WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SendGrid, Inc. v. Li Jin Dong (李金栋)
Case No. D2018-0734
1. The Parties
The Complainant is SendGrid, Inc. of Denver, Colorado, United States of America ("United States"), represented by Bryan Cave, LLP, United States.
The Respondent is Li Jin Dong (李金栋) of Chengdu, Sichuan, China.
2. The Domain Names and Registrar
The disputed domain names <aendgrid.com>, <dendgrid.com>, <sebdgrid.com>, <seendgrid.com>, <sendgeid.com>, <sendgreed.com>, <sendgri.com>, <sendgride.com>, <sendgriid.com>, <sendgrrid.com>, <sendgrud.com>, <sendgtid.com>, <sendhrid.com>, <senfgrid.com>, <senndgrid.com>, <srndgrid.com>, <ssendgrid.com>, and <swndgrid.com> 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 April 3, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2018, 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. On April 12, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the langue of the proceeding on the same day. The Respondent did not reply 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 April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 25, 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 is a publicly traded company headquartered in the United States, and is active in the marketing and IT industries. The Complainant mainly provides a cloud-based customer communications platform, facilitating electronic message delivery and email marketing campaigns. The Complainant provides these services for a large number of prominent multinational companies.
The Complainant owns a portfolio of trademark registrations for SENDGRID (word and device marks) in several jurisdictions, including in the Respondent's home jurisdiction China (through an International Registration under the Madrid Protocol), e.g., International Trademark Registration number 1077961, registered on May 2, 2011, and extended to inter alia China. The Complainant also owns the domain name, <sendgrid.com>, registered on April 20, 2009. Most relevant registered trademarks and domain names adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were all registered in the course of January 2018 (each of them either on January 8 or January 26).
5. Parties' Contentions
The Complainant essentially contends that the disputed domain names are confusingly similar to its prior trademarks for SENDGRID, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the online marketing services industry, and provides evidence of its marketing materials used on the Internet. The Complainant also provides reverse WhoIs search results, showing that the Respondent registered about 3,000 domain names, almost exclusively consisting of typographical misspellings of English words or recognizable English business or organization names. Moreover, the Complainant provides evidence that the disputed domain names are linked to active websites, offering competing online marketing services and further links to competing providers of such services, using the Complainant's trademarks, without any reference to a license, distribution agreement or other permission from the Complainant. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain names and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
The Complainant states that to the best of its knowledge, referring to other UDRP panel decisions involving the same Registrar, the Registration Agreement is in Chinese. Nevertheless, the Complainant requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant's request that the language of proceedings be English; the lack of response of the Respondent (the Panel notes that the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that all disputed domain names are linked to active webpages that are entirely and exclusively in English and that contain hyperlinks to other webpages that are also entirely in English, so that the Panel concludes that the Respondent has no problem with reading and writing in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are identical 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; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel's findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the sign SENDGRID based on its use and registration of the same as a trademark, commencing several years prior to the registration of the disputed domain names.
Moreover, as to confusing similarity, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states: "A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element". In this case, the Panel considers that the disputed domain names are clearly selected by intentionally misspelling the Complainant's trademark SENDGRID, each time incorporating such trademark in its entirety, except that a single character of such trademark is misspelled, added to or omitted. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant's trademarks and the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondent is not an authorized reseller, service provider or distributor, and is not making a legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant's trademark, the registration of the disputed domain names, which incorporate such trademark in its entirety, except for the intentional misspelling of one character in each domain name, is clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search would have made it clear to the Respondent that the Complainant owns trademarks in SENDGRID and uses it extensively. In the Panel's view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the websites linked to the disputed domain names are currently used as platforms offering competing marketing services, also containing what is presumed to be pay-per-click hyperlinks to competitors of the Complainant. Such use of the disputed domain names is clearly intended to divert consumers to the disputed domain names, where unauthorized services are advertised and consumers are diverted to the websites of competitors of the Complainant. Moreover, according to reverse WhoIs results submitted by the Complainant, the Respondent registered about 3,000 domain names, almost exclusively consisting of typographical misspellings of English words or recognizable business or organization names in English. Both these results, and the facts of this case (18 domain name registrations exclusively consisting of the Complainant's intentionally misspelled trademark) lead the Panel to conclude that the Respondent is an opportunistic domain name squatter, using the disputed domain names in bad faith to take unfair advantage of the Complainant's trademarks. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under the Policy.
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, <aendgrid.com>, <dendgrid.com>, <sebdgrid.com>, <seendgrid.com>, <sendgeid.com>, <sendgreed.com>, <sendgri.com>, <sendgride.com>, <sendgriid.com>, <sendgrrid.com>, <sendgrud.com>, <sendgtid.com>, <sendhrid.com>, <senfgrid.com>, <senndgrid.com>, <srndgrid.com>, <ssendgrid.com>, and <swndgrid.com>, be transferred to the Complainant.
Deanna Wong Wai Man
Date: June 6, 2018