ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chegg, Inc. v. u6645 Ni (ni nevel) Case No. DAI2024-0039 1. The Parties The Complainant is Chegg, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States. The Respondent is u6645 Ni (ni nevel), China. 2. The Domain Name and Registrar The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2024. On May 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which comprised a privacy service. On June 3, 2024, the Center transmitted by email to the provider of the privacy service, GoDaddy.com, LLC, a request for underlying registrant information, to which GoDaddy.com, LLC replied on June 3, 2024 with its verification response disclosing the underlying registrant and contact information for the disputed domain name, which differed from the named Respondent (Redacted | EU Registrar, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 9, 2024. The Center verified that the Complaint together with the amended 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 June 10, 2024. On June 10, 2024, the Respondent sent an informal email expressing its willingness to settle the dispute. Following the Complainant’s request on
page 2 June 14, 2024, the proceeding was suspended for 30 days. The Center did not hear from the Parties with confirmation that they had reached an agreement or a request for an extension of the suspension. Therefore, the proceeding was reinstituted as of July 16, 2024. The Response due date was accordingly July 28, 2024. The Response was filed with the Center on July 21, 2024. The Center appointed Adam Taylor as the sole panelist in this matter on August 5, 2024. 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. On August 7, 2024, the Panel issued Procedural Order No. 1 inviting the Complainant to amend the Registrar information and the Mutual Jurisdiction sections of the Complaint if the Complainant deemed it appropriate to do so in light of new information which had come to light regarding the location of the Registrar. The Complainant duly filed a second amended Complaint on August 9, 2024. 4. Factual Background Since it was founded in 2005, the Complainant has operated a student learning platform under the mark CHEGG including via a website at “www.chegg.com”. The Complainant’s annual turnover is currently in excess of USD 700 million. The Complainant owns a number of registered trade marks for CHEGG including United States trade mark No. 4,021,925, registered on September 6, 2011, in classes 9, 35, and 41. In April 2023, the Complainant announced a new service, initially called CHEGGMATE, which it described as a new AI-enhanced learning service. The disputed domain name was registered on November 19, 2023. As of May 14, 2024, the disputed domain name resolved to an orange and white-themed website with a “CheggMate” logo and the heading: “CheggMate AI – The Ultimate All-in-One Homework AI Agent”. The homepage featured a large user input box. The footer of the website included the disclaimer: “Not affiliated with Chegg.” 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name was registered because of its confusing similarity with the Complainant’s CHEGG marks and with the term “Cheggmate”, the name of Complainant’s AI product initially launched with in April 2023, and that the disputed domain name is being fraudulently used by the Respondent including for a website impersonating the Complainant, in order to confuse unwitting customers into subscribing to the Respondent’s illicit subscription services. B. Respondent The Respondent contends that the Complainant has not satisfied the elements required under the Policy for a transfer of the disputed domain name.
page 3 Notably, the Respondent contends that: - the Complainant does not own a registered trade mark for “Cheggmate”, which is crucial for satisfying the first element of the Policy and therefore the Complainant cannot establish “confusing similarity”; - the disputed domain name does not infringe any trade mark rights as it incorporates a term (“mate”) that is not trade-marked by the Complainant; - the disputed domain name is used to provide AI-powered creative tools under the brand “Jenni APP”; - the disputed domain name is distinctly different from “chegg.com” in both purpose and appearance, and the Respondent has clearly differentiated its branding, website design and services from those of the Complainant to avoid any potential confusion; - the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services, namely unique AI-powered tools “for enhancing Jenniography, art, education and design”; - the Respondent has “already applied” a “not affiliated with Chegg” status and has made this clear on its website, thereby demonstrating the Respondent’s commitment to avoiding any confusion regarding affiliation; - the Respondent’s business “Jenni APP” is commonly known in its industry by reference to the disputed domain name, around which the Respondent has established a brand identity, as evidenced by the Respondent’s marketing materials, customer testimonials, and business registrations; - the Respondent registered the disputed domain name in good faith purely to support its own business objectives under the brand “Jenni APP” and without knowledge of any purported Complainant trade mark rights in the term “Cheggmate”; - the disputed domain name predates any known use of “Cheggmate” by the Complainant for its AI product; - there is no evidence to suggest that the Respondent registered the disputed domain name to impersonate the Complainant or deceive users into believing that the Respondent was affiliated with the Complainant; and - the Respondent seeks a finding of reverse domain name hijacking (“RDNH”) given the Complainant’s lack of trade mark rights in “Cheggmate” together with the Respondent’s legitimate use of the disputed domain name. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trade mark, namely CHEGG, for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Here, the entirety of the mark CHEGG is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
