WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grammarly, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Grammarly Writers Inc. / Mark Njiru, idealwriters.co
Case No. D2018-1004
1. The Parties
Complainant is Grammarly, Inc. of San Francisco, California, United States of America (“United States”), represented by GTC Law Group LLP & Affiliates, United States.
Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Grammarly Writers Inc. of Fort Lee, New Jersey, United States / Mark Njiru, idealwriters.co of Fairfield, Philadelphia, United States.
2. The Domain Name and Registrar
The disputed domain name <grammarlywriters.com> (“the Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on May 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. That same day, the Center received an email communication from Respondents. Complainant filed an amended Complaint on May 16, 2018. On May 16, 2018, the Center received another email communication from Respondents.
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 Respondents of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. On June 8, 2018, the Center informed the Parties that it did not receive any formal Response by the specified Response due date and it would proceed with the Panel appointment shortly.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 14, 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
Complainant is a provider of products and services that help people write more effectively (e.g., drafting, editing, proofreading). It owns trademark registrations for the mark GRAMMARLY around the world, including United States Registration No. 4,157,748 (registered June 12, 2012); Chinese Registration No. 10787705 (registered July 14, 2013); and Ukraine Registration No. 182170 (February 25, 2014) (“the GRAMMARLY Mark” or “the Mark”). Complainant also has an Internet presence through its ownership and operation of a website bearing the GRAMMARLY Mark located at “www.grammarly.com”.
Respondent registered the Domain Name on December 10, 2017. It has been using the Domain Name with a website that provides writing and proofreading services, among others.
Complainant sent Respondents a cease and desist letter in March 2018. That was followed by an exchange of correspondence between Complainant and Respondents that attempted to resolve the issues here.
5. Parties’ Contentions
Complainant’s long-standing use of the GRAMMARLY Mark has resulted in extensive goodwill in the Mark and the public has come to associate the Mark with software and services that originate from, or are sponsored by or otherwise associated with or approved by Complainant.
The Domain Name is confusingly similar to the GRAMMARLY Mark because it includes the entirety of the Mark. Adding the generic term “writers” along with the generic Top-Level Domain (“gTLD”) signifier of “.com” does not prevent a finding of confusing similarity.
Initially, the Domain Name resolved to a website that prominently displayed the GRAMMARLY Mark together with the stylized “G” in a green circle logo with blue bars along the top and bottom of the home page of the website. The content of the website included, and still includes, various writing, editing, proofreading,
and plagiarism checking services. Complainant’s website prominently displays the GRAMMARLY Mark with its stylized “G” in a green circle logo and has a blue bar across the bottom of the home page of the website. The content of the website includes services that help users communicate more effectively, including proofreading and plagiarism checking services.
After Complainant sent Respondents its cease and desist letter, Respondents made a slight adjustment to the logo by replacing the stylized “G” inside the green circle with a pencil, but kept the same color green and same circular shape as Complainant’s logo. In addition, Respondents changed
GRAMMARLY to GRAMMAR-LY and maintained the blue bars across the top and bottom
of the home page of the website. Complainant contacted Respondents again to explain that such changes did not alleviate a likelihood of confusion with the GRAMMARLY Mark.
Complainant owns multiple trademark registrations for the Mark and it has been using the Mark in commerce in connection with software and services that help customers communicate better since at least as early as 2009, long before Respondents’ registration and use of the Domain Name. Complainant is the legal and rightful owner of the GRAMMARLY Mark and it has not granted Respondents a right to use the Mark in any manner. There is no evidence that Respondents are commonly known by “grammarlywriters.com” or “Grammarly”. In the WhoIs information for <grammarlywriters.com>, Respondents list the following email address: […]@whoisguard.com, and in the registrant information provided by NameCheap, Inc., Respondents list the following email addresses: […]@icloud.com and […]@gmail.com rather than an email address that reflects the <grammarlywriters.com> domain name. Similarly, Mr. Braze, who has identified himself as counsel for Respondents, uses the email address: […]@yahoo.com. It is unclear whether Mr. Braze is in-house counsel or if he works for himself or a firm, as he has not provided any contact information other than his email address. Respondents’ use of “Grammarly Writers” and “Grammar-ly Writers” on the website located at the Domain Name does not indicate that Respondents are commonly known by “Grammarly Writers”, “Grammar-ly Writers”, or “grammarlywriters.com”, as such uses constitute infringement of the Mark. Respondents’ use of the Domain Name does not constitute a bona fide offering of goods and services because Respondents are trading on the reputation and goodwill of Complainant by using the Mark in the Domain Name, which resolves to a website that looks substantially similar to Complainant’s website located at <grammarly.com>. Respondents not only use the Mark on its website, but Respondents’ counsel informed Complainant’s counsel that Respondents actively refer their customers to Complainant. This suggests that Respondents were and are well aware of Complainant and Complainant’s rights in its Mark. It is clear that Respondents have intentionally tried to create an unauthorized association with Complainant, and such activities do not constitute the bona fide offering of goods and services. Respondents are using the Domain Name for commercial gain by actively marketing their services on their website under the Mark or “Grammar-ly” for a fee that would undoubtedly benefit Respondents.
