Duck Duck Go, Inc. v. Mike Jones
Claim Number: FA2004001894215
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, United states. Respondent is Mike Jones (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <searchduckduckgo.com>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2020; the Forum received payment on April 29, 2020.
On April 30, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <searchduckduckgo.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 May 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@searchduckduckgo.com. Also on May 5, 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 May 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <searchduckduckgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO mark.
2. Respondent does not have any rights or legitimate interests in the <searchduckduckgo.com> domain name.
3. Respondent registered and uses the <searchduckduckgo.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Duck Duck Go, Inc., is a global Internet search engine service provider. Complainant holds a registration for the DUCKDUCKGO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,527,274, registered on November 4, 2008).
Respondent registered the <searchduckduckgo.com> domain name on October 10, 2019, and uses it to pass of as Complainant and offer competing services.
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 Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <searchduckduckgo.com> domain name incorporates the DUCKDUCKGO mark in its entirety and merely adds the generic term “search” along with the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Respondent’s <searchduckduckgo.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <searchduckduckgo.com> domain name, as Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name shows that the registrant’s name is “MIKE JONES” and nothing in the record indicates that Respondent is authorized to use the DUCKDUCKGO mark, or is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Complainant claims that Respondent fails to use the <searchduckduckgo.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to pass off as Complainant and offer competing services. A respondent’s use of a disputed domain name to offer competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). 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).”). Complainant provides screenshots of the disputed domain name’s resolving website that appears nearly identical to Complainant’s website and claims that Respondent uses the disputed domain name to offer the exact services that Complainant provides. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent’s use of a small disclaimer at the bottom of its webpage does not prove legitimate interests in the disputed domain name. The Panel agreed and finds that Respondent’s disclaimer does not confer any rights in the disputed domain name under Policy ¶ 4(c)(ii). See Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, FA 1724063 (Forum May 9, 2017) (finding respondent’s disclaimer insufficient because “[t]he disclaimer is in small print, although it can be read, and it is in a position at the bottom of each page where it may well be overlooked and in any event it comes after the services offered on each page of the site… [t]he result is that each page starts with Complainant’s unique stylized trademark and ends with a less than prominent or effective disclaimer.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <searchduckduckgo.com> domain name with knowledge of Complainant’s rights in the DUCKDUCKGO mark, noting that Respondent uses the disputed domain name to offer the same services as Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO mark when it registered the disputed domain name, which constitutes bad faith 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.”).
Complainant argues that Respondent’s use of a disclaimer on the website at <searchduckduckgo.com> is insufficient to avoid a finding of bad faith. The Panel agrees and finds that this is further evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Auxilium Pharm., Inc. v. Patel, FA 642141 (Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 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 <searchduckduckgo.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 28, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page