assignment support and assignment writing services to students under the name CHEG-G.
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s verification enquiry to ascertain the registration details of the disputed domain name for the purposes of this proceeding. Respondent availed of a privacy service to conceal his identity which was revealed by the Registrar in said response to the Forum’s verification enquiry.
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 produced convincing uncontested evidence that it has rights in the CHEGG service mark acquired through its abovementioned portfolio of trademark registrations and extensive use of the mark in commerce in relation to the provision of education-connected services.
The disputed domain name incorporates the CHEGG mark in its entirety and merely inserts a hyphen and appends the generic <.com> top level domain at the end of the mark.
This Panel accepts Complainant’s uncontested submission that the disputed domain name is confusingly similar and virtually identical to Complainant’s CHEGG mark in appearance, sight, sound, and connotation. The insertion of the hyphen between the two letters “g” is likely to pass unnoticed by many Internet users. Additionally, for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name submitting that Respondent is not commonly known by the disputed domain name because the registration record data identifies Respondent as the registrant; that to Complainant’s knowledge Respondent has never been and is not commonly and legitimately known as CHEG-G.COM, CHEG-G, or any derivation of the same; that Respondent has not acquired trademark or service mark rights in the disputed domain name; that Respondent is not a licensee or affiliate of Complainant or otherwise authorized to use its CHEGG marks; that the website to which the disputed domain name resolves was designed to imply an association with Complainant and Complainant’s services; that Respondent’s use of the CHEGG mark in the disputed domain name and on the website to which the disputed domain name resolves amounts to a blatant attempt to divert consumers searching for Complainant’s services and to confuse consumers into believing that they were dealing with Complainant; that Respondent’s purpose was either to secure commercial gain through the sale of its purported competing educational services, or alternatively for the purpose of collecting personal information such as e-mail addresses of confused consumers in order to facilitate phishing or other illicit cyber-activities which cannot be either a bona fide use or a legitimate non-commercial or fair use.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find 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 of the test in Policy ¶ 4(a)(ii).
The disputed domain name is almost identical to Complainant’s CHEGG mark, which is a distinctive and coined word. It is improbable that the disputed domain name, was registered for any purpose other than to take predatory advantage of Complainant’s reputation and goodwill in the CHEGG mark.
Furthermore, the use of the disputed domain name to resolve to a website that uses a name and mark <CHEG-G> which is almost identical to Complainant’s mark purporting to offer services that compete with Complainant is evidence of registration of the disputed domain name in bad faith to target Complainant, its name, mark and reputation.
This Panel finds that because of the intentional similarity between the disputed domain name and Respondent’s mark, Respondent is endeavoring to confuse Internet users who may either not notice or ignore the hyphen in the disputed domain name and lead them to believe that they are visiting a website owned or associated with Complainant.
This Panel finds therefore that on the balance of probabilities Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheg-g.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________
James Bridgeman SC
Panelist
Dated: April 10 2020
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