WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Granicus, LLC v. 李厚昌 (Li Hou Chang)
Case No. DCO2021-0098
1. The Parties
The Complainant is Granicus, LLC, United States of America (“United States” or “U.S.”), represented by Kirkland & Ellis LLP, United States.
The Respondent is 李厚昌 (Li Hou Chang), China.
2. The Domain Name and Registrar
The disputed domain name <govdelivery.co> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2021, 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 December 28, 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 December 28, 2021.
On December 28, 2021, 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 language of the proceeding on December 29, 2021. The Respondent requested that Chinese be the language of the proceeding on December 30, 2021.
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 January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2022.
The Center appointed Douglas Clark as the sole panelist in this matter on February 7, 2022. 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 over 5,500 public sector organizations to help them engage with citizens. It has a family of “GOV” marks GOVSERVICE, GOVACCESS, GOVRECORDS, GOVDELIVERY, GOVLOOP, and GOVMEETINGS.
The Complainant owns several trademarks and service marks that it uses in connection with its business, including but not limited to the GOVDELIVERY service mark, for which it holds U.S. Reg. No. 5,911,881, registered on November 19, 2019. The Complainant also registered the domain name <govdelivery.com> on July 26, 2001.
The Complainant has been using the GOVDELIVERY service mark continuously since at least July 25, 2001. GOVDELIVERY is the first United States Federal Risk and Authorization Management Program (“FedRAMP”)-authorized digital engagement platform for email, social, and text communications. GOVDELIVERY is used by a variety of federal agencies in the United States, such as the Department of Defense, Department of State, Federal Trade Commission, and the Veterans Administration, among others.
The disputed domain name <govdelivery.co> was registered on July 14, 2021. At the date of the Complaint, the disputed domain name resolved to a parked website displaying pay‑per‑click links and an offer to “Buy this domain”.
The Respondent is an individual based in China. The domain name in the contact email provided by the Registrar and email address for which the Respondent communicated with the Center resolves to a page solely written in English which states that company “Is a domain name brokerage firm that helps clients get the most value from their keyword domain names”. Five team members are listed on the “Our Team” page four of whom are stated to be graduates of universities in the United States. The other team member is described as “Having grown up in the DC area [in the United States]”.
The Respondent has put the disputed domain name up for auction through a third party site with a minimum offer price of EUR 800.
5. Parties’ Contentions
The Complainant contends that:
(a) The disputed domain name is identical or confusingly similar to the Complainant’s GOVDELIVERY service mark. The dominant portion of the disputed domain name is identical to its service mark GOVDELIVERY and registered domain name <govdelivery.com>. The confusing similarity of the disputed domain name to the Complainant’s GOVDELIVERY service mark and registered domain name <govdelivery.com> is magnified by the use of “.co”, as it is nearly identical to, and clearly intended to mimic, “.com”;
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never used GOVDELIVERY as part of a trademark, service mark, trade name, or other trade symbol, or in a descriptive or informative manner to describe the Respondent’s own goods or services, or any other entity’s goods or services, or to comment thereon. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization or license to use the Complainant’s service mark. GOVDELIVERY is not a personal name of the Respondent, and the Respondent has not made a bona fide offering of goods or services; and
(c) The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in July 2021, long after the Complainant’s first use of the GOVDELIVERY service mark, registration of the GOVDELIVERY service mark, and registration of the <govdelivery.com> domain name. The disputed domain name itself evidences the Respondent’s bad faith as it shows the Respondent intentionally registered a domain name that would result from users misspelling the Complainant’s domain name <govdelivery.com>. The Respondent has put the disputed domain name up for auction through a third party site with a minimum offer price of EUR 800, and the dispute domain name only resolves to parked page with pay‑per-click links.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions, but only submitted one informal communication requesting Chinese be the language of the proceedings without any further explanation.
6. Discussion and Findings
6.1 Language of the Proceedings
The language of the Registration Agreement is Chinese.
The Complainant requests that the language of the proceedings be English on the grounds that (i) the Complainant is a U.S. based company and does not understand Chinese, (ii) the Complainant’s GOVDELIVERY trademark is in English and registered in the U.S., (iii) the disputed domain name is in English, and (iv) the disputed domain name uses the country code Top-Level Domain (“ccTLD”) “.co”, which is intended to trick users attempting to reach the Complainant’s “.com” website, a generic Top‐Level Domain (“gTLD”) predominantly used by English speaking consumers.
The Respondent responded in Chinese merely stating that it requested Chinese.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with the Panel.
The domain name in the email addresses for the registered contact of the Respondent and used to contact the Center resolves to the site of a company purporting to do business in English and to be staffed by graduates of United States universities. Accordingly, the Panel finds it more likely than not that the Respondent understands English. As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to follow the Center’s preliminary determination. The Panel would have accepted a Response in either Chinese or English, however, the Respondent did not submit any formal Response. Noting the above, and also that the only formal pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s service mark and registered service mark. The disputed domain name incorporates the Complainant’s GOVDELIVERY service mark in full. The ccTLD “.co” is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
The Panel notes that the Complainant does not have a registered trademark incorporating GOVDELIVERY in China. However, the jurisdictions where the trademark is registered is generally not considered relevant under the first element and the ownership of a trademark registration is generally considered to be sufficient to satisfy the threshold standing issue. (See sections 1.1.2 and 1.2.1 of the WIPO Overview 3.0).
The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.
Section 2.1 of the WIPO Overview 3.0 provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s GOVDELIVERY service mark or to apply for registration of the disputed domain name. There is no evidence that “govdelivery” is the name of the Respondent’s corporate entity. Furthermore, there is no evidence that the Respondent has used or is planning to use the GOVDELIVERY service mark or the disputed domain name for a bona fide offering of goods and services. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.
Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.
The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered long after the Complainant has registered the GOVDELIVERY service mark. The GOVDELIVERY service mark is used by the Complainant to conduct its business and the Complainant has used the service mark over two decades. The Panel is satisfied that the Respondent was aware of the Complainant and its GOVDELIVERY service mark when it registered the disputed domain name. Moreover, the Respondent registered the disputed domain name with the ccTLD “.co”, which suggests that the Respondent intended to mimic the Complainant’s domain name <govdelivery.com>.
In the circumstances of this case, the Panel finds the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s GOVDELIVERY service mark. The Respondent’s auction of the disputed domain name with a minimum offer price of EUR 800 supports a finding that the Respondent has engaged in bad faith registration and use, given that the sale is most likely targeting the Complainant or other nefarious actors interested in taking unfair advantage of the Complainants GOVDELIVERY service mark.
Furthermore, the identical nature of the disputed domain name, the Respondent’s clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name, and the implausibility of any good faith use to which the identical disputed domain name could be put that would not unfairly take advantage of the Complainant’s GOVDELIEVERY service mark, support a finding of bad faith.
For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore satisfied the third element under paragraph 4(a) 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 disputed domain name, <govdelivery.co>, be transferred to the Complainant.
Date: February 24, 2022