The Complainant is Granicus, LLC, United States of America (the “United States”), represented by Kirkland & Ellis, United States.
The Respondent is Withheld for Privacy Purposes, Iceland / Amtim salim, Morocco.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021, including the disputed domain name and the domain name
The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. A short and very informal email was filed with the Center on January 13, 2022.
The Center appointed Andrea Mondini as the sole panelist in this matter on February 9, 2022. 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 BackgroundThe Complainant provides cloud-based solutions to over 5,000 public sector organizations.
The Complainant owns, among other trademarks, the United States trademark GOVDELIVERY (Registration No. 5,911,881), registered on November 19, 2019.
The Complainant also holds several domain names, including the domain name
The disputed domain name was registered on July 24, 2021.
The disputed domain name resolves to a registrar’s parking page with pay-per-click links.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
The dominant portion of the disputed domain name is identical to the GOVDELIVERY trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the top-level domain “.xyz” does not avoid confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use its trademark and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods and services.
The disputed domain name was registered and is being used in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark GOVDELIVERY at the time it registered the disputed domain name, and because the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith.
B. RespondentIn an informal email, the Respondent stated: “This is my domain. I bought it from Namecheap. I don’t know if there is a problem or not.”
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and
(ii) the 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.
The Panel is satisfied that the Complainant owns a trademark registration for its GOVDELIVERY trademark.
The Panel notes that the disputed domain name incorporates the GOVDELIVERY trademark in its entirety. The top level domain (here “.xyz”) is viewed as a standard registration requirement and as such is disregarded under the confusing similarity test under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
For these reasons, the Panel concludes that the disputed domain name is identical to the Complainant’s mark GOVDELIVERY.
The first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate InterestsThe Complainant states it has not authorized the Respondent to use the trademark GOVDELIVERY and that before notice of the dispute, there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name. The Panel does not see any contrary evidence from the record.
In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, which is identical to the Complainant’s trademark, carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The second element of paragraph 4(a) of the Policy has been met.
C. Registered and Used in Bad FaithThe Complainant has shown to the satisfaction of the Panel that its GOVDELIVERY trademark has been extensively used.
In the view of the Panel, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.
The disputed domain name resolves to a registrar’s parking page with PPC links generating revenue. Accordingly, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark.
Furthermore, the Panel notes the reputation of the Complainant’s trademark, and the Respondent’s failure to submit a substantive response or provide any evidence of actual or contemplated good-faith use.
The Panel thus finds that the disputed domain name was registered and is being used in bad faith.
The third element of paragraph 4(a) of the Policy has been met.
7. DecisionFor 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
Andrea Mondini
Sole Panelist
Date: February 22, 2022