DECISION
Parrot AI, Inc. v. Dominick Malzone
Claim Number: FA2406002102001
PARTIES
Complainant is Parrot AI, Inc. ("Complainant"), represented by Sarah P. Harrell of Barnes & Thornburg LLP, Indiana, USA. Respondent is Dominick Malzone ("Respondent"), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tryparrotai.com>, registered with GoDaddy.com, LLC.
PANEL
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.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 12, 2024; Forum received payment on June 12, 2024.
On June 13, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <tryparrotai.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 June 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2024 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@tryparrotai.com. Also on June 17, 2024, 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.
A timely Response was received and determined to be complete on July 8, 2024.
On July 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On July 10, 2024, the Panel issued a Procedural Order requiring Complainant to submit information and relevant evidence to verify the facts claimed by Respondent within five calendar days of receiving the notification. Respondent was given the opportunity to submit an additional brief within five days of receiving Complainant's supplementary submission. On July 15, 2024, Complainant timely submitted an Additional Submission in response to the Panel's Procedural Order. On July 20, 2024, Respondent timely submitted an Additional Submission in response to the Panel's Procedural Order.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
(i) Complainant is a leading artificial intelligence ("AI") company that provides innovative AI-powered audio services. Complainant began selling its AI-powered services under the trademark PARROT AI at least as early as February 4, 2022. Complainant offers and promotes its services around the world and is featured in electronic media. Complainant also offers and promotes its services through its website <www.parrot.ai>. Complainant's PARROT AI website has been continuously accessible to consumers and has prominently featured the PARROT AI marks since its launch. In addition, Complainant heavily markets Complainant's services under the PARROT AI marks on social media platforms. Complainant owns extremely strong common law trademark rights in the PARROT AI marks, embodying invaluable goodwill. Complainant has rights in the PARROT AI mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 7,140,515 registered on August 15, 2023; filed on November 29, 2021; first use in commerce being February 4, 2022). The disputed domain name is confusingly similar to Complainant's mark as it merely adds a generic term "try" and the generic top-level domain ("gTLD") ".com."
(ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PARROT AI mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The disputed domain name currently directs to a page prominently displaying the PARROT AI marks asking people to try Respondent's AI-powered audio services. Respondent is using the disputed domain name to collect consumer information that is not authorized or a legitimate application for Complainant. Respondent never responded to Complainant's demand letter. Respondent is using the disputed domain name to impersonate Complainant or appear to be an authorized partner of Complainant by hosting a fake website displaying the PARROT AI marks and advertising unauthorized services related to Complainant's services.
(iii) Respondent registered and uses the disputed domain name in bad faith. Respondent failed to respond to a cease-and-desist letter, and failed to take any action in response to direct demand requests. Respondent's registration of the disputed domain name with actual or constructive knowledge of Complainant's rights in the PARROT AI marks is evidence that Respondent registered and is using the disputed domain name in bad faith. Respondent was aware of Complainant and its business at the time that it registered the disputed domain name, that such knowledge prompted the registration for the purpose of treading on Complainant's goodwill to generate customers, and that Respondent then used the disputed domain name to imply an association with Complainant.
B. Respondent
(i) Complainant fails to establish the disputed domain name is identical or confusingly similar to Complainant's marks:
(ii) Respondent had a legitimate interest in the disputed domain name:
(b) Respondent has actively used the disputed domain name in commerce since the summer of 2022, well before Complainant's trademark registration date in August 2023.
(c) Given Complainant's negligible social media activity and low engagement, it is entirely plausible that Respondent had no knowledge of its existence at the time of establishing its brand and domain.
(d) By presenting Exhibit D, Complainant implies that the TechCrunch article endorses or promotes their services under the PARROT AI marks. This implication is incorrect and misleading.
(iii) Respondent is acting in good faith:
(a) By the time the domain was purchased on August 23, 2022, Respondent was well on its way to launching a legitimate business aimed at social media users.
(b) Upon learning of Complainant's concerns, Respondent took immediate and reasonable steps to address them.
(c) Respondent has taken several steps to ensure that the use of the disputed domain name does not cause market confusion.
