Duck Duck Go, Inc. v. ICS INC
Claim Number: FA2007001902926
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ducduckgo.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2020; the Forum received payment on July 6, 2020.
On July 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ducduckgo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@ducduckgo.com. Also on July 10, 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 August 3, 2020, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Duck Duck Go Inc., is an Internet privacy company that empowers users to seamlessly take control of their personal information online by providing search engine services that do not track users. Complainant has rights in the DUCKDUCKGO mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,527,274, registered on Nov. 4, 2008). Respondent’s <ducduckgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO mark, with the mere omission of the letter “k” and adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <ducduckgo.com> domain name. Respondent is not licensed or authorized to use Complainant’s DUCKDUCKGO mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to host a website that attempts to install malicious software. Additionally, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <ducduckgo.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith domain name registration. Respondent uses the disputed domain to host a website that attempts to install malicious software. Additionally, Respondent is attempting to attract Internet users to its webpage which also resolves to pay-per-click advertisements. By registering a domain name that incorporates a minor misspelling of Complainant’s DUCKDUCKGO mark, Respondent is engaged in typosquatting. Lastly, Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in the DUCKDUCKGO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <ducduckgo.com> domain name.
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 asserts rights in the DUCKDUCKGO mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 3,527,274, registered Nov. 4, 2008).. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy”). Complainant provides evidence of registration of the DUCKDUCKGO mark with the USPTO. The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ducduck.go.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s DUCKDUCKGO mark, with the mere omission of the letter “k” and the addition of the “.com” gTLD. The omission of a single letter and the addition of a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD”). The Panel finds that the disputed domain name is confusingly similar to the DUCKDUCKGO mark under Policy ¶ 4(a)(i).
Complainant has proved 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <ducduckgo.com> domain name because Respondent is not licensed or authorized to use Complainant’s DUCKDUCKGO mark and is not commonly known by the disputed domain name. Where a response is lacking, 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 Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“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”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark). The WHOIS information of record notes “ICS INC” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the DUCKDUCKGO mark in any way. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <ducduckgo.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to attempt to install malicious software. Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per 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 a screenshot of Respondent’s webpage which requires users to install a secured search extension. The Panel agrees that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Complainant has provided a screenshot of Respondent’s webpage which features links to third party sites titled “Duckduckgo,” “Duckduckgo Browser,” “Duckduck Go,” “Online Chat Software,” and “Duck Go. The Panel finds that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <ducduckgo.com> domain name in bad faith based upon Respondent’s pattern of bad faith domain name registration. The registration of multiple domain names unrelated to a respondent’s business which infringe on famous marks and websites is evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides past UDRP proceedings where panels ruled against Respondent. See Anytime Fitness, LLC v. Internet Services / ICS Inc., FA 1802079 (Forum Sept. 25, 2018); see also Uline, Inc. v. ICS INC., FA 1747872 (Forum Oct. 8, 2017). This is evidence that Respondent has engaged in a pattern of bad faith domain name registration per Policy ¶ 4(b)(ii).
Complainant argues Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Complainant provided screenshots of Respondent’s website which features links to various third party sites. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant alleges Respondent uses the disputed domain name to install malware on internet users’ devices. Complainant provided a screenshot of Respondent’s attempt to download malicious software on users’ devices. See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). This is evidence that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a common typing error made by internet users is evidence of bad faith per Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)); see also Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii)”). Complainant asserts that Respondent merely omits the letter “k” within the DUCKDUCKGO mark. The Panel finds that Respondent’s omission of a single letter in Complainant’s mark constitutes typosquatting, which is further evidence of bad faith by Respondent per Policy ¶ 4(a)(iii).
Complainant asserts that its trademark registrations for the DUCKDUCKGO mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel may find that, due to the fame of a complainant's mark, a respondent had actual knowledge of the mark and the complainant's rights. 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"). Complainant claims that due to the fame of the DUCKDUCKGO mark, Complainant’s use of the mark, and Respondent’s use of the disputed domain name which features Complainant's mark in its entirety with a minor typographical error render it wholly implausible that Respondent created the domain name independently. The Panel finds that Respondent had actual knowledge of Complainants rights in the DUCKDUCKGO mark, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved 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 <ducduckgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 10, 2020
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