WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Granicus, LLC v. Contact Privacy Inc. Customer 1248460021 / Let ya Crawford

Case No. D2021-2843

1. The Parties

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

Respondent is Contact Privacy Inc. Customer 1248460021, Canada / Let ya Crawford, United States.

2. The Domain Name and Registrar

The disputed domain name <govdeliveryauth.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed 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 disputed domain name. On August 30, 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 Complainant on August 31, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 31, 2021.

On August 31, 2021, Respondent sent an informal communication.

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 Respondent of the Complaint, and the proceedings commenced on September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel Appointment on September 28, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 6, 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

Complainant, Granicus, LLC, is a provider of cloud-based solutions for communications, management and digital services to public sector organizations. Of relevance to this proceeding, Complainant provides a cloud-based subscription management service to organizations that allows members of the public to subscribe to news and information from such organizations, and/or other related agencies, which is then delivered through email, text messages and/or social media feeds. Complainant has offered this service under the name and mark GOVDELIVERY along with a suite of other related services under various GOV formative marks, such as GOVSERVICE, GOVACCESS, GOVRECORDS and others. Complainant owns a United States trademark registration for GOVDELIVERY in connection with its services (Registration No. 5,911,881), which issued to registration on November 19, 2019 (with a claimed first use in commerce date of August 1, 2001). Complainant also owns and uses the domain name <govdelivery.com>, which currently redirects to a page within Complainant’s website at “www.granicus.com/solution/govdelivery/”.

The disputed domain name was registered on October 16, 2020. At some point, the disputed domain name resolved to the Internal Revenue Service website at “www.irs.gov”. The disputed domain name does not currently resolve to an active website or web page.

5. Parties’ Contentions

A. Complainant

Complainant maintains that is has rights in the name and mark GOVDELIVERY in connection with its services on account of its longstanding use of GOVDELIVERY and its registration of the GOVDELIVERY mark in the United States.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s GOVDELIVERY mark as the dominant component of the disputed domain name fully consists of the GOVDELIVERY mark. Complainant further contends that the inclusion of the abbreviation “auth” for “authorization” makes confusion more likely as it suggests that the disputed domain name is an authorized use of the GOVDELIVERY mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has never used “govdelivery” as a name, trademark or other identifier for any bona fide business or offering of services, (ii) is not commonly known by the disputed domain name, (iii) has no connection to Complainant and has never been authorized to use the GOVDELIVERY mark, and (iv) has done nothing with the disputed domain name apart from redirecting it at one point to the website at “www.irs.gov”.

Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith as Respondent registered the disputed domain name well after Complainant had used and registered the GOVDELIVERY mark. Complainant further asserts that Respondent has used the disputed domain name by redirecting to the disputed domain name to the website at “www.irs.gov” as a test run for some kind of phishing campaign. In that regard, Complainant maintains that it has obtained an analytics report from a widely used cybersecurity firm that classified the disputed domain name as a “high risk” domain name. Complainant also argues that Respondent’s registration and use of the disputed domain name violates the Lanham Act (the United States Trademark Act).

B. Respondent

Respondent did not reply to Complainant’s contentions. On August 31, 2021, however, the Center received email from an individual by the same last name of Respondent, as follows: “I don’t know what this all about or how u got my email and home address.” No further communication was received by the Center.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.

Here, although Respondent has failed to reply to Complainant’s contentions, this does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default (in this case a failure to reply to Complainant’s contentions) in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Complainant has provided evidence that it uses the mark and name GOVDELIVERY in connection with its products and services and that Complainant owns trademarks registration for the GOVDELIVERY mark in the United States where Respondent purports to be located. The disputed domain name fully and prominently incorporates Complainant’s GOVDELIVERY mark at the head of the disputed domain name. The use of “auth” at the tail of the disputed domain name does not prevent a finding of confusing similarity, as Complainant’s GOVDELIVERY mark is clearly recognizable in the disputed domain name. As the threshold for the first element is primarily to establish standing, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the evidence submitted in this proceeding, none of which is contested by Respondent, it appears that Respondent registered the disputed domain name which prominently features the GOVDELIVERY mark and then used it at some point as a redirect to the Internal Revenue Service website at “www.irs.gov”. As Respondent does not appear to have any connection to Complainant, particularly given the informal response received by the Center on August 31, 2021 and the failure of Respondent to provide a substantive response, it seems more likely than not that Respondent’s use of the disputed domain name is not a bona fide use or done in furtherance of a legitimate interest. This is particularly so given that Complainant provides its GOVDELIVERY and other cloud-based services to government agencies to assist such agencies manage their communications with interested members of the public. Thus, by using the disputed domain name that includes Complainant’s GOVDELIVERY mark with the abbreviation “auth” (short for “authorization”), consumers seeing the disputed domain name and being redirected to other websites, such as the “www.irs.gov” website, might likely believe that the disputed domain name is for an authorized user or service from a government agency like the Internal Revenue Service.

Given that Complainant has established with sufficient evidence that it owns rights in the GOVDELIVERY mark, and given Respondent’s above noted actions and failure to provide a substantive response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given Respondent’s actions as noted above, and its failure to provide a substantive response, it is easy to infer that Respondent’s use of the disputed domain name which is based on Complainant’s GOVDELIVERY mark for use at some point as a redirect to the Internal Revenue Service website at “www.irs.gov” has been done in bad faith. This is particularly so in light of an analytics report provided by Complainant from a cybersecurity firm that suggests that the disputed domain name is a “high risk” domain name. Given that Complainant had established rights in the GOVDELIVERY mark prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered the disputed domain name for purposes of perpetuating some possible scheme or otherwise profiting at the expense of Complainant.

Accordingly, the Panel finds that Complainant succeeds under this element 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 <govdeliveryauth.com> be transferred to Complainant.

Georges Nahitchevansky
Sole Panelist
Date: October 20, 2021