DECISION

 

Groq, Inc. v. K Malik / Blockchain Ltd

Claim Number: FA2410002122098

 

PARTIES

Complainant is Groq, Inc. ("Complainant"), represented by Matthew Passmore of Cobalt LLP, California, USA. Respondent is K Malik / Blockchain Ltd ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <groqy.com>, registered with NameCheap, Inc.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 25, 2024; Forum received payment on October 25, 2024.

 

On October 28, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <groqy.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 October 30, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 19, 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@groqy.com. Also on October 30, 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 November 19, 2024.

 

On November 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

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

Complainant develops and markets hardware and software with a focus on artificial intelligence, natural language processing, and machine learning.  It has rights in the GROQ mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO).  Respondent's domain name is identical or confusingly similar to Complainant's mark because it fully incorporates Complainant's mark, merely adding a "y" at the end of the mark and a generic top-level domain (gTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not associated or affiliated with Complainant and Complainant has not authorized Respondent to use its GROQ mark, it is not commonly known by the domain name, and it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it falsely to imply an association with Complainant and offer services similar to those offered by Complainant.

 

Respondent registered and uses the domain name in bad faith. It registered the domain name with actual knowledge of Complainant and its mark, it attempts for commercial gain to attract Internet users to its website by causing confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, and it registered the domain name using a privacy service.

 

B. Respondent

The domain name is distinct from Complainant's mark in that while that mark evokes a serious, enterprise-focused technology, the domain name implies a "cheeky AI assistant," emphasizing humor, playfulness and a casual interaction. The simple addition of a single letter to the mark creates a wide gulf between the mark and the domain name. The domain name is not confusingly similar.

 

Respondent is neither passing off as nor competing with Complainant. The parties have two different consumer bases, with Complainant marketing to enterprise clients including government agencies, research institutions and corporations that require cutting-edge AI hardware, while Respondent markets to tech-savvy millennials, students and everyday consumers looking for a casual AI companion to help with mundane tasks.

 

Respondent's website does not represent itself as that of Complainant or an affiliate. It does not use Complainant's trademarks or branding elements in any deceptive way and offers a clearly different service. There is no evidence of bad faith intent to mislead or leverage Complainant's reputation.

 

FINDINGS

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.

 

The Panel finds as follows with respect to the matters at issue in this proceeding.

 

Identical and/or Confusingly Similar

The GROQ mark was registered to Complainant with the USPTO (Reg. No. 5,813,964) on July 23, 2019 (USPTO registration certificate included in Complaint Annex 2). Complainant's ownership of its USPTO registration establishes its rights in the GROQ mark for the purposes of Policy ¶ 4(a)(i).  DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). 

 

Respondent argues that its <groqy.com> domain name is not confusingly similar to Complainant's GROQ mark because adding the "y" substantially changes the message. GROQ connotes serious, big-business, governmental agency uses while "groqy" evokes playful, lighthearted casual uses. It creates a "wide gulf" between the two terms.  Respondent's argument raises the question how panels should interpret the "confusingly similar" language in Policy ¶ 4(a)(i)."). On the one hand, as at least one learned commentator has correctly argued, "The plain meaning of the term 'confusingly similar' requires that an Internet user observing the domain name would be led to believe that by visiting the associated website they will find the owner of the mark, or some affiliated or owner-authorized person or entity."¹  

 

Notwithstanding the indisputable logic of this argument, most UDRP panelists have adopted the approach articulated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, which states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO D2000-0047 (WIPO March 29, 2000) ("When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar."). This approach essentially treats the Policy 4(a)(i) element as a standing issue. Niclole Kidman v. John Zuccarini d/b/a Cupcake party, D2000-1415 (WIPO January 23, 2000) (at the threshold, it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name.").  The rationale for adopting this interpretation is founded on the proposition that the purpose of the UDRP and similar policies is to afford an expeditious relatively inexpensive means of rooting out abusive domain registrations.  Nicole Kidman, Id. ("Thus, the term [confusingly similar] must be construed in the light of the purpose of the Policy: "to prevent the extortionate behavior commonly known as cybersquatting, in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners, "Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000).  Again, the WIPO standard is that most commonly used by panels. As described in Gerald Levine's recent work, The Clash of Trademarks and Domain Names on the Internet (Legal Corner Press, 2024), "The test is whether the name bears a similarity that may be confusing rather than confusion in the mind of a consumer as to the source of particular goods or services signified by a particular mark. Source related confusion is a factor "properly [to] be addressed at other stages of the analysis (such as factors that bear on a registrant's legitimate interest or bad faith").  

 

That test is adopted in this case. It avoids a subjective inquiry around what a given internet user might or might not believe when he or she sees a domain name and substitutes a more objective test. An important downside is that it substantially and materially departs from the plain language of the Policy, and persons not regularly involved in domain name litigation can easily believe that a subjective analysis is required. However, a substantial body of jurisprudence favoring the WIPO approach has developed over the years, and a summary reading of almost any UDRP decision will disclose the WIPO analysis. Persons not regularly involved in domain name litigation can access resource materials that fully explain the relevant test.  Complainant's mark is clearly recognizable in the domain name, and this renders the domain name confusingly similar for the purposes of Policy 4(a)(i).

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the GROQ mark, in which Complainant has substantial and demonstrated rights. 