page 4 Although the addition of other terms (here, “mate”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Respondent is wrong to claim that the Complainant requires a trade mark for “Cheggmate”. The Complainant does not have to establish that its trade mark is identical to the disputed domain name; for the purposes of the first element it suffices if the trade mark is “confusingly similar” to the disputed domain name, which it is for the reasons explained above. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognised that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. As to paragraph 4(c)(i) of the Policy, and as further discussed in section 6C below, the Panel considers that the Respondent has used the disputed domain name to impersonate the Complainant. Such use of the disputed domain name could not be said to be bona fide. As to paragraph 4(c)(ii) of the Policy, the Respondent has failed to produce evidence to support its claim that it has become commonly known in its industry by reference to the disputed domain name – at least in any legitimate sense. See further under section 6C below. Nor is there any evidence that paragraph 4(c)(iii) of the Policy is relevant in the circumstances of this case. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel considers that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark in accordance with paragraph 4(b)(iv) of the Policy.
page 5 Not only does the disputed domain name reflect the Complainant’s distinctive CHEGG mark, but the Respondent has used the disputed domain name for a website that operates in the same industry as the Complainant (homework solutions for students) and effectively impersonates the Complainant including by prominent use of the Complainant’s mark as well as by copying aspects of the Complainant’s website including its orange/white theme and large user input box on the home page. In the Panel’s view, the Respondent plainly cannot rely on the disclaimer to overcome the above-noted clear infringements and, moreover, the disclaimer is far from prominent and unlikely to be seen by most users of the site. Furthermore, the disclaimer gives no information about the operator of the website. The Panel finds that the Respondent has not undertaken sufficient steps to avoid causing confusion to Internet users. In any case, the mere existence of a disclaimer cannot cure bad faith where, as here, the overall circumstances point to bad faith. Indeed, the Panel considers that the Respondent’s use of a disclaimer amounts to an admission that users may be confused. WIPO Overview 3.0, section 3.7. The Panel rejects the following contentions by the Respondent for the reasons set out below: - That the disputed domain name is “distinctly different” from the Complainant’s mark. On the contrary, the disputed domain name consists of the Complainant’s distinctive CHEGG mark plus the word “mate” which the Complainant originally adopted to supplement its mark in connection with a proposed AI offering. While the Complainant apparently decided not to pursue that service, the fact that the Respondent thereafter adopted the same highly distinctive combined term to denote its own alleged AI offering strongly indicates that the Respondent registered the disputed domain name with the Complainant firmly in mind. - That the Respondent used the disputed domain name to provide AI tools under the brand “Jenni APP”. The Respondent has provided no evidence of use of this brand in conjunction with the disputed domain name. In any case, the Respondent’s claim raises the question as to why the Respondent would have selected the disputed domain name for such a service, rather than a domain name reflecting “Jenni APP”. In fact the Respondent has at no point explained exactly why it chose the disputed domain name. - That the Respondent has clearly differentiated its branding, website design and services from those of the Complainant. As discussed above, the evidence strongly suggests otherwise. - That the Respondent has “applied” a “not affiliated with Chegg” status. As the Panel has explained above that the Respondent’s subtle disclaimer along these lines in the footer is far from sufficient to prevent user confusion and, on the contrary, it is incriminating. The Panel finds that the Complainant has established the third element of the Policy. The Respondent’s claim of RDNH is therefore groundless. 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 the Complainant. /Adam Taylor/ Adam Taylor Sole Panelist Date: August 19, 2024
Full & Egal Universal Law Academy