WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reddit, Inc. v. Phil Carey
Case No. D2020-1834
1. The Parties
The Complainant is Reddit, Inc., United States of America (“United States”), represented internally.
The Respondent is Phil Carey, United States.
2. The Domain Name and Registrar
The disputed domain name <reddit.win> is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2020, 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 the Complainant on August 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 4, 2020, the Center received an email communication from the Respondent, in response to which the Center invited the Parties to clarify whether they would like an opportunity to explore settlement negotiations. On August 5, 2020, the Complainant submitted an amended Complaint and confirmed it did not wish to pursue settlement discussions.
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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2020. On August 12, 2020, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on September 3, 2020, that it would proceed to appoint the Administrative Panel.
The Center appointed William R. Towns as the sole panelist in this matter on September 16, 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
The Complainant owns and operates “Reddit”, an online social news aggregation and message board website. Founded in June 2005 with headquarters in San Francisco, California, the Complainant is present in thousands of online communities. The Complainant owns numerous word mark and design mark registrations for the REDDIT mark issued by the United States Patent and Trademark Office (USPTO), including the following word marks:
REDDIT, United States Reg. No. 5008166, applied for February 21, 2016, and registered July 26, 2016, for online social networking services (first use in commerce June 28, 2005);
REDDIT, United States Reg. No. 5053433, applied for February 1, 2016, and registered October 4, 2016, for telecommunications services for electronic transmission by Internet of data, graphics, sound and video (first use in commerce June 28, 2005); and
REDDIT, United States Reg. No. 5103419, applied for February 1, 2016, and registered December 20, 2016, for computer services providing on-line web pages and data feeds (first use in commerce June 28, 2005).
On June 29, 2020, the Complainant banned a message board previously hosted by the “The Donald” at <reddit.com> (“https://reddit.com/r/The_Donald”). According to the Complainant, this action was taken in compliance with the Complainant’s hate speech policies. The disputed domain name <reddit.win> was registered by the Respondent on June 30, 2020. The Respondent then redirected the disputed domain name to a website at “https://thedonald.win”. The website bears a close resemblance to the message board previously hosted by “The Donald” on the Complainant’s social news aggregation and message board website.
5. Parties’ Contentions
A. Complainant
The Complainant submits that REDDIT is a well-known brand operating in thousands of online communities with over 330 million monthly visitors. The Complainant explains that it owns and operates the domain name <reddit.com> in addition to dozens of other REDDIT domain names throughout the world. The Complainant documents that it is the owner of trademarks for REDDIT and REDDIT & Design (collectively the “REDDIT Marks”), in use since its launch in 2005 in connection with a variety of goods and services.
The Complainant represents that “www.reddit.com” is the sixth most visited website in the United States according to Alexa Internet, Inc., and the twentieth most visited website as of July 2020. The Complainant maintains that its REDDIT Marks are the subject of extensive use and advertising, and further asserts that the Complainant has expended a substantial amount of time, money, and resources to promote and protect its REDDIT Marks around the world.
The Complainant maintains that the disputed domain name <reddit.win> is identical or confusingly similar to the Complainant’s REDDIT Marks. The Complainant observes that the Respondent is redirecting the disputed domain name, incorporating the Complainant’s REDDIT mark in its entirety, to a website hosted at the domain name <thedonald.win>and attempting to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s name, marks, and domains as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant explains that the addition of the generic Top-Level-Domain (“gTLD”) “.win” is disregarded when assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent should not be considered as having rights or legitimate interests in respect of the disputed domain name because the Respondent is not commonly known as “Reddit”, has no affiliation with the Complainant, and has not been authorized or licensed to use the Complainant’s REDDIT Marks. The Complainant contends that the disputed domain name most likely would be understood to refer to the Complainant or to the Complainant’s goods and services.
The Complainant submits that the Respondent is not making a bona fide use of the disputed domain name, asserting that the Respondent has used the disputed domain name to redirect Internet traffic to the <thedonald.win> website, offering services that compete with those of the Complainant. The Complainant notes there is no prominent or appropriate link provided to the Complainant’s website, and that as such the disputed domain name cannot support a claim of rights or legitimate interests by the Respondent.
The Complainant further maintains that the Respondent has not adequately disclaimed the relationship between the Respondent and the Complainant, the failure of which creates a false impression that the Respondent is an official or authorized provider of the Complainant’s services. The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant maintains that the disputed domain name was registered and is being used in bad faith by the Respondent. According to the Complainant, the Respondent’s bad faith is evidenced by the Respondent’s use of the disputed domain name to redirect Internet users to the Respondent’s website. The Complainant contends that the Respondent has used the disputed domain name to create a false association with the Complainant by registering and using the disputed domain name, which is confusingly similar if not identical to the Complainant’s REDDIT Marks.