(d) Complainant's claim regarding that Respondent never responded to its demand letter where Complainant requested the cease of all use of the disputed domain name is plainly false.
C. Additional Submissions
1) Complainant's Additional Submission
(i) Complainant wishes to correct an inadvertent error in its original Complaint: Complainant referenced a Tech Crunch article (Exhibit D to Complaint). The company referenced in that article is not associated with Complainant. Complainant requests that the Panel disregard Exhibit D. The statement that "Complainant offers and promotes its services around the world and is featured in electronic media" is still true.
(ii) Complainant addresses several inaccuracies in Respondent's Response to Complaint:
(a) Respondent claims that "[t]he disputed domain name is not confusingly similar to Complainant's registered trademark." This statement is incorrect under the relevant law.
(b) Respondent claims that "Complainant's registered trademark explicitly excludes goods and services related to social networking" and that "[t]his exclusion is crucial because it directly pertains to the nature of Respondent's services." However, Respondent's product is not truly a social networking platform: it is a social media app. Social networking and social media are not the same thing.
(c) Respondent states that Complainant cannot claim exclusive rights to the PARROT AI mark because it is a generic term. This argument has no merit, as Complainant owns a trademark registration for PARROT AI on the Principal Register of the USPTO.
(d) Respondent claims he could not have had any intention to infringe on Complainant's trademark because it was not registered when he registered the disputed domain name on August 23, 2022. However, Complainant's trademark had been filed well before that date and would have been easily discoverable by searching the public records of the USPTO. Further, Complainant's website was already live at <parrot.ai> before August 23, 2022, as shown in the archived captured June 15, 2022, attached as Exhibit. As such, Respondent had at least constructive knowledge of Complainant's rights in the PARROT AI mark when Respondent registered the disputed domain name, which creates the presumption of bad faith.
(e) Respondent states that he changed the app's name from "Parrot: AI Voice Generator" to "Parrot: Voice Generator AI app," supposedly as "a proactive measure to alleviate any potential confusion." Respondent's exhibits indicate the name change was implemented on May 25, 2024. However, as shown in the exhibits to the Declaration of Paul Morville, consumer confusion has still been occurring since that date. Notably, the "Parrot AI" mark is still displayed prominently on the disputed domain name, which undermines Respondent's claim of acting in good faith.
(iii) Complainant's brand is suffering significant reputational damage as a result of the activities associated with the disputed domain name:
(a) As demonstrated by the Declaration of Paul Morville and exhibits attached thereto, Complainant is receiving negative reviews and comments intended for Respondent's business, resulting in harm to Complainant's public image and goodwill. The reviews are from customers who claim that Respondent is "scamming" them or who accuse him of online fraud.
(b) Respondent's app has created offensive content that users have then incorrectly attributed to Complainant. Such content includes an AI-generated video of Adolf Hitler suggesting the extermination of overweight people.
2) Respondent's Additional Submission
(i) The disputed domain name was registered and used in good faith:
The registration of the disputed domain name predates Complainant's trademark registration, which occurred in August 2023. Respondent's decision to register and use the disputed domain name was made in good faith, with no intent to infringe upon any existing trademark rights. At the time of the disputed domain name registration, Complainant's trademark was not registered, and there was no indication that Complainant's brand was widely recognized or associated with the services described in the complaint.
(ii) The Complainant's assertions do not meet any of these criteria per UDRP Paragraph 4(b):
- The disputed domain name has not been listed for sale or rent, nor has any effort been made to transfer it for a value exceeding documented out-of-pocket costs.
- Respondent did not register the disputed domain to prevent Complainant from reflecting its trademark. The disputed domain name was registered in August 2022, a year before Complainant's trademark was even registered in August 2023. There is a prevalent use of the term "Parrot" in the AI industry where various third parties have applications that include said vocable, as can be observed in exhibit of Respondent's initial response.
- There is no overlap or competitive disruption involved. The disputed domain name registration was intended to support Respondent's unique service offerings and was not aimed at disrupting Complainant's business operations.
- The disputed domain name and service offerings are clearly distinguishable from those of Complainant, demonstrating that there is no intentional effort to attract Internet users by creating confusion with Complainant's mark.