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in a domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      Before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii)                      The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not associated or affiliated with Complainant and Complainant has not authorized Respondent to use its GROQ mark, (ii) it is not commonly known by the domain name, and (iii) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using it falsely to imply an association with Complainant and offer services similar to those offered by Complainant.  These allegations are addressed as follows:

 

Complainant states that Respondent is not affiliated with Complainant and that Complainant has not authorized or licensed it to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. That, coupled with the fact that Complainant has initiated this proceeding, demonstrates also that Complainant has not authorized or licensed Respondent to use its mark. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The information furnished to Forum by the registrar lists the named Respondent as the registrant of the domain name. Those names bear no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a name other than the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that the Respondent has not been commonly known by the domain name.

 

Complaint Annex 4 contains screenshots of the web pages resolving from the domain name. The site advertises the AI services of the site sponsor, named "Groqy."  There is no suggestion other than the similarity in names that it is associated or affiliated with Complainant, but neither is there any statement that it is not. The content is clearly directed toward business applications, with phrasing including "Supercharge your workflow," "Join the growing number of businesses leveraging Groqy's AI-powered workflow management," and a sliding price schedule with the levels Starter (perfect for small teams and businesses), Pro (ideal for growing businesses), and Enterprise (for large-scale operations). Respondent is selling services very similar to those offered by Complainant and in this sense is competing with Complainant, and by using a domain name so closely similar to Complainant's mark is suggesting an affiliation that does not exist. Neither of these qualifies as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).").

 

The evidence furnished by Complainant establishes the required prima facie case. It is incumbent upon Respondent to come forward with any evidence that it has rights or legitimate interests in the domain name.

 

To that end, Respondent argues that its domain name is materially different from Complainant's mark because it connotes a much different market than Complainant's mark, being less formidable or intimidating and suggesting lightheartedness. That may be true, but Complainant's mark is unique, unusual, whimsical, a coined term that has no meaning apart from its association with Complainant and its business. Respondent uses the mark as the core element of its domain name.  There is nothing to prevent an Internet user from believing that the domain name represents a different division of Complainant, offering the same AI services in a less formal and serious context. It still suggests an association with Complainant.

 

Respondent also argues that its business focus is on a different market segment and that it is neither passing off as nor competing with Complainant. Complainant did not furnish evidence of what its website looks like, but Respondent says that its site does not mimic or copy Complainant's site and those allegations are not disputed. Nevertheless, while Respondent claims that its site and business approach are "geared toward lighthearted personal productivity and entertainment," its site offers AI programs that are clearly oriented toward businesses, as discussed in greater detail above. It operates in the same general market segment as Complainant. This also falsely suggests an affiliation with Complainant that does not exist, and is evidence of passing off and competition.

 

For the reasons discussed above, the Panel finds that Respondent has no rights or legitimate interest in the domain name.

 

Registration and Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, as described in Policy ¶ 4(b)(iv). Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

Next, as discussed above, Respondent is using the domain name to pass off as Complainant or a division or affiliate of Complainant. This does not fit precisely within any of the scenarios listed in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in July 2024 (WHOIS printout submitted as Complaint Annex 3 shows creation date). As discussed above, Complainant's GROQ mark is unique, a coined term not found in any dictionary. It is not likely that Respondent conceived of its domain name on its own, without awareness of it from Complainant's use of its mark, and Respondent does not claim that it had no knowledge of the mark when it registered the domain name. Finally, in order to pass off as Complainant, Respondent had to have had actual knowledge of Complainant and its mark. Given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Complainant argues that Respondent's registration of the domain name with a privacy service is also evidence of bad faith. Many UDRP panels, especially in the years first following the adoption of the Policy, accepted this argument. More recently, however, in light of many instances of abuse of information gained from domain name registrations, many registrants, and indeed even registrars themselves, have opted to use privacy services. The WIPO Overview 3.0, at ¶ 3.6, acknowledges that there are recognized legitimate uses of privacy and proxy services, and in 2018 the European Union adopted its General Data Protection Regulation (GDPR) which potentially subjects entities around the world to stiff penalties in the interest of protecting personal identifying information of European Union citizens worldwide. Domain name registrars offer and recommend data privacy services to domain name registrants to protect their data, and domain name registrants are with increasing frequency using such services. In summary, there are any number of reasons a registrant might choose to use a privacy service that do not involve bad faith, and the use of such services cannot be taken ipso facto as evidence of bad faith. Rovio Entertainment Corporation v. baobin chi, Case No. D2021-0888 (WIPO May 26, 2021) (". . . the mere fact that the WhoIs details of a respondent are protected by a privacy filter alone cannot be sufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).").

 

Any inference of bad faith based upon the use of a privacy service would most likely involve some notion that the respondent did so in order to hinder or delay the filing of an administrative proceeding seeking transfer. The use of a privacy service may cause some minor delay after the administrative proceeding is commenced, to enable the provider to obtain previously screened registrant information from the registrar, but it does not impose any real deterrent to the filing of a case. UDRP cases are in the nature of in rem  proceedings. The Panel has jurisdiction over the domain name and can enter any orders contemplated by the relevant policy as to the domain name without personal jurisdiction over the respondent. In this case, there is no evidence to support any contention that Respondent's use of a privacy service to register the domain name was for any improper or unlawful purpose. Complainant's argument that it was in bad faith is not proven.

 

For the reasons first set forth above, the Panel finds that Respondent registered and is using domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).²

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <groqy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Charles A. Kuechenmeister, Panelist

November 21, 2024