Duck Duck Go, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2107001953715
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ducksuckgo.com>, registered with Media Elite Holdings Limited.
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, 2021; the Forum received payment on July 2, 2021.
On July 13, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <ducksuckgo.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2021 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@ducksuckgo.com. Also on July 14, 2021, 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 6, 2021, 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 a global internet search engine service provider with a focus on protecting user privacy. Complainant has rights in the DUCKDUCKGO trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,527,274, registered November 4, 2008). Respondent’s <ducksuckgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO trademark as it merely changes one letter from a “D” to an “S,” while adding the generic top-level domain (“gTLD”) suffix “.com.”
Respondent lacks rights or legitimate interests in the <ducksuckgo.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DUCKDUCKGO trademark. Additionally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses it to install malware.
Respondent registered and uses the <ducksuckgo.com> domain name in bad faith. Respondent uses the disputed domain name to install malware. Respondent also engaged in typosquatting. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the DUCKDUCKGO trademark prior to registering the disputed domain name based on Complainant’s trademark registrations.
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 <ducksuckgo.com> was registered on June 16, 2014.
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 through Complainant’s registration of the trademark with the USPTO (e.g., Reg. No. 3,527,274, registered November 4, 2008). Registration of a trademark with the USPTO is sufficient to demonstrate rights in the trademark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel find that Complainant has demonstrated rights in the DUCKDUCKGO trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ducksuckgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO trademark as it merely changes one letter from a “D” to an “S,” while adding the generic top-level domain (“gTLD”) suffix “.com.” Changing one letter in a trademark while adding a gTLD fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018), noting that “Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). In this case, although the change from “D” to “S” create a new word – “suck” instead of “duck” – the owerall impression is still clearly similar, and if the change is noted at all, it more indicate a message that the Complainant’s services are unsatisfactory (they “sucks”) rather than creating an independent word / domain name. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
The 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <ducksuckgo.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DUCKDUCKGO trademark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 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.”). The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator/ Fundacion Privacy Services LTD,” and Complainant argues that there is no other evidence to suggest that Respondent was authorized to use the DUCKDUCKGO trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <ducksuckgo.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to install malware. Using a disputed domain name to install malware may indeed not be a bona fide offering of goods or services or a legitimate noncommercial or fair 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).”). Here, Complainant provides a screenshot showing the disputed domain name redirects users to several other third-party domains, including an unknown domain that prompts the user to install an unknown “security extension.” Additionally, another redirect from the disputed domain name claims that it has detected Spyware on the user’s computer, and prompts the user to “contact them immediately.” Therefore, the Panel clearly find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel find that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy - long as Complainant shows bad faith use and registration in some manner. See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (the panel noting that Policy ¶ 4(b) factors “are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances”). The Panel therefore find that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant contends that Respondent registered and uses the <ducksuckgo.com> domain name in bad faith as Respondent uses it to install malware. Using a disputed domain name to install malware clearly demonstrate bad faith per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). As noted above, the Complainant provides screenshots showing the disputed domain name redirects users to several other third-party domains, including an unknown domain that prompts the user to install an unknown “security extension” and a domain that claims it has detected Spyware on the user’s computer. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Next, Complainant contends that Respondent registered and uses the <ducksuckgo.com> domain name in bad faith as Respondent engaged in typosquatting. The purposeful misspelling of a trademark constitutes typosquatting and can demonstrate bad faith per Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Complainant argues Respondent engaged in typosquatting by registering a disputed domain name that changes one letter in Complainant’s mark – a “D” to an “S.” Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the <ducksuckgo.com> domain name in bad faith as Respondent had constructive and actual knowledge of Complainant’s rights to the DUCKDUCKGO trademark prior to registration of the disputed domain name based on Complainant’s trademark registrations. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the prominent fame of the trademark. 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.”). As noted initially, the disputed domain name is an obvious misspelling of the Complainant’s trademark, where the said misspelling is also a negative message (“suck/s”), and the use of <ducksuckgo.com> further clearly indicates that the Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO trademark. The Panel therefore find bad faith registration pursuant to 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 <ducksuckgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 17, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page