(a) Complainant is evidently arguing in bad faith, trying to attribute liability to Respondent for user's personal creations contrary to what is stipulated in Section 230 of the Communications Decency Act (CDA), which grants immunity to platforms (including app owners) from being held liable for content that users post or create using their services.
(b) The information provided by Complainant regarding reputational damage and user confusion is insufficient and does not substantiate the claims made against Respondent. Without direct statements from users indicating that they mistook Respondent's services for those of Complainant, the evidence is largely anecdotal and insufficient to demonstrate actual confusion.
(c) Complainant's claims of harm to its public image are generalized and not substantiated with specific, quantifiable evidence.
(d) Contrary to Complainant's version of the events, Respondent has operated its domain and services in good faith, as demonstrated by the significant positive feedback from users.
(e) There is no evidence to suggest that Respondent has engaged in scamming or any other unethical practices. The substantial positive feedback and high user ratings stand as a testament to Respondent's integrity and dedication to providing a legitimate service and good faith in rendering its services. Some indicators that reflect customer's overall satisfaction with Respondent's services include, but are not limited to the following: (i) Respondent's platform has received over 52,000 positive reviews; (ii) The average rating for the app is 4.6 out of 5 stars, which is above the industry average; and (iii) The platform boasts over 1 million active users, indicating a strong and engaged user base.
(f) Due to an inadvertent delay, the response to Complainant's demand letter was not mailed until July 17, 2024. This delay does not reflect a lack of good faith on the part of Respondent but rather a delay that was promptly corrected upon discovery.
(iii) Business models between the parties are distinct and social networking services in Complainant's trademark are excluded:
(a) The exclusion of social networking services from Complainant's trademark means that Respondent's platform, which operates within the social networking sector, does not fall within the scope of Complainant's protected goods and services, thus preventing any risk of trademark infringement.
(b) Complainant asserts that there is significant evidence of actual confusion of the clients between Respondent's and Complainant's businesses, providing an exhibit. Said claim is erroneous, as Respondent's services are fundamentally different from Complainant's offerings, as they cater to distinct markets and utilize unique features specific to their respective industries. Given the distinct nature of the services provided by Respondent and Complainant, there is no overlap that could cause confusion among consumers. Respondent's social networking platform is unrelated to Complainant's business meeting tools, as they serve different purposes and audiences.
(d) Given that many companies use "Parrot" in their branding, the term is not uniquely associated with Complainant, as such, consumers are accustomed to encountering the term "Parrot" in various AI-related contexts, further reducing Complainant's exclusivity on the term.
(e) Complainant has failed to provide consistent and credible evidence to substantiate its claims of exclusive rights to the term "PARROT AI" and its purported global promotion.
(iv) Respondent respectfully requests that the Panel declare this case as an instance of Reverse Domain Name Hijacking (RDNH):
(a) Precedence of domain registration: The disputed domain name was registered by Respondent in August 2022, which predates Complainant's trademark registration by a full year (August 2023).
(b) Material misrepresentations: Complainant has submitted false information in their complaint, including: (i) citing a TechCrunch article about a different entity as evidence of their own publicity; (ii) falsely inflating their financial backing and investor portfolio; and (iii) overstating their market presence and recognition.
(c) Abuse of UDRP and USPTO process: As Complainant is already aware, Respondent's services fall within a category explicitly excluded from Complainant's trademark protection, but Complainant proceeded with the complaint anyway. This demonstrates a clear attempt to extend their trademark rights beyond their lawful scope. Such utilization of the UDRP framework to resolve what are essentially competitive marketing issues constitutes an abuse of the system and is indicative of Reverse Domain Name Hijacking. The UDRP is intended to address genuine instances of cybersquatting and protect against trademark abuse, not to serve as a tool for adjusting marketing strategies or reallocating advertising budgets.
FINDINGS
1. The disputed domain name was registered on August 23, 2022.
3. Complainant began selling its AI-powered services under the trademark PARROT AI at least as early as February 4, 2022.
4. The development of Respondent's app associated with the disputed domain name began on August 15, 2022.
5. The disputed domain name currently directs to a page prominently displaying the PARROT AI marks asking people to try Respondent's AI-powered audio services.
