Grammarly Inc. v Farhana Benozir, Neiman Education

WIPO Case No. D2023-2307

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Grammarly Inc. v. Farhana Benozir, Neiman Education

Case No. D2023-2307

1. The Parties

The Complainant is Grammarly Inc., United States of America (“United States” or “US”), represented by

BrandIT GmbH, Switzerland.

The Respondent is Farhana Benozir, Neiman Education, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <gogrammarly.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 May 26, 2023. On
May 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 30, 2023, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on May 31, 2023 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 amended Complaint on June 6, 2023.

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 June 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2023.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 18, 2023. 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.

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On July 26, 2023, the Respondent addressed an email to the Center, alleging personal issues and requesting a 45-day extension to present a response.

4. Factual Background

The Complainant, Grammarly Inc., is a US corporation based in California, which provides a writing and grammar checking online tool that helps users to identify and correct grammar, spelling, punctuation, and other writing errors since 2009. The Complainant provides its services under both a free and a paid version of the software, quite popular in the academic environment.

It is also widely used by students, professionals, and businesses to improve the quality of their written communication and make it more effective.

The Complainant operates a primary website using the domain name <grammarly.com> and owns
numerous domain names consisting of or incorporating its GRAMMARLY marks, including but not limited to
<grammarly.net>; <grammarly.info>; <grammarly.org>; <grammarly.us>; <grammarly.biz>;
<grammarly.ai>; <grammarly.asia>; <grammarly.cn>; and <grammarly.hk>.

In addition, the Complainant has started a feature called GrammarlyGo, a generative artificial intelligence tool that provides on-demand communication assistance. The feature provides AI generative communication assistance directly within writing applications, supporting users throughout the writing process, whether it is composing an email thread or working on a lengthy document. The features of this tool are shown in Annex 7 of the Complaint.

The Complainant owns a wide portfolio of trademark registrations in the United States and other countries, containing the word mark GRAMMARLY. Some examples of the Complainant’s trademark registrations can be found below:

- Chinese Trademark Registration for GRAMMARLY, No. 10787706, registered on November 21, 2015;

- United Kingdom Trademark Registration for GRAMMARLY, No. UK00910755403, registered on
September 10, 2012;

- European Union Registration for GRAMMARLY, No. 010755403, registered on September 10, 2012; The Complainant also showed that it owns pending US applications for GRAMMARLY GO. All evidence of the registrations and pending applications are shown in Annex 8 to the Complaint. - United States Trademark Registration for GRAMMARLY, No. 4157748, registered on June 12, 2012.

The disputed domain name was registered on November 3, 2022, and, according to the evidence submitted by the Complainant, it resolves to the Registrar’s parked page.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark registered and used worldwide.

The Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has presented consistent evidence of ownership of the trademark GRAMMARLY in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.

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The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant submitted evidence that the Respondent is using the disputed domain name in connection
with a fraudulent phishing scheme designed to lure consumers into believing that they are dealing with the

Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the time frame established by the
Policy.

Nevertheless, on July 26, 2023 - that is, 27 days after the deadline - the Respondent addressed an email to the Center, alleging personal issues and requesting a further 45-day extension to present a response.

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:

i.         the disputed 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 in respect to the disputed domain name; and

iii.       the disputed domain name has been registered and is being used in bad faith.

6.1. Procedural Issue: Respondent’s Extension Request

Well after the due date for Response, and only 5 days before the due date for this Decision, the Respondent requested a 1.5-month extension to the Response period. While citing “personal and family reasons”, no further exceptional circumstances or details were proffered, nor substantive defenses raised. In view of the Panel’s findings below on the substantive merits of this proceeding, and given the length of the extension requested, the Panel finds it more likely than not that the Respondent’s request is a bad faith tactic aimed at disrupting and frustrating these proceedings. Moreover, the Panel notes that the Respondent was given the full 20 days allotted by the Rules and waited almost an additional month following the Center’s notice of the Respondent’s default, before requesting the lengthy extension.

Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Accordingly, the Panel will proceed with this Decision on the merits and refuses to grant the Respondent’s request.

6.2. Substantive Issues
A. Identical or Confusingly Similar

The disputed domain name is, indeed, confusingly similar to the GRAMMARLY trademark, as the latter is entirely incorporated in the disputed domain name, with the mere addition of the prefix “go”.

The Complainant has presented consistent evidence of ownership of the trademark GRAMMARLY in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark.

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The incorporation of the trademark with the addition of “go” in the disputed domain name does not prevent a finding of confusing similarity with the trademark. The addition of a term or terms to a trademark, regardless of the nature of the added material, does not impact the assessment of confusing similarity. See WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.8.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

The Panel notes that the trademark GRAMMARLY is registered in the Complainant’s name and is widely
known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the

Respondent.

Furthermore, the Respondent does not appear to be commonly known by the disputed domain name.

It has also been shown that the Respondent is not making any direct use of the disputed domain name, noting the disputed domain name resolves to the Registrar’s parked page, which features pay-per-click links associated to the services provided by the Complainant. Evidently, such links capitalize on the reputation and goodwill of the Complainant’s trademark and such use cannot be considered fair. See WIPO Overview 3.0, section 2.9. Ultimately, the Respondent is not making a noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods or services.

The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or
legitimate interests in the disputed domain name. In the absence of a substantive Response, the

Respondent has not rebutted such prima facie case.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has more likely than not registered the disputed domain name with the purpose of taking unfair advantage of the Complainant’s mark.

The disputed domain name reproduces the Complainant’s mark GRAMMARLY in its entirety, with the
addition of the prefix “go” which makes the disputed domain name confusingly similar to the Complainant’s
GRAMMARLY trademarks.

The composition of the disputed domain name points towards the Respondent’s likely intent to give an impression that the disputed domain name is associated with the Complainant. Moreover, the content associated with the website to which the disputed domain name resolves further affirms the intentional targeting of the Complainant, given that the pay-per-click links relate to the Complainant’s services. In the

absence of any reasonable explanation for the selection of the disputed domain name by the Respondent, industry wherein the Complainant operates, and thus it stretches credulity that the Respondent was unaware of the Complainant when it registered the disputed domain name incorporating the entirety of the Complainant’s trademark.
and in the circumstances of this case, the Panel finds that, it is more likely than not, that the disputed domain
name has been registered to take advantage due to its value as a trademark owned by the Complainant.

The current passive holding of the disputed domain name is also evidence of bad faith from the Respondent. Previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. See,

e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also Redcats

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S.A. And La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859; DCI S.A. v. Link Commercial
Corporation, WIPO Case No. D2000-1232.

Here, the Panel notes the distinctive and well-known nature of the Complaint’s trademark GRAMMARLY, the failure of the Respondent to submit a timely Response, and the implausibility of any good faith use to which the disputed domain name may be put, support a finding of bad faith. Moreover, the Respondent’s delayed request for an extension, with the requested extension being 1.5-months (and thus more than tripling the Response period set out by the Rules), further exhibits the Respondent’s intent to delay and frustrate these proceedings, which reinforces the Panel’s bad faith finding.

In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name 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 disputed domain name, <gogrammarly.com>, be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: August 1, 2023