WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SurveyMonkey Inc. v. Registration Private, Domains By Proxy, LLC / Marcus Christensen

Case No. D2019-3174

1. The Parties

Complainant is SurveyMonkey Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Marcus Christensen, United States.

2. The Domain Name and Registrar

The disputed domain name <surveysmonkeys.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 29, 2019.

The Center verified that the Complaint together with the amendment to 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 January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on January 27, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 5, 2020. 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 leading provider of survey software products and purpose-built survey solutions for over 17 million active users across numerous industries. Complainant’s predecessor entity was established in the United States in 1999.

Complainant is the proprietor of numerous trademark registrations for its SURVEYMONKEY mark (the “Mark”), including the following:

- United States registration No. 3945632 for SURVEYMONKEY (word mark), registered on April 12, 2011 for services in classes 35 and 42, claiming a date of first use of May 21, 2000;
- United States registration No. 3762880 for SURVEYMONKEY (word mark), registered on March 23, 2010 for services in class 42, claiming a date of first use of May 21, 2000.

The disputed domain name was registered on November 1, 2019. It resolves to a website featuring pay-per-click links.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows.

Under the first element, Complainant alleges that it is the owner of 51 trademark registrations in at least 20 jurisdictions for trademarks that consist of or contain the verbal element “surveymonkey,” a summary of which is attached to the Complaint. The disputed domain name contains Complainant’s Mark in its entirety, and the addition of the letter “s” does nothing to alleviate confusing similarity. Accordingly, the disputed domain name is confusingly similar to Complainant’s Mark.

Under the second element, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the Mark in any manner. The disputed domain name resolves to a website that features monetized links for services offered by Complainant, including links labeled “Employee Satisfaction Survey,” “Customer Satisfaction Survey,” and “Paid Surveys.” Such actions fail to create a bona fide offering of goods or services. Respondent is also using the disputed domain name in connection with a phishing scam whereby Respondent, impersonating Complainant, sends emails offering false rewards and apparently attempting to install malware on recipients’ computers. Such actions can never confer rights or legitimate interests. To Complainant’s knowledge, Respondent has never been known by nor has ever acquired rights in the disputed domain name. The disputed domain name is an obvious misspelling of Complainant’s Mark, signaling an intention to confuse users seeking or expecting Complainant. Accordingly, Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under the third element, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. The disputed domain name is identical or confusingly similar to Complainant’s Mark, which is clearly famous and/or widely known, as the Mark has been widely registered starting 19 years ago, there are 17 million active users of Complainant’s service, and Complainant has quarterly revenue of USD 79.3 million. It is implausible that Respondent was unaware of Complainant’s Mark, nor is it conceivable that Respondent chose the disputed domain name without knowledge of Complainant’s activities. Such actions indicate opportunistic bad faith on the part of Respondent. Holding the disputed domain name in connection with a monetized parking page constitutes bad faith, whether or not Respondent was aware of Complainant’s activities.

Respondent is using the email address “[...]@surveysmonkeys.com” to send emails in which it claims that it is representing a “large company called Survey Monkey.” Said emails apparently encourage recipients to download malware. By impersonating Complainant and engaging in a fraudulent scheme, Respondent is disrupting the business of a competitor and intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark. Accordingly, the disputed domain name was registered and is being used in bad faith.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the Mark through registrations in jurisdictions around the world, including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the Mark, since the disputed domain name contains the Mark in its entirety. The addition of two instances of the letter “s” in the disputed domain name does not prevent a finding of confusing similarity as Complainant’s Mark is clearly recognizable within the disputed domain name.

Section 1.7 of the WIPO Overview 3.0 provides: “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 trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the Domain Name, even if it has acquired no trade mark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, adding the letter “s” in two places to Complainant’s Mark, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the Mark with permission of Complainant. Rather, the record supports Complainant’s claim that such permission does not exist. Complainant’s rights in the Mark predate the registration of the disputed domain name by nearly two decades. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s distinctive Mark and the disputed domain name, the fact that Respondent offers pay-per-click links through its website and the record contains evidence that Respondent used the disputed domain name as part of a fraudulent email scheme further supports a finding of lack of rights or legitimate interests.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith under Policy paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark significantly predate the registration of the disputed domain name. The Mark is distinctive in respect of the services for which it is registered and used. The disputed domain name contains Complainant’s Mark in its entirety. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad-faith use both in the pay-per-click website and in the fraudulent e-mail scheme perpetrated using the disputed domain name.

Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use, and the circumstances do not make any such use plausible.

In the view of the Panel, such circumstances, taken together, clearly indicate that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 <surveysmonkeys.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 19, 2020