6. Complainant's "Parrot AI" mark is still displayed prominently on the disputed domain name's resolving website even after Respondent's name change was implemented on May 25, 2024.
8. Complainant is receiving negative reviews and comments intended for Respondent's business, resulting in harm to Complainant's public image and goodwill. The reviews are from customers who claim that Respondent is "scamming" them or who accuse him of online fraud.
9. Respondent's app has created offensive content that users have then incorrectly attributed to Complainant.
10. Complainant has not engaged in the Reverse Domain Name Hijacking.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
Complainant claims rights in the PARROT AI mark, among others, through its registration with the USPTO (e.g., Reg. No. 7,140,515 registered on August 15, 2023; filed on November 29, 2021; first use in commerce being February 4, 2022). Registration of a mark with the USPTO sufficiently confers a Complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i). The Panel thus finds that Complainant has established rights in the PARROT AI mark for the purposes of Policy ¶ 4(a)(i).
Respondent argues that Complainant cannot claim exclusive rights to the "PARROT AI" mark, as it functions as a generic term within the industry. Respondent claims that the fact that multiple entities have utilized the "Parrot AI" mark in various forms prior to and subsequent to Complainant's registration date suggests a wider, non-exclusive use of the term in related industries, further diluting any claims of exclusive rights by Complainant in a generic term like "Parrot AI." The Panel does not find the terms "Parrot" and "Parrot AI" are descriptive or generic in connection with Complainant's services such as collaborative workspace that turns conversation into results, computer software embedding metadata associated with edited audio and video into multimedia documents and Respondent's services, e.g., social networking services offered at the disputed domain name's website. The Panel notes that the examples of most of the multiple entities who utilized the "Parrot AI" mark in various forms, which Respondent provides postdate Complainant's first use of its PARROT AI mark on February 4, 2022, and the filing date of November 29, 2021. Therefore, such concurrent use examples carry less weight as evidence of a lack of exclusivity for Complainant's trademark. Furthermore, Respondent's argument has no merit, as Complainant owns a trademark registration for PARROT AI on the Principal Register of the USPTO, which does not allow the registration of generic terms.
Complainant argues that the disputed domain name <tryparrotai.com> is confusingly similar to Complainant's PARROT AI mark because it incorporates Complainant's mark in its entirety, merely adding the generic term "try" and the ".com" gTLD to form the disputed domain name. Respondent denies Complainant's argument, citing the content of the disputed domain name's resolving website: Respondent's website is a social networking platform designed for users to create and post videos, primarily targeting teens and social media enthusiasts. In contrast, Complainant's services cater to a completely different market, as its platform is used by large companies to facilitate note-taking for business professionals and corporate environments. Respondent further argues that Complainant's registered trademark explicitly excludes goods and services related to social networking, which is crucial because it directly pertains to the nature of Respondent's services. The stark difference in services offered by the two entities negates any possibility of confusion.
The Panel observes that it is well-established that the content of Respondent's website is an irrelevant factor when assessing confusing similarity under the first element of the Policy because trademark holders often suffer from "initial interest confusion," where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name and is then exposed to offensive or commercial content. As such, the test is to be conducted by way of a side-by-side comparison of Complainant's mark and the disputed domain name. See Section 1.15, WIPO Jurisprudential Overview 3.0 ("The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element."); see also Harry Winston Inc. and Harry Winston S.A. v. Jennifer Katherman, D2008-1267 (WIPO, October 18, 2008) ["The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity."].
The Panel notes that adding generic or descriptive terms and gTLDs to a mark does not differentiate the disputed domain name from the incorporated mark under Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant's mark PARROT AI in its entirety merely adding the generic term "try" and the ".com" gTLD. The Panel further notes from Complainant's exhibit that actual consumer confusion has continued to occur even after Respondent's name change on May 25, 2024. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's PARROT AI mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").
Complainant argues Respondent does not have any rights or legitimate interests in the disputed domain name. There is no indication that Respondent or any business or other organization owned or controlled by Respondent has ever been commonly known by or referred to as the disputed domain name or that the disputed domain name is Respondent's legal name, prior to the registering of the disputed domain name in August 2022. Respondent's lack of rights or legitimate interests in the disputed domain name is also demonstrated by the fact that Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent's use of the PARROT AI marks.
