The Complainant is Go Daddy Operating Company, LLC, of Scottsdale, Arizona, United States of America ("United States"), represented internally.
The Respondent is Wu Yanmei of Shaoguan, Guangdong, People's Republic of China ("China"). 2. The Domain Names and Registrar
The disputed domain names and are registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 4, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 5, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 9, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 12, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is Go Daddy Operating Company, LLC, of Scottsdale, Arizona, United States of America, the world's largest domain name registrar and web hosting provider, with over 12 million global customers and over 59 million domain names under management.
The Complainant is the owner of numerous trademark registrations for the mark GO DADDY around the world. For example: United States Trademark No. 2558989 registered date April 9, 2002; United States Trademark No. 3669373 dated August, 18, 2009; Chinese trademark registration No. 5142287, dated August 21. 2009, and more. As well, the Complainant own several trademark registrations for the mark GODADDY.COM, for example: United States Trademark No. 2945200 dated August, 26, 2005; and more.
Through extensive and prolonged use and advertising around the world, the GO DADDY trademark has generated vast good will.
The Complainant also developed a formidable presence on the Internet and is the owner of multiple domain names, which contain the name "GODADDY", For example: , and more.
The disputed domain names and were registered on June 3, 2014.
The disputed domain names currently resolve to non-active websites. According to the Complainant's evidence and unrebutted conditions, the disputed domain names are used to perpetrate a "phishing" scheme targeting the Complainant's customers.
The Complainant sent the Respondent a request to stop the infringing use of its trademarks, to which no response was received. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to its trademarks.
The Complainant further argues that adding "service" or "services" to GO DADDY results in a minor variation. The Complainant further argues that the disputed domain names create a confusing similarity to the trademarks.
The Complainant further argues that when customers receive an email from someone claiming to be the Complainant and provide a link containing and/or , they will undoubtedly be confused and deceived as to the source, sponsorship, affiliation and endorsement of the Respondent's directly competing domain name and link.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further argues that its first used the GO DADDY trademark in commerce was as early as April 19, 1999, more than 16 years prior to the Respondent's registration of the disputed domain names.
The Complainant further argues that in early December, 2014, phishing emails were sent to the Complainant's customers, requiring the customers to click a link to verify their WhoIs contact information. The links were to the disputed domain names. The Complainant further argues that the purpose of the phishing scheme appeared to be to hijack the domain names and transfer them away to another domain registrar.
The Complainant further argues that after discovering the fraudulent use of the disputed domain names, it notified the Respondent it has been infringing one or more of its trademarks. The Respondent failed to provide a response. The Complainant further argues that it requested assistance from the Registrar to take action against this phishing attempt, but received no reply.
The Complainant further argues that it has given the Respondent no authorization to use its GO DADDY trademarks and there exists no connection between the parties. The Complainant further contends that the Respondent has no right or legitimate interest in the disputed domain names.
The Complainant further argues that the disputed domain names were registered and are being used in bad faith. The Complainant argues that registration of the disputed domain names for the purpose of engaging in a phishing scheme demonstrates the Respondent's intent to disrupt the business of the Complainant.
The Complainant further argues that the use of the disputed domain names to intentionally attract users, for commercial gain to the Respondent's phishing link, by creating a likelihood of confusion with the Complainant's trademarks, is clear evidence of bad faith.
The Complainant further argues that the Respondent's bad faith is also evidenced by the lack of any disclaimer disclosing the Respondent's relationship to the Complainant, and its failure to meaningfully respond to the Complainant's notices.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language
of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain names is Chinese.
The Complainant requested that the language of proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceeding:
a) The disputed domain names consists of Latin letters, rather than Chinese letters;
b) The disputed domain names consists of English words;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings;
d) The phishing emails with links to the disputed domain names are in English.
Upon considering the above, the Panel decides to grant the Complainant's request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the mark GO DADDY around the world. For example: United States Trademark No. 2558989 registered date April 9, 2002; United States Trademark No. 3669373 dated August, 18, 2009; Chinese trademark registration No. 5142287, dated August 21. 2009, and more. As well, the Complainant own several trademark registrations for the mark GODADDY.COM, for example: United States Trademark No. 2945200 dated August, 3, 2005; and more.
The disputed domain names integrates the Complainant's trademark GO DADDY in them entirety, as a dominant element, with the additional words "service" and "services", which do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant's well-known GO DADDY trademark and refer to the Complainant's business offered under the mark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Also, the addition of a generic top-level domain (gTLD) ".com" to the disputed domain names does not avoid confusing similarity, and moreover, the Panel has considered the Complainant's registered and well-known trademark GODADDY.COM which includes the gLTD ".com" as a part of the mark (F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its GO DADDY trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names. Thus, the Respondent did not rebut the Complainant's prima facie case.
Moreover, the Respondent's apparent use of the disputed domain names to commit fraud is compelling evidence to the Panel that the Respondent lacks any legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the GO DADDY trademark since the year 2002. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's vast good will. The Panel cites the following with approval: "The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith" (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Indeed and based on evidence provided by the Complainant, the use made by the Respondent of the disputed domain names as part of a phishing scheme intending to hijack the Complainant's customer's information cannot be considered as fair use "when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests 'opportunistic' bad faith". (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain names also include the words "service" and "services", which reflects and indicates the Complainant's services business. This is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making of its GO DADDY trademark, and indicates that the Respondent's primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the Complainant's trademark registration amounts to bad faith".
Furthermore, the disputed domain names are confusingly similar to the Complainant's famous trademarks. Previous UDRP panels ruled, in the context of commercial websites as contrasted with noncommercial fair use only websites that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic to a commercial website by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. The circumstances of this case, and the evidence shows that the Respondent have been sending emails to the Complainant's customers as part of a phishing scheme while using links of the disputed domain names which comprises is fully the Complainant GO DADDY trademark, is further evidence of bad faith registration and use of the disputed domain names.
The Respondent's lack of response to the Complainant's requests, is a further indication of the Respondent's bad faith registration and use of the disputed domain names.
In addition, the evidence shows that the Respondent has not been using the disputed domain names. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use. (WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the use of the Complainant's trademark in the disputed domain names and the similarity between the disputed domain names and the Complainant's mark, the use the Respondent made in connection with the phishing scheme and its failure to answer the to the Complainant's requests, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: March 25, 2015
Full & Egal Universal Law Academy