Duck Duck Go, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2203001986564
Complainant is Duck Duck Go, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <duckduckog.com>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on March 2, 2022; the Forum received payment on March 2, 2022.
On March 3, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <duckduckog.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 March 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2022 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@duckduckog.com. Also on March 4, 2022, 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 March 29, 2022, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a global internet search engine service provider with a focus on protecting user privacy. Complainant has rights in the DUCKDUCKGO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,527,274, registered Nov. 4, 2008).
2. Respondent’s <duckduckog.com>[i] domain name is confusingly similar to Complainant’s DUCKDUCKGO mark. Respondent incorporates the mark in its entirety and transposes the letter “g” and “o” and adds the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <duckduckog.com> domain name as Respondent is not commonly known by the domain name nor did Complainant authorize Respondent to use the DUCKDUCKGO mark in any way.
4. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that attempts to offer to download software onto a users’ device.
5. Respondent registered and uses the <duckduckog.com> domain name in bad faith as Respondent attempts to download malware onto internet users’ devices.
6. Respondent engages in typosquatting by transposing the final two letters in Complainant’s DUCKDUCKGO mark.
7. Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO mark due to the longstanding use and fame in the mark.
8. Respondent has been involved in previous adverse UDRP proceedings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 <duckduckog.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 rights in the DUCKDUCKGO mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has provided this Panel with copies of it USPTO registrations for the DUCKDUCKGO mark (e.g. Reg. No. 3,527,274, registered Nov. 4, 2008). Therefore, the Panel holds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <duckduckog.com> domain name is confusingly similar to Complainant’s DUCKDUCKGO mark. Registration of a domain name that contains a mark in its entirety with letters transposed and an added gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Respondent incorporates the DUCKDUCKGO mark in its entirety and transposes the letter “g” and “o” and adds the “.com” gTLD. Therefore, Respondent’s <duckduckog.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <duckduckog.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.) The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <duckduckog.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the DUCKDUCKGO mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <duckduckog.com> domain name lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and there is no other evidence to suggest that Respondent is authorized to use the DUCKDUCKGO mark or is commonly known by the domain name. Therefore, the Panel may find Respondent is not commonly known by the <duckduckog.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s <duckduckog.com> domain name resolves to a webpage that attempts to offer to download software onto a users’device. Use of a domain name incorporating the mark of another to resolve to a webpage that offers software to internet users is not a bona fide offering of goods or services per 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).”). Complainant has provided the Panel with a screenshot of the resolving website to Respondent’s <duckduckog.com> domain name that that offers downloads to internet users. Therefore, Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has been involved in previous UDRP decisions which is evidence of bad faith. See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). The record contains evidence that Respondent has repeatedly sought to misuse the trademarks of others by including those marks in misleading domain names. Thus, the Panel holds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the DUCKDUCKGO mark at the time of registering the <duckduckog.com> domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Thus, the record supports Complainant’s argument that Respondent did have actual knowledge of Complainant’s rights in the DUCKDUCKGO mark, constituting bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <duckduckog.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 4, 2022
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