Additionally, Complainant argues that Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor for legitimate noncommercial or fair use. Complainant contends that the disputed domain name directs to a page prominently displaying the PARROT AI marks asking people to try their AI-powered audio services. Respondent is using the disputed domain name to collect consumer information that is not authorized or a legitimate application for Complainant. Respondent is using the disputed domain name to impersonate Complainant or appear to be an authorized partner of Complainant by hosting a fake website displaying the PARROT AI marks and advertising unauthorized services related to Complainant's services.
The Panel finds that Respondent's use of the disputed domain name is deceptive and confusing and amounts to passing off. As such it cannot amount to a bona fide offering of goods and services or a non-commercial legitimate or fair use. See Todd McFarlane and TMP International LLC v. tim wang, FA2073747 (Forum January 1, 2024) ("Complainant submits that Respondent used the disputed domain name to direct Internet users to a website entitled "Overstock Sale" selling various Christmas Holiday ornaments and decorations unrelated to Complainant's business. … The Panel finds that Respondent's use of the disputed domain name is deceptive and confusing and amounts to passing off. As such it cannot amount to a bona fide offering of goods and services or a non-commercial legitimate or fair use."); see also JUUL Labs, Inc. v. Harry L. Werner, FA 1880938 (Forum Mar. 10, 2020) ("Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant's business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant's business in order to sell unauthorized products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii)").
Given the considerations above, the Panel finds that Complainant has established a prima facie case. As the burden of proof now shifts to Respondent, the Panel must determine if Respondent has rebutted the prima facie case and demonstrated a right or legitimate interest in the disputed domain name.
Respondent contends that Respondent had a legitimate interest in the disputed domain name:(i) Respondent registered the disputed domain name on August 23, 2022, which predates Complainant's trademark registration, which occurred in August 2023, by a full year; (ii) Respondent has actively used the disputed domain name in commerce since the summer of 2022, well before Complainant's trademark registration date in August 2023. Respondent's early and documented use demonstrates a clear, bona fide interest in the disputed domain name for legitimate business purposes. From its inception, Respondent's domain was intended for a specific and legitimate purpose: to provide a video creation tool for social media. Respondent's app, "Parrot: Voice AI Generator," was designed to help users, particularly teens, create videos for social media platforms. The development of this app began before the domain was registered, with significant progress documented on Respondent's GitHub account as early as August 15, 2022; (iii) Given the Complainant's negligible social media activity and low engagement, it is entirely plausible that Respondent had no knowledge of its existence at the time of establishing its brand and domain. Complainant has asserted that its social media presence constitutes heavy marketing of their services, implying that Respondent should have been aware of Complainant's mark. However, a closer examination of Complainant's social media activity during the relevant time period reveals that its presence was minimal and lacked significant engagement. An analysis of Complainant's Twitter/X account during August and September 2022 shows that its social media activity was virtually non-existent in terms of meaningful engagement and visibility; and (iv) By presenting Exhibit D, Complainant implies that the TechCrunch article endorses or promotes their services under the PARROT AI marks. This implication is incorrect and misleading. The article's focus on <parrot.us> indicates that it is discussing a different company, which means that the content of the article cannot be used to support Complainant's claims about its global promotion and recognition.
However, contrary to Respondent's claim, the Panel notes that Respondent's development of its app associated with the disputed domain name (August 15, 2022) and Respondent's registration of the disputed domain name (August 23, 2022) postdate Complainant's first use in commerce of the PARROT AI mark (February 4, 2022) and the filing date of Complainant's trademark PARROT AI (November 29, 2021). Furthermore, the disputed domain name currently directs to a page prominently displaying the PARROT AI marks, asking people to try Respondent's AI-powered audio services. Complainant's "Parrot AI" mark is still prominently displayed on the disputed domain name's website even after Respondent's name change on May 25, 2024. Actual consumer confusion has continued to occur even after Respondent's name change on May 25, 2024. Complainant is receiving negative reviews and comments intended for Respondent's business, resulting in harm to Complainant's public image and goodwill. These reviews are from customers who claim that Respondent is "scamming" them or accuse Respondent of online fraud.
