Bitly, Inc. v. Tran Vu / Gafaba.com
Claim Number: FA2204001994326
Complainant is Bitly, Inc. (“Complainant”), represented by Jessica Tam of Cobalt LLP, California, USA. Respondent is Tran Vu / Gafaba.com (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitly.icu>, registered with Google 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.
On April 28, 2022, Google LLC confirmed by e-mail to the Forum that the <bitly.icu> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of May 23, 2022 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@bitly.icu. Also on May 3, 2022, the Vietnamese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for filing 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.
Respondent did not file a formal Response, but in reply to the service on Respondent of the Written Notice of the Complaint on May 3, 2022, Respondent sent to the Forum an email on May 3, 2022 which was received by the Forum on the same day. The aforesaid email was expressed in the Vietnamese language, the English language translation of which is “Hello, can you send me an email back in Vietnamese? Because I can't read the content below. Thank you. " In that regard, the Panel notes that the Written Notice to which Respondent replied was sent to Respondent both in English and Vietnamese.
Having received no formal Response from Respondent, and no response other than the aforesaid email, the Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings to be Vietnamese. However, pursuant to Rule 11(a) of the Rules (defined below), the Panel has a discretion to determine that a different language would be more appropriate in which to conduct the proceeding, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant submits that the Panel should exercise its discretion under Rule 11(a) and determine that this proceeding be conducted in the English language, rather than Vietnamese.
In support of that submission, Complainant contends that the domain name itself is an English language word, and that Respondent’s website available at the disputed domain name uses English characters and words over several pages. The website overwhelmingly uses the English language to describe the technical services allegedly being offered by Respondent under the domain name. An example of this use of the English language on the website is as follows:
It is apparent therefore that the website has been compose with a knowledge of and familiarity with the English language and that it is directed at English -speaking users and at attracting English-speaking customers.
The website therefore shows clearly that Respondent is proficient in the English language.
Further, Complainant is not conversant nor proficient in the Vietnamese language and to conduct any part of the proceeding in Vietnamese would require delay and unnecessary costs to translate the documents and other parts of the proceeding into English.
Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is in all probability conversant and proficient in the English language. After considering all of the circumstance of the present case, the Panel decides that the proceeding should be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant engages in URL shortening services and other related products and services. Complainant asserts rights in the BITLY mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,701,551, registered on October 27, 2009). See Compl. Ex. 1. Respondent’s <bitly.icu> domain name is identical or confusingly similar to Complainant’s BITLY mark, because it incorporates the mark while adding the “.icu” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <bitly.icu> domain name. Complainant has not authorized or licensed Respondent to use the BITLY mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the Respondent attempts to pass off as Complainant and offers competing services.
Respondent registered and uses the <bitly.icu> domain name in bad faith. Respondent disrupts Complainant’s business by offering similar services to those of Complainant and attempts to benefit financially from the confusion of the confusingly similar domain name. Additionally, Respondent had constructive and actual notice of Complainant’s rights in the BITLY mark.
B. Respondent
Respondent did not file a formal Response but in reply to the service on Respondent of a Written Notice of the Complaint on May 3, 2022, Respondent sent to the Forum an email on May 3, 2022 which was received by the Forum on the same day. Particulars of that email are set out in the Procedural History section of this decision.
1. Complainant is a United States company that engages in URL shortening services and other related goods and services.
2. Complainant has established its rights in the BITLY mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,701,551, registered on October 27, 2009).
3. Respondent registered the <bitly.icu> domain name on June 10, 2021.
4. Respondent has used the disputed domain name to attempt to pass itself off as Complainant and to offer competing services to those of Complainant.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BITLY mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO. Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Complainant provides in evidence a copy of its registration with the USPTO (e.g., Reg. No. 3,701,551, registered on October 27, 2009). See Compl. Ex. 1. The Panel therefore finds that Complainant has established its rights in the BITLY mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BITLY mark. Complainant argues Respondent’s <bitly.icu> domain name is identical or confusingly similar to Complainant’s BITLY mark because it incorporates the BITLY mark, adding only the “.icu” gTLD. The mere addition of a gTLD is not sufficient to differentiate a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Since Respondent only adds a gTLD, the Panel finds the disputed domain name is identical, or alternatively, confusingly similar to Complainant’s BITLY mark pusuant to Policy ¶ 4(a)(ii).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s BITLY mark and to use it in its domain name;
(b) Respondent registered the <bitly.icu> domain name on June 10, 2021;
(c) Respondent has used the disputed domain name to attempt to pass itself off as Complainant and to offer competing services to those of Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <bitly.icu> domain name because Respondent is not authorized to use the BITLY mark, nor is Respondent commonly known by the disputed domain name. To determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). In the present case, the WHOIS information shows Respondent is known as “Tran Vu / Gafaba.com” See Registrar Verification Email. Complainant submits and establishes that Respondent has not been licensed or permitted to use Complainant’s BITLY mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <bitly.icu> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website and domain name attempt to pass themselves off as Complainant at the behest of Respondent, offering competing goods as if associated with Complainant. Using a disputed domain name to pass off as an associate of the complainant’s business does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of the resolving website, where Respondent uses Complainant’s mark and logo to offer competing services to those of Complainant. See Compl. Ex. 2. Complainant further provides screenshots of its own website showing that it provides services with which Respondent has attempted to compete. See Compl. Ex. 3. As the Panel agrees that Respondent attempts to pass itself off as Complainant, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent uses the <bitly.icu> domain name in bad faith because the resolving website disrupts Complainant’s business, offering competing services via a confusingly similar domain name. When a respondent uses a disputed domain name to offer competing goods and services, the Panel may find that it disrupts complainant’s business in bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). In the present case, the Panel compares Complainant’s website and Respondent’s resolving website to see the similar services being offered. See Compl. Ex. 2 and 3. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant further argues that Respondent registered and uses the <bitly.icu> domain name in bad faith because the resolving website offers competing services, passing itself off as Complainant for commercial gain. Using a disputed domain name to pass off as the complainant to attract and confuse users for commercial gain can serve as an indication of bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, the Panel again looks at the screenshots of Respondent’s resolving website to determine whether it attempts to attract users for commercial gain by passing itself off as Complainant and the Panel finds that it does. See Compl. Ex. 2 and 3. Therefore, the Panel finds Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends Respondent had constructive and actual notice of Complainant’s rights in the BITLY mark, evidenced by the use of Complainant’s mark, logo, and similar services, as well as the fame of the mark. While past panels have not recognized constructive notice as sufficient for a finding of bad faith, actual notice may be determined under Policy ¶ 4(a)(iii) by looking at the use and notoriety of the mark. 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.”). In this case, Respondent uses the mark to pass itself off as the Complainant. See Compl. Ex. 2 and 3. As the Panel agrees Respondent had actual notice of Complainant’s rights in the BITLY mark, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitly.icu> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 3, 2022
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