Duck Duck Go, Inc. v. Polyakov Andrey
Claim Number: FA2301002026617
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Polyakov Andrey (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duckduckgo-browser.net>, 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 Forum electronically on January 6, 2023; Forum received payment on January 6, 2023.
On January 6, 2023, NameCheap, Inc confirmed by e-mail to Forum that the <duckduckgo-browser.net> 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 January 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2023 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@duckduckgo-browser.net.
Also on January 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 claims rights in the DUCKDUCKGO trademark and service mark established by its ownership of the portfolio of registrations described below and its use of the mark in relation to its Internet search engine services.
Complainant alleges that the disputed domain name <duckduckgo-browser.net> is virtually identical and confusingly similar to Complainant’s DUCKDUCKGO mark and its own <duckduckgo.com> domain name.
Complainant argues that the disputed domain name consists simply of the addition of a general term “-browser” to Complainant’s DUCKDUCKGO mark, and neither of the additional elements eliminate the confusing similarity with Complainant’s registered trademarks. See Vail Trademarks, Inc. and Vail Resorts, Inc. v. Hillary Wilkerson, FA1711001757477 (Forum December 4, 2017) (finding confusing similarity where respondent made a minor typographical change of adding a hyphen and the generic term to the complainant’s registered trademark).
Complainant alleges that Respondent’s use of the disputed domain name can only be intended to trade off Complainant’s corporate name and trademarks and to confuse web users.
Complainant adds that swapping the generic top-level domain suffix <.com> with <.net> does not create a meaningful distinction from Complainant’s mark. It is well established under the ICANN Policy that “the specific top level of a domain name . . . does not affect the determination of the identity or similarity between a domain name and a trademark.” Automobili Lamborghini Holding S.p.A. v. Unity 4 Humanity, Inc., WIPO Case DTV2008-0010 (WIPO Sept. 17, 2008).
Complainant next alleges that Respondent has no rights or legitimate interests in or to the disputed domain name, arguing that the name of the registrant of the disputed domain name was previously redacted privacy in the WHOIS information for the registration of the disputed domain name, and the registrant is now revealed to be Respondent.
Complainant submits that there is no basis to find that that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii) given Complainant’s widely known rights in the DUCKDUCKGO mark. See Tercent Inc. v. Lee Yi, Forum Claim Number FA 0139720 (Forum February 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Moreover, Complainant argues that DUCKDUCKGO has been Complainant’s corporate name for many years, and to Complainant’s knowledge, there are no other companies with this name.
Complainant adds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy.
Referring to screen captures exhibited in an annex to the Complaint, Complainant submits that they show that the disputed domain name currently resolves to a website that is confusingly similar to Complainant’s own website and browser service.
Complainant adds that the exhibited screen captures illustrate that Respondent copied certain images from various webpages of Complainant’s website, likely in an attempt to attempt to confuse users into believing that disputed domain name is an authorized website, or shares some affiliation with Complainant, when it does not.
Complainant argues that such of the disputed domain name evidences Respondent’s lack of rights and legitimate interests in the disputed domain name. See Insomniac Holdings, LLC v. Mark Daniels, Forum Claim Number FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”).
Moreover, Complainant alleges that Respondent is a known cybersquatter and refers to a number of complaints in which Respondent has been the unsuccessful respondent in proceedings under the Policy: United Parcel Service of America, Inc. v. Polyakov Andrey, Forum Claim Number FA2107001954233, August 6, 2021; Charter Communications Holding Company, LLC v. Polyakov Andrey, Forum Claim Number FA2107001957591, September 7, 2021; Duck Duck Go, Inc. v. Polyakov Andrey, Forum Claim Number FA2111001972748, December 9, 2021; United Parcel Service of America, Inc. v. Polyakov Andrey, Forum Claim Number FA2111001973589, December 28, 2021; Dell Inc. v. Polyakov Andrey, Forum Claim Number FA2202001985542; March 24, 2022; Charter Communications Holding Company, LLC v. Polyakov Andrey, Forum Claim Number FA2203001987902, April 11, 2022; United Parcel Service of America, Inc. v. Polyakov Andrey, Forum Claim Number FA2204001993877, May 26, 2022; Duck Duck Go, Inc. v. Polyakov Andrey, Forum Claim Number FA2206001999765, July 11, 2022; Credit Karma, LLC v. Polyakov Andrey, Forum Claim Number FA2207002003287, August 2, 2022; TechSmith Corporation v. Polyakov Andrey, Forum Claim Number FA2206002002722, August 2, 2022; Abbott Diabetes Care Inc. v. Polyakov Andrey, Forum Claim NumberFA2209002011179, October 10, 2022.
Complainant concludes that based on the above, there is no evidence that Respondent (i) is using the disputed domain name for a bona fide offering of goods or services, (ii) is known by DUCKDUCKGO, or (ii) is making any legitimate noncommercial or fair use of the disputed domain name and, accordingly Respondent cannot establish any rights or legitimate interests in the disputed domain name and cannot prevail under Policy ¶ 4(c)(i)-(iii).
Complainant next alleges that Respondent registered and is using the disputed domain name in bad faith, arguing that Respondent had constructive notice of DuckDuckGo’s trademarks by virtue of DuckDuckGo’s trademark registrations, including but not limited to those set forth above. Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (“Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant’s rights in its trademark.”).