The Panel is not prepared to accept Respondent's arguments that the reviews cited in Complainant's exhibit do not provide specific evidence that users mistook Respondent's social networking platform for Complainant's business meeting tools; and if the contents of Complainant's exhibit were real and truthful, this document only reflects instances where users may have experienced difficulties related to customer service. The reason why the Panel does not accept Respondent's argument is that the Panel views Complainant's exhibits in its Additional Submission as demonstrating that Internet users who believed Respondent's website was Complainant's website visited the site by mistake.
The Panel notes that Respondent contends in its Additional Submission that the substantial positive feedback and high user ratings stand as a testament to Respondent's integrity and dedication to providing a legitimate service and good faith in rendering its services. However, the Panel finds that the substantial positive feedback and high user ratings do not justify Respondent's legitimate service and good faith in rendering its services because it cannot be ruled out that the success of Respondent's website, in association with the disputed domain name, results from taking advantage of the goodwill of Complainant's "PARROT AI" mark and diverting traffic intended for Complainant to Respondent's website.
Therefore, the Panel finds that Respondent has failed to rebut the prima facie case against it, and thus concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant contends that the disputed domain name was registered and is being used in bad faith as Respondent was aware of Complainant and its business at the time it registered the disputed domain name. Complainant asserts that this knowledge prompted the registration to exploit Complainant's goodwill to generate customers and that Respondent then used the disputed domain name to imply an association with Complainant. Respondent is using the disputed domain name to collect consumer information without authorization or legitimate application for Complainant. Respondent is using the disputed domain name to impersonate Complainant or appear to be an authorized partner by hosting a fake website displaying the PARROT AI marks and advertising unauthorized services related to Complainant's services.
The Panel finds that (i) the disputed domain name currently directs to a page prominently displaying the PARROT AI marks, asking people to try Respondent's AI-powered audio services; (ii) Complainant's "Parrot AI" mark is still displayed prominently on the disputed domain name's website even after Respondent's name change on May 25, 2024; (iii) actual consumer confusion has continued to occur even after Respondent's name change on May 25, 2024; (iv) Complainant is receiving negative reviews and comments intended for Respondent's business, resulting in harm to Complainant's public image and goodwill. These reviews are from customers who claim that Respondent is "scamming" them or accuse Respondent of online fraud; and (v) Respondent's app has created offensive content that users have incorrectly attributed to Complainant.
The Panel is of the view that such use of the disputed domain name to mislead users and divert them to Respondent's website disrupts Complainant's business. See ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant's business by diverting Internet users from Complainant's website to Respondent's website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").
Respondent submits that Respondent is acting in good faith: (i) By the time the disputed domain name was registered on August 23, 2022, Respondent was well on its way to launching a legitimate business aimed at social media users; (ii) Upon learning of Complainant's concerns, Respondent took immediate and reasonable steps to address them. Despite having established a legitimate business with a clear timeline predating Complainant's trademark registration, Respondent still opted to change their app's name from "Parrot: AI Voice Generator" to "Parrot: Voice Generator AI app;" (iii) Respondent has taken several steps to ensure that the use of the disputed domain name does not cause market confusion. First, Respondent thoroughly researched and verified the availability of the "Parrot AI" name before launching their app, finding no conflicts in the App Stores or through Apple's automatic checks. Additionally, Respondent's services and target market are distinctly different from those of Complainant. Respondent's Parrot AI focuses on social media video creation for teens and social media users, whereas Complainant's platform is geared towards corporate professionals for note-taking; and (iv) Complainant's claim that Respondent never responded to its demand letter requesting the cessation of all use of the disputed domain name is plainly false. Respondent duly responded to Complainant's demand letter, proving an evident act of good faith.
The Panel, however, notes that the content of Respondent's website is an irrelevant factor when assessing confusing similarity because trademark holders often suffer from "initial interest confusion," where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name and is then exposed to offensive or commercial content. Respondent, in its Additional Submission, argues that even if the disputed domain name is confusingly similar to Complainant's mark, the social networking services provided on Respondent's website are explicitly excluded from the designated services of Complainant's trademark. Therefore, Complainant cannot claim exclusive rights over Respondent's social networking services, and Respondent's website does not constitute an infringement of Complainant's trademark.
