WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chegg, Inc. v. Ahmad Bany Hani
Case No. D2017-1710
1. The Parties
The Complainant is Chegg, Inc. of Santa Clara, California, United States of America ("United States"), represented by Foley & Lardner LLP, United States.
The Respondent is Ahmad Bany Hani of Iribid, Jordan.
2. The Domain Names and Registrar
The disputed domain names <cheggfuck.com>, <cheggfuck.info>, <cheggfuck.net> and <cheggfuck.org> (the "Disputed Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 6, 2017. On September 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 12, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on October 31, 2017. 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 is a United States corporation. Its business is the provision of on-line education and tuition. It offers a wide variety of tutoring, online textbook, study and related educational services to high school and university students. In particular, it offers a "Chegg Tutors" service, which provides online access to a variety of qualified, vetted tutors available to help students with their homework, coursework and study projects, in a wide array of subject areas. It markets its services via its website at "www.chegg.com".
The Complainant's business dates back to at least 2003. It owns a number of registered trademarks for the word CHEGG including for example United States Trademark Registration No. 5,058,869, registered on October 11, 2016.
The Disputed Domain Names were each registered by the Respondent on August 3, 2017.
At the time the Complaint was filed <cheggfuck.com> was linked to a rudimentary website which invites visitors to sign up by providing an email address. It is not clear to the Panel what the website in question suggests will be provided to anyone who signs up. The existence of this website has been promoted on messages posted on message boards associated with the Complainant and its business. The other Disputed Domain Names are inactive and resolve to holding pages provided by the Registrar.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows.
Each of the Disputed Domain Names is similar to the CHEGG trademark. The Disputed Domain Names, each with the wording "cheggfuck" coupled with a generic Top-Level Domain ("gTLD")- one of ".com", ".net", ".org", or ".info" - are each likely to cause consumers to mistakenly believe that the existence of each Disputed Domain Name is authorized by, or that the owner of each Disputed Domain Name is otherwise affiliated with the Complainant.
The Complainant says the Respondent has no rights or legitimate interests in the term "chegg". There is no commercial meaning associated with "chegg" other than in relation to the Complainant and its business.
The Respondent is intentionally trading on the well-known mark of the Complainant, in order to lure Internet users to a website unrelated to the Complainant and this cannot and does not constitute a bona fide offering of goods or services. In particular the Respondent's use of the Disputed Domain Name <cheggfuck.com> that is confusingly similar to Complainant's CHEGG trademark in conjunction with a website that promises future employment and earnings greater than those offered by Complainant, particularly when such future employment and earnings are advertised to Complainant's own tutors and customers, is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to the Policy. In consequence the Complainant alleges that the Disputed Domain Names are registered and are being used in bad faith.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Names are identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark CHEGG.
The term "chegg" does not have any meaning in English so far as the Panel is aware. The word "fuck" is a common sexually related expletive in English. Adding such an expletive to a distinctive word does not, in the opinion of the Panel, avoid a finding of confusing similarity – the dominant distinctive element of the combined term remains the term "chegg". This is well established – see for example Koninklijke Philips Electronics N.V v. Selling Domains Best, WIPO Case No. D2002-1041 (<fuckphilips.com> confusingly similar to PHILIPS).
It is also well established that the gTLD, in this case ".com, ".org", ".net" and ".info", does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds "chegg" is on the evidence before the Panel a term with no other commercial meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the CHEGG trademark. The Complainant has prior rights in the CHEGG trademark which precede the Respondent's registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the CHEGG trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the CHEGG trademark, and the similar nature of the Disputed Domain Names to the CHEGG trademark, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Names lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel regards the Respondent's motives as somewhat obscure. It is not convinced the Complainant is correct to say that the addition of the word "fuck" to the term "chegg" leads to a domain name which consumers would naturally assume was authorised or connected to the Complainant, given the sexually explicit and generally rather derogatory and/or abusive nature of the word "fuck". It is also not clear to the Panel that the Complainant is correct to say that Respondent is offering potential employment services via the website which was at the Disputed Domain Name <cheggfuck.com>. The site invites visitors to sign up but simply says "welcome to cheggfuck. You will be the first one work with us, you will be in our first ampition [sic] when the site will be online after one month". The Panel has no idea what this means.
However the Panel does not consider this matters, given that "chegg" has no other meaning save in relation to the Complainant and the Respondent is clearly targeting the Complainant as evidenced by the posting of links to the Respondent's website on the Complainant's message boards. The Panel agrees with the Complainant that the combining of the Complainant's trademark with a sexually explicit term may give rise to tarnishment of the Complainant's trademark and itself raises at least an inference of bad faith registration and use - see for example V&S Vin&Sprit AB v. Coreswood Limited, WIPO Case No. D2006-0594 (finding respondent had no rights or legitimate interests in the domain name <absolut-escort.com> because the use of complainant's ABSOLUT mark is "not done for any other apparent reason than creating a likelihood of confusion with the [c]omplainant's well-known mark […]" and the use of the mark "along with a word with a sexual connotation leading to a website of a sexual nature may also lead to tarnishing the mark"). The identified examples of evidence of bad faith registration and use found at paragraph 4(b) of the Policy are non-exhaustive and the Panel concludes that even if the Respondent's conduct is not clearly within any of those examples at the very least it is sufficient to raise an inference of bad faith registration and use.
Given that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have the Panel concludes that none exists.
As a result the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <cheggfuck.com>, <cheggfuck.info>, <cheggfuck.net> and <cheggfuck.org> be transferred to the Complainant.
Nick J. Gardner
Date: November 7, 2017