The Complainant asserts that the Respondent was well aware of the Complainant’s famous REDDIT mark when registering the disputed domain name. The Complainant explains that a community under the name “The Donald” previously had hosted at <reddit.com>, but was banned from the Complainant’s platform on June 29, 2020 as part of an update to the Complainant’s hate speech policies. The Complainant submits that the Respondent then registered the disputed domain name and redirected it to the website at the <thedonald.win> domain name shortly thereafter.
According to the Complainant, the Respondent’s website to which the disputed domain name resolves features a copy of the Complainant’s website, and caters to the same audience and interests as “The Donald”. The Complainant contends that the Respondent is attempting to create user confusion as to the source, affiliation, or sponsorship of the website to which the disputed domain name has been redirected. The Complainant submits that the Respondent has gone to great efforts to make the “www.thedonald.win” website appear as if it is affiliated with or otherwise sponsored by the Complainant, and asserts that the Respondent mimics the layout and several user interface elements unique to the Complainant’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Respondent contacted the Center on August 4, 2020, maintaining he was unaware of the relation of the disputed domain name to Reddit, and had purchased the domain name for “over USD 400.” The Respondent then inquired whether he could receive compensation for directly transferring ownership to the Complainant. Subsequently, on August 12, 2020, the Respondent offered to transfer the disputed domain name to the Complainant in consideration of the payment of USD 640. Insofar as the record reflects, the Complainant did not reply to the Respondent’s August 12, 2020 communication.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view of UDRP panels is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <reddit.win> is identical to the Complainant’s REDDIT mark, in which the Complainant has established rights through extensive registration and some 15 years’ use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s REDDIT mark is clearly recognizable in the disputed domain name.2 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s REDDIT mark. Nonetheless, the Respondent has registered the disputed domain name, which is identical to the Complainant’s REDDIT mark, and has linked the disputed domain name with a website that copies the message board previously hosted at the “www.reddit.com/r/The_Donald” website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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 it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s REDDIT mark firmly in mind when registering the disputed domain name, which the Panel has found identical to the REDDIT mark. The record is convincing that the Respondent in all likelihood registered the disputed domain name seeking to impersonate the Complainant and draw traffic based on such confusion, or at a minimum to disrupt the operation of the Complainant’s business. The Respondent also sought on several occasions to sell the disputed domain name to the Complainant.
Having regard to the attendant circumstances as reflected in the record of this case, and noting that the Respondent himself has not advanced such an argument, the Panel has for the sake of completeness found nothing that credibly would support a claim by the Respondent to be operating a legitimate criticism site. A legitimate criticism sight must be genuine and noncommercial, and not used as a pretext for cybersquatting, commercial activity, or tarnishment. See WIPO Overview 3.0, section 2.6.1. Further, and even when used in relation to noncommercial free speech (which again is not a claim advanced by the Respondent here), UDRP panels have held that registering or using a domain name identical to a complainant’s mark carries with it a high risk of implied affiliation, creating an impermissible risk of user confusion through impersonation. See WIPO Overview 3.0, sections 2.5 and 2.6.2. Such use cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Id. See Citizens For A Better Kenner, Inc. v. Scott Sigur, WIPO Case No. D2020-1462. See also Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633; Akoustic Arts v. Whois Privacy Service / F J Pompei, WIPO Case No. D2019-2136; Paul Clote a/k/a Paul David Clote and Paul D. Clote v. Domains By Proxy, LLC / Clote Nomore, WIPO Case No. D2019-3002.
For the reasons discussed above, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel further finds that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name, and has not been commonly known by the disputed domain name. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed herein and under the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent plainly was aware of the Complainant and had the Complainant’s REDDIT mark firmly in mind when registering the disputed domain name, which as previously noted by the Panel is identical to the Complainant’s REDDIT mark. The record is convincing that the Respondent registered and has used the disputed domain name in bad faith, seeking to exploit the Complainant’s rights in the REDDIT mark. There is no evidence that the Respondent registered the disputed domain name for purposes of launching a legitimate criticism site. Instead, the record reflects the Respondent’s registration and use of the disputed domain name to create Internet user confusion through impersonation of the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <reddit.win> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 30, 2020
1 See WIPO Overview 3.0 , section 1.7 .
2 See WIPO Overview 3.0, section 1.8, and relevant decisions.
3 See WIPO Overview 3.0 , section 1.11 , and relevant decisions.