However, under UDRP Paragraph 4(a)(iii), bad faith can be established not only by disrupting Complainant's business through trademark infringement but also by causing initial interest confusion among Internet users, thereby diverting them to Respondent's website for commercial gain. This can disrupt Complainant's business, even if Respondent's website does not infringe Complainant's trademark. Past panels have found that resolving a confusingly similar domain name to a website unrelated to Complainant's business does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int'l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). See also State Farm Mutual Automobile Insurance Company v. ICS INC., FA1532398 (Forum December 31, 2013)(finding respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the domain name resolves to a parked page containing click-through links for various products and services unrelated to complainant).
The Panel further notes that:
(i) Respondent's development of its app associated with the disputed domain name (August 15, 2022) and Respondent's registration of the disputed domain name (August 23, 2022) postdate Complainant's first use in commerce of the PARROT AI mark (February 4, 2022) following Complainant's filing of a trademark application. The Panel is of the view that the filing of an intent-to-use trademark application with the USPTO, subject to the mark being registered, may constitute constructive use of the mark and confer priority rights as of the filing date under United States trademark law. Given that both parties are located in the United States, the Panel finds it more likely that Respondent was aware of Complainant's mark at the time of Respondent's registration of the disputed domain name;
(ii) The disputed domain name currently directs to a page prominently displaying the PARROT AI marks, asking people to try Respondent's AI-powered audio services. Complainant's "Parrot AI" mark is still prominently displayed on the disputed domain name's website even after Respondent's name change on May 25, 2024;
(iii) Actual consumer confusion has continued to occur even after Respondent's name change on May 25, 2024;
(iv) Complainant is receiving negative reviews and comments intended for Respondent's business, resulting in harm to Complainant's public image and goodwill. These reviews are from customers who claim that Respondent is "scamming" them or accuse Respondent of online fraud;
(v) As previously noted, the Panel is not prepared to accept Respondent's arguments that the reviews cited in Complainant's exhibit do not provide specific evidence that users mistook Respondent's social networking platform for Complainant's business meeting tools. If the contents of Complainant's exhibit were real and truthful, this document only reflects instances where users may have experienced difficulties related to customer service. The reason why the Panel does not accept Respondent's argument is that the Panel views Complainant's exhibits in its Additional Submission as demonstrating that Internet users who believed Respondent's website was Complainant's website visited the site by mistake; and
(vi) Respondent states that it did respond to the letter and attaches a copy of that response letter as an exhibit while Complainant's exhibit shows a word document addressed to Complainant's attorney, who has no record of receiving this document as shown in the Declaration of Complainant's attorney. Respondent clarifies in its Additional Submission that due to an inadvertent delay, the response to Complainant's demand letter was not mailed until July 17, 2024, and this delay does not reflect a lack of good faith on the part of Respondent but rather a delay that was promptly corrected upon discovery. However, the Panel finds that the contents of Respondent's response to Complainant's demand letter and the inadvertent delay of Respondent's response to Complainant's demand letter do not support Respondent's good faith in registering and using the disputed domain name. Therefore, the Panel finds that Respondent's arguments are unfounded.
The Panel concludes that Respondent used the disputed domain name to disrupt Complainant's business by diverting Internet users from Complainant's website to Respondent's website where it offered unrelated or indirectly related services to Complainant's business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii) and (iv). Consequently, the Panel finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Since the Panel found that Complainant has satisfied all the elements of Policy ¶ 4(a), the Panel, therefore, finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed'n Entm't, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) ("Because Complainant has satisfied [all of] the elements of the Policy, Respondent's allegation of reverse domain name hijacking must fail"); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the "identical/confusingly similar" prong of the Policy); see also Securian Financial Group, Inc. v. me s / enom, FA1595614 (Forum Jan. 16, 2015) (denying request for reverse domain name hijacking where Complainant satisfied all elements of Policy ¶ 4(a)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tryparrotai.com> domain name be TRANSFERRED from Respondent to Complainant.
Complainant has not engaged in Reverse Domain Name Hijacking.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 23, 2024
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