WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Granicus, LLC v. 杨智超 (Zhichao Yang)

Case No. D2021-2844

1. The Parties

The Complainant is Granicus, LLC, United States of America (“United States” or “US”), represented by Kirkland & Ellis, United States.

The Respondent is 杨智超 (Zhichao Yang), China.

2. The Domain Names and Registrar

The disputed domain names <ggranicus.com>, <graanicus.com>, <graicus.com>, <gramicus.com>, <graniccus.com>, <granicsu.com>, <granicuss.com>, <granicuus.com>, <graniucs.com>, <granivus.com>, <granixus.com>, <grannicus.com>, <granocus.com>, <granucus.com>, <grnaicus.com>, <grnicus.com>, <grranicus.com>, <gtanicus.com>, and <wwwgranicus.com> (the “Domain Names”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on September 21, 2021.

On September 17, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 21, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.

The Center appointed Karen Fong as the sole panelist in this matter on November 3, 2021. 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 offers cloud based solutions for communications, management and digital services to public sector organisations under the trade mark GRANICUS since 2001. The GRANICUS mark is registered in the United States under the US Trade Mark Registration No. 5942876 on December 24, 2019 (the “Trade Mark”). The Complainant’s website is found at the domain name <granicus.com>.

The 19 Domain Names were registered on July 12, 2021 by the Respondent who is based in China. The website content of each of the Domain Names (the “Websites”) are listed below together with the differences between the second level domains and the Trade Mark:

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and are being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English as it is a US based company that operates its business in English and offers its goods and services under the Trade Mark which is in English. Further, all the Domain Names are in English including the Top-Level Domain (“TLD”) of the Domain Names “.com” which is predominantly used by English speaking consumers.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel notes the Complainant’s submissions regarding the language of the proceeding, the composition of the Domain Names, and other circumstances of this case. Although the Respondent has been notified in English and Chinese of the language of the proceeding and the Complaint, the Respondent has not challenged the Complainant’s language request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case, all the Domain Names consist of misspellings of the Trade Mark as set out in Section 4 above.

It is well established that domain names which consists of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (see section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is a typical typosquatting case as the 19 Domain Names are clearly misspellings of the Trade Mark.

For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the TLD irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.

The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed 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 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 trade mark 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 trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that to the best of its knowledge, the Respondent has not registered any trade mark for the Domain Names. The Domain Names do not show any bona fide offering of goods or services. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Websites redirect Internet users to pay-per-click sites, none of which confer any rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been registered and are being used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names given that all 19 Domain Names are misspellings of the Trade Mark and registered with the same Registrar on the same date. The WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

It is inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith. In addition, the Panel notes that the Respondent has registered 19 Domain Names, all of them following a pattern of typosquatting of the Complainant’s Trade Mark, which further affirms the Respondent’s bad faith.

Further, the use of the Domain Names is also in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235, typosquatting – intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name – is presumptive evidence of bad faith in registration and use of a disputed domain name.

The Respondent’s use of the Websites also support a finding that the Respondent has registered the Domain Names, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Websites and the services provided were authorised or endorsed by the Complainant. The above is clearly bad faith under paragraph 4(b)(iv) of the Policy.

The Panel therefore concludes that the Domain Names were registered and are being used in bad faith.

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 Domain Names, <ggranicus.com>, <graanicus.com>, <graicus.com>, <gramicus.com>, <graniccus.com>, <granicsu.com>, <granicuss.com>, <granicuus.com>, <graniucs.com>, <granivus.com>, <granixus.com>, <grannicus.com>, <granocus.com>, <granucus.com>, <grnaicus.com>, <grnicus.com>, <grranicus.com>, <gtanicus.com>, and <wwwgranicus.com>, be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: November 24, 2021