The Complainant is SendGrid, Inc. of Denver, Colorado, United States of America (“USA” or “US”), represented by Bryan Cave, LLP, USA.
The Respondent is Li Jin Dong of Jinan, Shandong, China. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2018. On March 19, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On March 20, 2018, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 21, 2018, the Center sent an e-mail in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on April 26, 2018. 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 provides an integrated cloud-based communications platform, providing electronic message delivery and e-mail marketing campaign services for its clients under the brand Sendgrid. The Complainant’s customers include Airbnb, Padora, eBay, Spotify, Uber, Walmart and Costco. It was founded in 2009 and now has over 63,000 paying clients. Based in Colorado, United States of America, it launched an initial public offering in November 2017 on the New York Stock Exchange at which it was valued at over USD 750 million. Its revenue in 2017 was more than USD 110 million, which was an increase of 40% over revenues in 2016.
The Complainant has trade mark registrations for SENDGRID (the “Trade Mark”) in many jurisdictions including the USA and China, where the Respondent is based. The earliest trade mark registration submitted in evidence dates back to 2011 (US registration no. 3988652, registered on July 5, 2011). The Complainant owns and operates a website connected to the domain name .
The Respondent, located in Shandong, China registered the Domain Names on January 26, 2018. All three Domain Names were connected to pay-per-click websites which had almost identical content (the “Websites”). The links were to companies which offered e-mail delivery services or marketing campaign services either similar to or in direct competition with the Complainant. The Websites all bore the brand Sendgird, a misspelling of the Trade Mark, and purported to offer e-mail marketing and delivery services. The Websites do not appear to be active at the time of the writing of the decision. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not respond to the Complaint. 6. Discussion and Findings 6.1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. 6.2 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English and that no prejudice will result from conducting it in English. The Complainant contends that as a US based company which does not communicate in Chinese, conducting the proceeding in Chinese will be unduly disadvantageous in terms of costs and the delay that would be caused. The Respondent has demonstrated an ability to understand English as the Domain Names, the Websites and the websites connected to the pay-per-click links on the Websites are in English.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 6.3. Substantive Analysis A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Names are misspellings of the Trade Mark, typical of typosquatting cases. The Domain Name has an extra “d” after the first element of the mark “send”; the Domain Name has an extra “g” before the second element of the mark, “grid”; the Domain Name has an extra “d” at the end of the second element of the mark, “grid”. The addition of one letter to each of the Domain Names does not do anything to minimise the risk of confusion.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise permitted the Respondent to use the Trade Mark or register the Domain Names or any domain names incorporating the Trade Mark or names confusingly similar to the Trade Mark. The Respondent is not commonly known by the Domain Names and the use of the Domain Names does not fall within any of the above categories which would grant him rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Names given the reputation of the Trade Mark. It is implausible that he was unaware of the Complainant when he registered the Domain Names especially since all three Domain Names are deliberate misspellings of the Trade Mark and have no other meaning apart from being misspellings of the Trade Mark. Further the Websites and the links on the Websites are connected to services which are similar or in competition with the Complainant’s services under the Trade Mark.
In WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that the Trade Mark has a reputation, the Domain Names are misspellings of the Trade Mark and there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in Section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites were pay-per-click sites which would have been of commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Names into their browsers, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. It is also highly likely that the users whilst doing this may mistype the Trade Mark. The Domain Names are extremely likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names.
The Respondent employed the fame of the Trade Mark to mislead users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. The fact that the websites do not appear to be active at the time of the writing of the decision does not change the Panel’s findings. 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 Domain Names, , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: May 17, 2018
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