Grammarly, Inc. v mohamed asttif

WIPO Case No. D2023-0399

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Grammarly, Inc. v. mohamed asttif

Case No. D2023-0399

1. The Parties

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

BrandIT GmbH, Switzerland.

The Respondent is mohamed asttif, Morocco.

2. The Domain Name and Registrar

The disputed domain name <grammarlychrome.com> (the “Domain Name”) 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 January 27, 2023.

On January 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Unknown, and from the Respondent identified by reference to Annex 1 to the

Complaint, “Registration Private, Domains By Proxy, LLC”) and contact information in the Complaint. The

Center sent an email communication to the Complainant on February 1, 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 February 3, 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 paragraph 5, the due date for Response was February 27, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on March 2, 2023.

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The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 14, 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.

4. Factual Background

Launched in 2009, the Complainant provides a writing and grammar-checking tool that helps users identify and correct grammar, spelling, punctuation, and other writing errors. The Complainant is the proprietor of i.a. the following trademark registrations:

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

- Mexican Trademark Registration for GRAMMARLY, No. 2414040, registered on June 24, 2022;

- Australian Trademark Registration for GRAMMARLY, No. 2158353, registered on October 5, 2021;

- Brazilian Trademark Registration for GRAMMARLY, No. 922415269, registered on January 11, 2022,

- 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;

- Swiss Trademark Registration for GRAMMARLY, No. 777512, registered on March 3, 2022;

- Norwegian Trademark Registration for GRAMMARLY, No. 321668, registered on April 25, 2022; and

- United States Trademark Registration for GRAMMARLY, No. 4157748, registered on June 12, 2012.

The Domain Name was registered December 18, 2019, and resolves to a website that reproduces the

content and trademarks present in the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, substantially, the following;

The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized the Respondent to register or use the Domain Name incorporating the GRAMMARLY

trademark nor has the Complainant endorsed or sponsored the Respondent or the Respondent’s website.

The Respondent is not affiliated with the Complainant. There is no evidence that the Respondent is commonly known by the Domain Name or owns any registered trademarks including the term

“grammarlychrome”. Moreover, the Respondent is using a privacy shield service which covers its identity.

It therefore appears that the Respondent aims to hide its identity rather than being known by the Domain Name. At the time of filing of the Complaint as well as at the time of filing of the Amended Complaint, the Domain Name resolved to a website allegedly advertising and offering an automated grammar correction

service that seemed to relate to the Complainant’s activities. The website slavishly reproduces the contents

and trademarks present in the Complainant’s official website <grammarly.com>. The inclusion of the

Complainant’s trademark along with the term “chrome” directly refers to the Complainant’s activity and

reflects the Respondent’s intention to create an association, and a subsequent likelihood of confusion, with

the Complainant and its trademarks in the mind of Internet users. Such behavior cannot be considered as bona fide offering of goods and services nor constitute a noncommercial or fair use of the Domain Name.

The Domain Name was registered and is being used in bad faith. Considering the content on the website to

which the Domain Name resolves, that clearly refers to Complainant’s services and activities, it is

inconceivable that the Respondent was unaware of the existence of the Complainant’s company or

trademarks when he registered the Domain Name. The direct connection between the content on the

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website to which the Domain Name resolves and the Complainant’s services, as well as the fact that the

Domain Name incorporates the Complainant’s GRAMMARLY trademark, may mislead potential consumers

into believing that what is displayed on the website to which the Domain Name resolves has been authorized

and is associated with the Complainant.

B. Respondent

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

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i)        that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii)      that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it holds trademark rights in relation to GRAMMARLY.

The Domain Name incorporates the Complainant’s GRAMMARLY trademark in its entirety while adding

“chrome” and the generic Top-Level Domain (“gTLD”) “.com”. According to the WIPO Overview of WIPO

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

relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing

similarity under the first element. In this case, the addition of “chrome” does not prevent a finding of

confusing similarity between the Domain Name and the Complainant’s GRAMMARLY trademark.

Moreover, the Complainant’s trademark is recognizable within the disputed domain name and the addition of

a third-party mark is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark

under the first element (see section 1.12 of the WIPO Overview 3.0).

Further, it is well established that “.com”, as a gTLD, is typically disregarded in the assessment of confusing

similarity (see section 1.11.1 of the WIPO Overview 3.0).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which the

Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests, if the

respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied

the second element (see WIPO Overview 3.0, section 2.1).

Considering all of the evidence presented in the case, and the Complainant’s unrebutted contentions that the

Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Complainant has made out an undisputed prima facie case.

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Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain

Name.

C. Registered and Used in Bad Faith

As mentioned above, the Domain Name incorporates the Complainant’s GRAMMARLY trademark in its

entirety. The Complainant has not authorized the Respondent to use its GRAMMARLY trademark.

The content of the website to which the Domain Name resolves (the “Domain Name Website”) clearly reflects the Respondent’s awareness of and intent to target the Complainant. The content of the Domain

Name website indicates that the Respondent intentionally has tried to attract, for commercial gain, Internet

users to the Domain Name website by creating a likelihood of confusion with the Complainant’s

GRAMMARLY trademark as to the source, sponsorship, affiliation, or endorsement of the Domain Name website and the services supposedly offered on such website. Based on the aforementioned use of the Domain Name, the documentation presented in the case and the confusing similarity between the Domain

Name and the Complainant’s GRAMMARLY trademark, the Panel finds that the Domain Name was

registered and is 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 Name <grammarlychrome.com> be transferred to the Complainant.

/Jonas Gulliksson/

Jonas Gulliksson

Sole Panelist
Date: March 28, 2023