Duck Duck Go, Inc. v. Jan Everno / The Management Group II
Claim Number: FA2007001902824
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, United States. Respondent is Jan Everno / The Management Group II (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dockdockgo.com>, registered with SNAPNAMES 45, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2020; the Forum received payment on July 2, 2020.
On July 6, 2020, SNAPNAMES 45, LLC confirmed by e-mail to the Forum that the <dockdockgo.com> domain name is registered with SNAPNAMES 45, LLC and that Respondent is the current registrant of the name. SNAPNAMES 45, LLC has verified that Respondent is bound by the SNAPNAMES 45, 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 July 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@dockdockgo.com. Also on July 7, 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 July 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is an Internet privacy company that offers search engine services that do not track users. Complainant has rights in the DUCKDUCKGO trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,527,274, registered on November 4, 2008).
Respondent’s <dockdockgo.com> domain name is confusingly similar to Complainant’s trademark because it simply replaces the letter “u” with “o” in the word “duck” and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <dockdockgo.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized or licensed Respondent to use the DUCKDUCKGO trademark in any way. Furthermore, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass itself off as Complainant and induce Internet users to download malware.
Respondent registered and uses the <dockdockgo.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration as numerous previous UDRP cases have ruled against Respondent. Additionally, Respondent uses the disputed domain to install malware on Internet users computers. Furthermore, Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the DUCKDUCKGO trademark based on Complainant’s registration of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,527,274 DUCKDUCKGO (word), registered November 4, 2008 for services in class 42;
No. 5,748,545 DUCKDUCKGO (word), registered May 14, 2019 for goods and services in classes 9 and 42.
The disputed domain name was registered on October 3, 2016.
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”).
The Complainant asserts rights in the DUCKDUCKGO trademark based on registration with the USPTO (e.g., Reg. No. 3,527,274, registered on November 4, 2008). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant provides evidence of its registration/s of the DUCKDUCKGO trademark with the USPTO, therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant aruges that Respondent’s <dockdockgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO trademark because it imitates Complainant’s trademark by replacing the letter “u” with “o” in the word “duck” and adding a gTLD. Misspelling a trademark and appending a gTLD is insufficient to distinguish a domain name from a trademark per Policy ¶ 4(a)(i). See Hotwire, Inc. v. Wilder, FA 741901 (Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM trademark, as the disputed domain name was pronounced similarly to the complainant’s trademark and was also a misspelled variation of it). In this case, the Complainant also notes that the disputed domain name retains a similar pronunciation to the mark. The Panel agrees with that conclusion and finds that the disputed domain name is confusingly similar to the DUCKDUCKGO trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <dockdockgo.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the DUCKDUCKGO trademark in any way. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “Jan Everno / The Management Group II” as the registrant and no information suggests that Complainant has authorized Respondent to use the DUCKDUCKGO trademark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use; rather, Respondent uses the dockdockgo.com> to prompt Internet users to install malware. A respondent’s use of a confusingly similar domain name to direct Internet users to install malicious software does indeed not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant has provided screenshots showing the resolving webpage of the disputed domain which prompts the user to install an unknown “security extension.” Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant contends that Respondent registered and uses the <dockdockgo.com> domain name in bad faith based on Respondent’s negative history of UDRP cases. A history of rulings against a respondent may evidence bad faith registration and use under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). In the present case, the Panel notes that the Complainant has not provided any evidence of such rulings. The Panel can therefore not take that statement into consideration.
Additionally, Complainant argues that Respondent’s registration and use of the disputed domain name is in bad faith because Respondent uses the domain to redirect Internet users to a website that induces them to install malicious software. Under Policy ¶ 4(a)(iii), the use of a disputed domain name to install malware on Internet users’ devices indicates bad faith registration and use. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously noted, the Complainant has provided screenshots showing the resolving webpages of the disputed domain which prompt the Internet user to download an unknown “security extension.” Thus, the Panel finds bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent’s bad faith registration and use is evidenced by typosquatting. Typosquatting is independent evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Complainant argues that Respondent has engaged in typosquatting by replacing the letter “u” in the term “duck” with the letter “o.” The Panels agree with Complainant’s conclusion, especially as the typosquatted version is indeed visually very similar to the Complainant’s trademark. The Panel finds that Respondent engaged in typosquatting and therefore registered and uses the disputed domain in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent had constructive and/or actual knowledge of Complainant’s rights in the DUCKDUCKGO trademark based on Complainant’s trademark registration. Panels have determined that constructive knowledge is insufficient evidence of bad faith, but actual knowledge may show bad faith registration an use under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Considering the actual use of the disputed domain name for the same type of services that the Complainant offers, the Panel finds that Respondent had actual knowledge of Complainant’s DUCKDUCKGO trademark. The Panel finds that Respondent registered and uses the disputed domain name in bad faith per 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 <dockdockgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 6, 2020
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