Complainant is Duolingo, Inc. of Pittsburgh, Pennsylvania, United States of America (“United States”) represented by Latham & Watkins LLP, United States.
Respondent is George Brassell of Stanford, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2016. On October 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 24, 2016. In accordance with the Rules, paragraph 5, the due date for a Response was November 13, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 14, 2016.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 22, 2016. 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
Complainant Duolingo, Inc. is a Delaware corporation located in Pittsburgh, Pennsylvania, United States. Respondent is an individual with an address in Stanford, California, United States. Complainant owns several trademark registrations and applications in countries such as the United States, China, Japan and Canada for the mark DUOLINGO in connection with, primarily, downloadable software for mobile phones for learning foreign languages. Complainant has submitted as Annexes 3 through 6 representative copies of its trademark registrations for the DUOLINGO mark, the earliest of which dates back to August 19, 2014 (United States Patent and Trademark Office (“USPTO”) trademark registration number 4588574). Complainant also owns a number of domain names based on the DUOLINGO mark, including , which was registered in or about January 2010.
The disputed domain name was registered on or about June 3, 2016. Currently, the disputed domain name resolves to a blog-type website with articles related to foreign language learning. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the DUOLINGO mark based on Complainant’s ownership of numerous United States and foreign registrations and applications for the DUOLINGO mark, and because Complainant has registered numerous domain names consisting of or incorporating the DUOLINGO mark.
Complainant contends that the disputed domain name is identical and/or confusingly similar to Complainant’s DUOLINGO mark because it contains the DUOLINGO mark in its entirety and because the addition of the word “Chinese” merely suggests that the disputed domain name is an official site for a DUOLINGO Chinese language learning product and/or that Respondent is an official Chinese dealer of Complainant’s foreign language learning products.
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as
(i) Respondent has no authorization, license or permission to use Complainant’s DUOLINGO mark;
(ii) Respondent is not commonly known by the disputed domain name; and (iii) Respondent is using the disputed domain name to misleadingly suggest an affiliation with Complainant in order to sell competing foreign language learning products.
Lastly, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith as Respondent registered in the disputed domain name the DUOLINGO mark and thus knew or should have known of Complainant’s rights in the DUOLINGO mark in view of the registration of the DUOLINGO mark in the United States and other countries. Complainant also maintains that Respondent is acting in bad faith because Respondent is using the disputed domain name for profit with a website replete with advertisements for foreign language learning products of third parties that compete with those of Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1. Here, although Complainant has put in virtually no evidence of Complainant’s use of the DUOLINGO mark, Complainant has nevertheless provided evidence that it owns a trademark registration for the DUOLINGO mark in the United States and elsewhere since as early as August 2014.
While Complainant has established rights in the DUOLINGO mark, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar with Complainant’s mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The disputed domain name is confusingly similar to the DUOLINGO mark as it incorporates the DUOLINGO mark in its entirety. The addition of the generic term “Chinese” at the tail of the disputed domain name does not diminish the confusing similarity and, in fact, heightens the confusion by suggesting that the disputed domain name is somehow related to Complainant or to a Chinese language learning product under the DUOLINGO mark. The Panel therefore finds that Complainant has satisfied the requirements of 4(a)(i) in establishing its rights in the DUOLINGO mark and in showing that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Although Respondent has defaulted and not submitted a response, the Panel must nevertheless assess the sufficiency of the evidence provided by Complainant to determine whether Complainant has shown by a preponderance of the evidence that Respondent does not possess any rights or legitimate interests in the disputed domain name. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,WIPO Case No. D2003-0185.
While the record before the Panel is very limited and Complainant has presented virtually no evidence regarding its own use of DUOLINGO (despite claiming extensive use of DUOLINGO in the Complaint), it is questionable, in light of Respondent’s failure to submit a response, whether Respondent has any rights or a legitimate interest in the disputed domain name. Respondent does not appear to be commonly known by the DUOLINGO name and mark. In addition, a review of the website posted at the disputed domain name suggests that Respondent is well aware of Complainant and its foreign language learning products as the website includes numerous references to “Duolingo-style Chinese learning”. Indeed, Respondent’s website includes alleged articles that promote competing mobile applications for learning foreign languages such as Chinese, as well as links to competing mobile application language learning products that can be downloaded by consumers.
Such use of the disputed domain name by Respondent to promote the sale, download or distribution of competing mobile applications for foreign language learning is not a legitimate or bona fide use, but is clearly meant to capitalize on an association between Complainant’s DUOLINGO mark and foreign language learning products. The Panel thus concludes that none of the circumstances of paragraph 4(c) of the Policy are evident in this case and that Complainant prevails on this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the present case, Respondent has registered a domain name that fully incorporates Complainant’s DUOLINGO mark in conjunction with the common word “Chinese” for use with a website that promotes the sale, download or distribution of competing mobile application language learning products for Chinese and other foreign languages. Such combination creates a likelihood of confusion by suggesting to consumers that the disputed domain name relates to Complainant or to a Chinese language version of Complainant’s Duolingo products. Given Respondent’s actions and failure to provide a response in this proceeding, the Panel can only infer that Respondent’s actions have been undertaken in bad faith and for purposes of capitalizing on the association between the disputed domain name and Complainant’s DUOLINGO mark for the sale of competing mobile applications products for foreign language learning. Accordingly, the Panel finds that Complainant succeeds under this element 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 name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: November 25, 2016
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