When you have all your ducks in a row, you might still lose.
The registrant of DuckDuckDuckGo.com, a domain modeled after the popular Google contender search engine, thought he had a sure winner. One extra duck, will the mamma goose notice?
Duck Duck Go, Inc. did and they filed a UDRP at the National Arbitration Forum citing a trademark for DUCK DUCK GO registered with the USPTO since 2008.
Quick decision by the sole panelist: Transfer this quacky domain to the Complainant. Full details follow:
Copyright © 2024 DomainGang.com · All Rights Reserved.Duck Duck Go, Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA2009001911296
PARTIES
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duckduckduckgo.com>, registered with Gransy, s.r.o.
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.
Bruce E. Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on September 4, 2020; the Forum received payment on September 4, 2020.
On September 9, 2020, Gransy, s.r.o. confirmed by e-mail to the Forum that the <duckduckduckgo.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 September 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@duckduckduckgo.com. Also on September 14, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant, Duck Duck Go, Inc., is an internet privacy company that provides search engine services. Complainant has rights in the DUCKDUCKGO mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,527,274, registered on November 4, 2008).
2. Respondent’s <duckduckduckgo.com>[i] domain name is confusingly similar to Complainant’s mark because it incorporates the entire DUCKDUCKGO mark and merely adds the additional term “duck” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
3. Respondent does not have rights or legitimate interests in the <duckduckduckgo.com> domain name. Respondent is not commonly known by the domain name.
4. Also, Respondent’s use of false WHOIS information further indicates Respondent is not commonly known by the domain name.
5. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect Internet users either to an unknown website which prompts users to install malware or to a webpage featuring click-through links to third-party websites.
6. Respondent registered and uses the <duckduckduckgo.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration as evidenced by past UDRP rulings against Respondent.
7. Additionally, Respondent uses the domain name to attract users for commercial gain by hosting third-party hyperlinks. Respondent also uses the domain name to disseminate malware.
8. Furthermore, Respondent’s bad faith is evidenced by the use of a proxy service and false WHOIS information.
9. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the DUCKDUCKGO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds trademark rights for the DUCKDUCKGO mark. Respondent’s domain name is confusingly similar to Complainant’s DUCKDUCKGO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <duckduckduckgo.com> domain name and that Respondent registered and uses the domain name in bad faith.
DISCUSSION
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”).
Identical and/or Confusingly Similar
Complainant has rights in the DUCKDUCKGO mark based on registration with the USPTO (e.g., Reg. No. 3,527,274, registered on November 4, 2008). Registration of a mark with the USPTO establishes rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration of the DUCKDUCKGO mark with the USPTO, the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <duckduckduckgo.com> domain name is confusingly similar to Complainant’s mark because it incorporates the entire DUCKDUCKGO mark and simply adds the term “duck” and the “.com” gTLD. The addition of term and a gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the <duckduckduckgo.com> domain name is confusingly similar to the DUCKDUCKGO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the <duckduckduckgo.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <duckduckduckgo.com> domain name because Respondent is not commonly known by the domain name. Additionally, Complainant argues that the false WHOIS information provided by Respondent further indicates Respondent is not commonly known by the domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information lists “Hulmiho Ukolen / Poste restante” as the registrant and Complainant has provided evidence that the registrant address listed does not exist. Thus, the Panel holds that Respondent is not commonly known by the <duckduckduckgo.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <duckduckduckgo.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name either redirects Internet users to a domain that prompts them download malware or it resolves to a webpage featuring click through links to third-party websites. Neither disseminating malware or hosting third-party hyperlinks constitutes a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots showing Respondent’s use of the domain name. In one instance, users are prompted to download a browser extension that appears to be an attempt to distribute malware. In another instance, users are redirected to a webpage which displays third-party hyperlinks. Thus, Respondent is not using the <duckduckduckgo.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent registered and uses the <duckduckduckgo.com> domain name in bad faith because Respondent engages in a pattern of bad faith registration. Under Policy ¶ 4(b)(ii), a history of UDRP proceedings that have ruled against a respondent may be considered evidence of bad faith registration and use. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant has provided evidence of numerous UDRP proceedings involving Respondent in which Panels ruled against Respondent. These include the following: Delta Sigma Theta, Incorporated v. Hulmiho Ukolen / Poste restante, FA 1905337 (Forum Sept. 2, 2020); Mediacom Communications Corporation v. Hulmiho Ukolen / Poste restante / Stick Pohlavson, FA 1904241 (Forum Aug. 21, 2020); NP Opco LLC v. Hulmiho Ukolen / Poste 7 4849-2090-7466.3 restante, FA 1870294 (Forum Dec. 22, 2019); Alldata, LLC v. Hulmiho Ukolen / Poste restante, FA 1851590 (Forum Aug. 10, 2019); Phillips 66 Company v. Hulmiho Ukolen / Poste restante, FA 1840730 (Forum May 24, 2019). This reflects a discernible pattern of Respondent’s cybersquatting. Thus, the Panel finds bad faith per Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <duckduckduckgo.com> domain name in bad faith because Respondent uses the domain to host third-party hyperlinks from which it likely receives a commercial benefit. Per Policy ¶ 4(b)(iv), the use of a domain name incorporating the mark of another to host pay-per-click third-party hyperlinks is considered evidence of bad faith registration and use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The record includes a screenshot of the resolving webpage for the <duckduckduckgo.com> domain that features third-party hyperlinks from which Respondent presumably receives some commercial benefit. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO mark based upon Complainant’s registration of the mark and Respondent’s use of the entire mark in the <duckduckduckgo.com> domain name. Panels have found actual knowledge based on the use made of a mark in a domain name. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Because of Respondent’s use of the entire mark in the <duckduckduckgo.com> domain name the Panel finds that Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO mark; thus the Panel holds that Respondent registered and uses the <duckduckduckgo.com> domain name in bad faith.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
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 <duckduckduckgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 14, 2020
[i] The <duckduckduckgo.com> domain name was registered on December 30, 2014.
