Chegg, Inc. v. duncan wanjau
Claim Number: FA1904001840678
Complainant is Chegg, Inc. (“Complainant”), represented by Jami A. Gekas of Foley & Lardner LLP, Illinois, USA. Respondent is duncan wanjau (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheggstudies.com>, registered with Launchpad.com 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 29, 2019.
On April 28, 2019, Launchpad.com Inc. confirmed by e-mail to the Forum that the <cheggstudies.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 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@cheggstudies.com. Also on May 2, 2019, 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 May 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has made the following contentions.
Complainant operates a student–first connected learning platform, offering a wide variety of tutoring, online textbook, study and related educational and entertainment services to high school and university students. Complainant has rights in the CHEGG STUDY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,777,915, registered July 21, 2015). See Compl. Annex A.1.A. Respondent’s <cheggstudies.com> domain name is confusingly similar to Complainant’s mark as it merely pluralizes “study” to “studies” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cheggstudies.com> domain name. Respondent is not commonly known by the disputed domain name, nor has it been authorized, licensed, or otherwise permitted to use Complainant’s mark. Respondent’s <cheggstudies.com> domain name resolves to a website offering services in direct competition with Complainant’s business.
Respondent registered the <cheggstudies.com> domain name in bad faith. The use of Complainant’s mark in the domain name provides actual or constructive notice of Complainant’s right in the mark. Respondent is offering educational services that directly compete with Complainant, and the use of Complainant’s mark may confuse internet users seeking Complainant’s goods or services while disrupting Complainant’s business. Upon being notified by Complainant that the <cheggstudies.com> domain name infringed on Complainant’s mark, Respondent offered to sell the disputed domain name for $60,000.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a student–first connected learning platform, offering a wide variety of tutoring, online textbook, study and related educational and entertainment services to high school and university students.
2. Complainant has established its trademark rights in the CHEGG STUDY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,777,915, registered July 21, 2015).
3. Respondent registered the <cheggstudies.com> domain name on November 3, 2018.
4. The <cheggstudies.com> domain name resolves to a website offering services in direct competition with Complainant’s business and Respondent has offered the domain name for sale to 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHEGG STUDY mark. Complainant argues the Respondent’s <cheggstudies.com> domain name is confusingly similar to Complainant’s mark as Respondent merely pluralizes Complainant’s mark and adds a “.com” gTLD. Where respondent includes the complainant’s mark and only pluralizes a word that is in a singular form, it is generally not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Discount Embroidery Supply v AllStitch LLC, FA 1007001336136 (Forum Sept. 6, 2010) (“Despite the descriptive character of each of the words comprising Complainant’s trademark and the use in the Domain Name of the plural “supplies” instead of the singular “supply”, the Panel finds that that the Domain Name is confusingly similar to the trademark.”). Here, Respondent uses Complainant’s CHEGG STUDY mark and merely pluralizes “study” to “studies” and adds “.com” gTLD. Therefore, the Panel finds that Respondent’s <cheggstudies.com> domain name is confusingly similar to Complainant’s mark.
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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEGG STUDY trademark and to use it in its domain name, pluralizing the word “study” to “studies” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <cheggstudies.com> domain name on November 3, 2018;
(c) Respondent has caused the <cheggstudies.com> domain name to resolve to a website offering services in direct competition with Complainant’s business and Respondent has offered the domain name for sale to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <cheggstudies.com> domain name as Respondent is not commonly known as the disputed domain name, nor is Respondent authorized or licensed by Complainant to use Complainant’s marks. Relevant information such as WHOIS information can aid in determining if respondent is commonly known as the disputed domain name, under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, Complainant provides WHOIS information for the <cheggstudies.com> domain name, showing a “duncan wanjau” as the registrant of the disputed domain name. See Compl. Annex. B.1. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <cheggstudies.com> domain name, as Respondent is not commonly known as the disputed domain name, nor is it authorized or licensed by Complainant to use Complainant’s marks;
(f) Complainant argues that Respondent has no rights or legitimate interests in the <cheggstudies.com> domain name as Respondent’s use is not for a bona fide offering of goods and services, nor a legitimate noncommercial or fair use. Rather, Complainant asserts that the disputed domain name resolves to a website offering services in direct competition with Complainant. Using a confusingly similar domain name to offer services directly competing with a complainant generally does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the <cheggstudies.com> webpage, showing that Respondent is offering educational services in a similar fashion to Complainant’s business. See Compl. Annex. B.2. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <cheggstudies.com> domain name, as Respondent’s use is not for a bona fide offering of goods and services, nor a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests 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 argues that Respondent registered the <cheggstudies.com> domain name in bad faith as Respondent offered to sell the disputed domain name to Complainant for $60,000 after being sent a cease and desist letter from Complainant. Offers to sell a disputed domain name for an amount in excess of out of pocket costs can demonstrate bad faith under Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i). ”). Here, Complainant supplies evidence of Respondent’s offer to sell Complainant the disputed domain name for $60,000. See Compl. Annex. A. Ex. 2. Therefore, the Panel finds that Respondent registered and uses the <cheggstudies.com> domain name in bad faith under Policy ¶ 4(b)(i) given Respondent’s offer to sell the disputed domain name to Complainant.
Thirdly, Complainant argues that Respondent registered the <cheggstudies.com> domain name in bad faith as Respondent had actual or constructive notice of Complainant’s marks. While Panels generally do not recognize constructive notice, evidence of actual notice can support a finding of bad faith registration under Policy ¶ 4(a)(iii). 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.”). Here, Respondent used the Complainant’s CHEGG STUDY mark in the disputed domain name, merely pluralizing “study,” and offered a service provided by Complainant. As the Panel infers that Respondent would have needed notice of Complainant’s mark to register the at-issue domain name and offer a service directly competing with Complainant, the Panel may find that Respondent registered the <cheggstudies.com> domain name in bad faith under the Policy.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHEGG STUDY mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <cheggstudies.com> domain name be TRANSFERRED from Respondent to Complainant
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 25, 2019
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