Respondents registered the Domain name on December 10, 2017 after Complainant acquired rights to the GRAMMARLY Mark through use and registration. Respondents are aware of Complainant’s rights to the Mark as Respondents’ counsel claims that Respondents refer customers to Complainant and use Complainant’s services. It is no coincidence that Respondents registered a domain name substantially
similar to the Mark, as Respondents use Complainant’s services and refer users of Respondent’s website to Complainant, falsely suggesting an affiliation or sponsorship between Respondents and Complainant. Further, Respondents’ registration of the Domain Name through a privacy service also suggests bad faith.
Respondents’ bad faith is demonstrated further by Respondents’ unauthorized use of the Mark in the Domain Name and on the website (e.g. initial use of GRAMMARLY and modified use of “Grammar-ly”). Respondents have intentionally created a website that looks substantially similar to Complainant’s website located at <grammarly.com> in an attempt to potentially profit off of the Mark. Respondents are trading off of the goodwill of the GRAMMARLY Mark by using it to provide services for a fee, for their own commercial gain.
Another indicator of bad faith is use of false information on Respondent’s website. An individual by the name of Dr. Anna White Addams is listed on Respondent’s website as the CEO with a photo. Details of a reverse image search for the CEO’s picture revealed that the photo is used on multiple other sites including use by “www.kallyas.net”, a web design outfit that uses the image associated with a “testimonial” from an “Amber Hitchens” on a demo site for a dental office. Such uses suggest that the photo of the CEO is a stock photograph, and not a true photo of the CEO. In addition, searches for Grammarly Writers Inc. in New Jersey (i.e. the office location listed on the website), Florida (i.e. the location of the area code of the phone number listed on the website), and Delaware (i.e. a state often used for incorporation) produced no results. Respondents indicated that they have registered Grammarly Writers Inc. as a company name but they did not respond to a request to divulge where it is registered. Respondents’ contact information as provided by Namecheap, Inc. fails to include a legitimate street address, as the zip code is in the street address section. This unwillingness to provide correct contact information is also indicative of Respondents’ bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based on the uncontested evidence of Complainant’s use of the GRAMMARLY Mark and Complainant’s trademark registrations for the Mark, the Panel concludes that Complainant has rights in the GRAMMARLY Mark.
The Domain Name <grammarlywriters.com> incorporates in its entirety the GRAMMARLY Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Adding the generic term “writers” to Complainant’s GRAMMARLY Mark does not alleviate the confusion. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant has established its rights to the GRAMMARLY Mark and it maintains that it has not granted Respondents a right to use the Mark in any manner. There is no evidence that Respondents are commonly known by the Domain Name or the Grammarly Mark. For example, Complainant notes in the WhoIs information for the Domain Name that Respondents list the email address: […]@whoisguard.com, and in the
registrant information provided by NameCheap, Inc., Respondents list the email addresses: […]@icloud.com and […]@gmail.com, rather than an email address that reflects the <grammarlywriters.com> domain name. It also maintains that Respondents’ use of “Grammarly Writers” and “Grammar-ly Writers” on Respondents’ website does not indicate that Respondents are commonly known by “Grammarly Writers”, “Grammar-ly Writers”, or “grammarlywriters.com”, because such uses constitute infringement of the Mark.
Complainant also maintains that Respondents’ use of the Domain Name is not a bona fide use because Respondents are trading on its reputation and goodwill by using the Mark in the Domain Name which resolves to a website that looks substantially similar to Complainant’s website located at “www.grammarly.com”. Respondents are using the Domain Name for commercial gain by actively marketing their services on their website under the GRAMMARLY Mark or “Grammar-ly” for a fee that would undoubtedly benefit Respondents.
Complainant’s facts, without contrary evidence from Respondents, are sufficient to permit a finding in Complainants’ favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is undisputed that Complainant registered and used the GRAMMARLY Mark before Respondents registered the Domain Name. It is unlikely that Respondent was unaware of the GRAMMARLY Mark when it registered the Domain Name considering Complainant’s prior use of the Mark before Respondent registered the Domain Name and the fact that Respondents incorporated the entirety of the Mark in the Domain Name and added the term “writers”, which reflects Complainant’s business – services that help others improve their writing skills. Furthermore, the Domain Name resolves to a website that has design elements (e.g. three similar colors – blue, green, white; animated typing in the middle of the homepage; prominent use of a green circle near the GRAMMARLY Mark; similarly colored blue bar at the top of the page) that are similar to the design elements of Complainant’s website and Respondents are also offering for sale writing services. Moreover, in correspondence from Mr. Braze who referred to the owner of the Domain Name as his “client”, Mr. Braze claimed multiple times that as a “professional curtesy” his client was referring people to Complainant’s website for the proofreading services. Thus, Respondents clearly knew of Complainant and its services.
Respondents’ website is clearly set up for selling its competing services (e.g. shopping cart, credit card processing, promotional codes for discounts). Mr. Braze acknowledged in his correspondence that his “client is a young entrepreneur, [e]arning around $500 per month from his only website”. The Panel concludes that by using the confusingly similar Domain Name to market writing services Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant’s GRAMMARLY Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893.
The Panel therefore holds that Complainant has established paragraph 4(a)(iii) of 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 Domain Name <grammarlywriters.com> be transferred to Complainant.
Harrie R. Samaras
Date: June 25, 2018