Moreover, Respondent’s use of Complainant’s entire DUCKDUCKGO mark in creating the disputed domain name and on the resolving webpage demonstrates actual notice of Complainant’s trademarks. See Am. Online, Inc. v. Miles, Forum Claim Number FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further referring to exhibited screen captures, Complainant submits that Respondent is passing off of the landing page to which the disputed domain name resolves as being Complainant’s website, which Complainant argues provides further evidence of bad faith use and registration.
Complainant contends that Respondent is using the disputed domain name to redirect Internet users to a website that is confusingly similar to Complainant’s own website, which constitutes use in bad faith for the purposes of the Policy. 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).
In conclusion Complainant contends that accordingly, Respondent cannot prevail under ICANN Policy ¶ 4(c)(i)-(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an internet search engine service provider and owns and uses the DUCKDUCKGO mark for which it owns a portfolio of registrations including the following:
· United States registered trademark DUCKDUCKGO, registration number 5748545, registered on the Principal Register on May 14, 2019 for goods in international class 9;
· United States registered service mark DUCKDUCKGO registration number 3527274, registered on the Principal Register on November 4, 2008, for services in international class 42
· United States registered service mark DUCKDUCKGO registration number 6488253 registered on the Principal Register on September 14, 2020 for services in international class 38.
Complainant also owns and uses as number of registered trademarks consisting of a duck design (the “Duck Logo”), as well as the Internet domain name <duckduckgo.com> which it uses as the address of its search engine.
The disputed domain name was registered on November 16, 2022 and resolves to a website that falsely purports to be that of Complainant, using Complainant’s DUCKDUCKGO and Duck Logo registered trademarks as well as images taken from Complainant’s website without permission.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s Whois, and the information provided by the Registrar in response to the request by the Forum for details of the registrant of the disputed domain name in the course of this proceeding.
Respondent availed of a privacy service to conceal his identity on the published WhoIs and the Registrar revealed his identity for the purposes of this proceeding. Respondent has been the unsuccessful respondent in a significant number of complaints under the Policy.
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 provided convincing, uncontested evidence of its rights in the DUCKDUCKGO mark, established by the ownership of the portfolio of trademark and service mark registrations described above and its use of the mark to distinguish its Internet search engine services.
The disputed domain name <duckduckgo-browser.net> consists of Complainant’s DUCKDUCKGO mark in its entirety, a hyphen, the word “browser” and the generic Top Level Domain extension <.net>.
It is frequently held that a complainant will satisfy the test for confusing similarity once the trademark relied upon is present in its entirety in the domain name at issue, and this is such a case.
Complainant’s DUCKDUCKGO mark is the initial, dominant, and only distinctive element in the disputed domain name. The hyphen has no distinguishing character in context, but serves rather to separate and thereby emphasize Complainant’s mark within the disputed domain name.
The presence of the descriptive word “browser” does not prevent a finding of confusing similarity, nor does the <.net> domain name extension which in context would be taken by Internet users to be a necessary technical element of a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the DUCKDUCKGO mark in which Complainant has rights Complainant has met the test set in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no basis to find that that Respondent is commonly known by the disputed domain name given Complainant’s widely known rights in the DUCKDUCKGO mark;
· the WHOIS information for the registration of the disputed domain name was previously redacted for privacy, and the registrant is now revealed to be Respondent;
· DUCKDUCKGO has been Complainant’s corporate name for many years, and to Complainant’s knowledge, there are no other companies with this name;
· Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy;
· the screen captures exhibited in an annex to the Complaint show that the disputed domain name currently resolves to a website that is confusingly similar to Complainant’s own website and browser service;
· the exhibited screen captures illustrate that Respondent copied certain images from various webpages of Complainant’s website, likely in an attempt to attempt to confuse users into believing the disputed domain name is an authorized website or shares some affiliation with Complainant, when it does not.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the DUCKDUCKGO mark which predate the registration of the disputed domain name on November 16, 2022.
The record shows that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, has engaged in a pattern of registration of numerous domain names which incorporate third party trademarks and service marks. Complainant has provided copies of the decisions in an annex to the Complaint as listed above.
Furthermore, the dominant element in the disputed domain name is Complainant’s distinctive DUCKDUCKGO mark and it is most improbable that anyone might register the domain name without being aware of Complainant’s name, mark, and Internet browser.
On the balance of probabilities this Panel finds therefore that the disputed domain name was intentionally chosen and registered in bad faith with Complainant in mind, to intentionally take predatory advantage of Complainant’s goodwill and reputation in the DUCKDUCKGO mark.
In reaching this decision, this Panel is conscious that at the time the disputed domain name was registered, Respondent had already been the unsuccessful respondent in Duck Duck Go, Inc. v. Polyakov Andrey, Forum Claim Number FA2111001972748, December 9, 2021.
Complainant has furthermore shown that the website to which the disputed domain name resolves, purports to impersonate Complainant, by using images taken from Complainant’s website, is using Complainant’s DUCKDUCKGO mark and its Duck Logo without consent, and is purporting to offer browser services, in order to create the impression that the disputed domain name, and the website to which it resolves are owned by, or are in some way associated with Complainant.
Such use of the disputed domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <duckduckgo-browser.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 13, 2023
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