The Complainant is Grammarly, Inc. of San Francisco, California, United States of America (“United States”), represented GTC Law Group LLP & Affiliates, United States.
The Respondent is Hamidreza Dehghan Manshadi of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2018. On January 11, 2018, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2018, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on January 12, 2018.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 proceedings commenced on January 17, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2018. On February 7, 2018, the Center notified the Respondent’s default.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 22, 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, Grammarly Inc., is a global provider of communication assistance products and services with seven million daily users all over the world, including the Islamic Republic of Iran.
The Complainant is the holder of trademark registrations across various jurisdictions for the word mark GRAMMARLY. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- GRAMMARLY, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 4157748 on June 12, 2012 in classes 9, 41 and 42;
- GRAMMARLY, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 010755403 on September 9, 2012 in classes 9, 41 and 42; and
- GRAMMARLY, word mark registered with the State Intellectual Property Office of the People’s Republic of China (“SIPO”) under No. 10787704 on June 28, 2013 in class 42.
The Complainant uses its GRAMMARLY trademark in connection with its international digital communication business.
The Disputed Domain Name resolves to a website which is an almost exact copy of the Complainant’s website, apart from it being written in Persian. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and was not authorized by the Complainant to operate an almost identical website offering identical services. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
3. The Disputed Domain Name has been registered or is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s GRAMMARLY trademark has been registered and used.
The Disputed Domain Name reproduces the Complainant’s trademark GRAMMARLY in its entirety. It is well established that the applicable country-code Top Level Domain (“TLD”) suffix in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).1
Therefore, the Disputed Domain Name is identical to the Complainant’s GRAMMARLY trademark. Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is an established consensus view of previous UDRP panels that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent has essentially copied the Complainant’s website and offered the Complainant’s services without its authorization. Additionally, by also using the Complainant’s logo and GRAMMARLY trademark on social media accounts linked to the website to which the Disputed Domain Name resolves, the Respondent clearly intended to confuse Internet users as to its affiliation with the Complainant. This is further evidenced by the numerous inquiries the Complainant received from Internet users regarding the validity of the website connected to the Disputed Domain Name. Accordingly, the Panel reasonably considers that the Respondent sought to use the Disputed Domain Name to mislead Internet users to believing it to be associated with the Complainant, presumably for commercial gain.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered or Used in Bad Faith
Under the Policy, the Complainant must prove on the balance of probabilities that the Disputed Domain Name was registered in bad faith or that it is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 the web site or location or of a product or service on the web site or location.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when he registered the Disputed Domain Name. The Disputed Domain Name is identical to the Complainant’s GRAMMARLY trademark. The website connected to the Disputed Domain Name is an almost exact copy of the Complainant’s website, apart from it being translated in Persian. As a result, it is undisputable that the Respondent had the Complainant in mind when registering the Disputed Domain Name. This conclusion is also supported by the fact that the Respondent knowingly abused the Complainant’s affiliate program to establish a link to the legitimate website of the Complainant.
The Complainant has demonstrated the importance of its intellectual property by registering the GRAMMARLY trademark in numerous countries and a domain name associated with its business (which contains the trademark). The Respondent is using the Complainant’s trademark and logos, text and images of the Complainant’s website without authorization to offer the Complainant’s services. By copying the Complainant’s website, the Respondent intentionally aims to attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products advertised on the website (See Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan,WIPO Case No. D2014-2227).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: February 23, 2018
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel finds UDRP precedent to be relevant to this case.
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