WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

99designs, Inc. v. Usman Ghaznavi a/k/a Usman Anis / Salman Ghaznavi a/k/a Salman Anis / Logojeeves, Inc. / Logo Bench / Kevin Brown, Ghostwriting Studo / James Anderson, Crazy Media LLC / David Smith / Malik Imran, Design Hub Solution / Waqas Ghouri, LogoMashup / Stuart Marsh / Daphne Magsi / Monica Lawrence, DesignExperts / Joseph Lewis, Ecommerce Company / Angel Hostings / Archie Nolan

Case No. D2019-1899

1. The Parties

The Complainant is 99designs, Inc., United States of America (“USA” or “US”), represented by Coblentz, Patch, Duffy & Bass, LLP, United States of America.

The Respondent is Usman Ghaznavi a/k/a Usman Anis, USA / Salman Ghaznavi a/k/a Salman Anis, USA / Logojeeves, Inc., USA / Logo Bench, USA / Kevin Brown, Ghostwriting Studo, USA / James Anderson, Crazy Media LLC, USA / David Smith, Pakistan / Malik Imran, Design Hub Solution, USA / Waqas Ghouri, LogoMashup, USA / Stuart Marsh, USA / Daphne Magsi, USA / Monica Lawrence, DesignExperts, USA / Joseph Lewis, Ecommerce Company, USA / Angel Hostings, Pakistan / Archie Nolan, Ireland.

2. The Domain Names and Registrar

The disputed domain names <99designcafe.com>, <99designcoupon.com>, <99designcoupons.com>, <99designcouponz.com>, <99designdeals.com>, <99designersinc.com>, <99designers.online>, <99designerspro.com>, <99designers.site>, <99designinc.com>, <99designoffer.com>, <99designoffers.com>, <99designpros.com>, <99designsale.com>, <99designs-coupon.com>, <99designs-coupons.com>, <99designscoupons.com>, <99designsharks.com>, <99designsinc.com>, <99designs-offer.com>, <99designsoffer.com>, <99designsoffers.com>, <99designspro.com>, <99designsshark.com>, <99designssharks.com>, <99designzdeals.com>, <99logodesigners.com>, <99logodesignsinc.com>, and <999designdealz.com> are registered with NameCheap, Inc.; the disputed domain names <99designersonline.com>, <99designers247.com>, <99designersllc.com>, <99designerscorp.com>, <99designersworld.com>, and <99designerslab.com> are registered with Name.com, Inc. (Name.com LLC); the disputed domain name <99webdesigners.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (collectively the “Registrar”). The disputed domain names are collectively referred to as the “Domain Names”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2019 regarding 56 disputed domain names. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 8, 10, and 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2019, 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 September 3, 2019, in which it removed 20 disputed domain names. Further to the Center’s request for clarification, the Complainant filed a second amended Complaint on September 10, 2019.

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 September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Responses were filed with the Center on September 30, October 3, and 4, 2019 by Monica Lawrence, Joseph Lewis, and Stuart Marsh respectively.

The Center appointed Karen Fong as the sole panelist in this matter on October 25, 2019. 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, a US based company with its parent company in Australia (the “Complainant Group”) provides graphic design services to both commercial and individual customers. The Complainant Group provides a platform through which it works with independent graphic designers and artists to fulfill customer requests for graphic design work which are submitted to them. Since its founding in 2008, the Complainant Group has earned over USD 200 million for designers using the platform and has completed the graphic design work requests for over 580,000 customers. The average rating by customers over 37,000 reviews are 4.8 stars out of 5.

The Complainant’s services are provided through the trade marks 99DESIGNS and 99D. The Complainant’s trade mark registration include US TM Reg. No 3725766 for 99DESIGNS which was registered in 2009 (the “Trade Mark”).

The Complainant’s main website is connected to the domain name <99designs.com> which was registered in 2008. This website is the main touchpoint for interaction between the Complainant and its customers and independent graphic designers and artists.

The Complaint involves 36 Domain Names which are registered to multiple Respondents as detailed below:

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have 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, all of which it believes are related and under management and common control of a single entity or network.

The basis of its belief that the registrants are related and under management and common control of a single network are as follows:

1. The Domain Names are under the common control of Usman Ghaznavi a/k/a Usman Anis, Salman Ghaznavi a/k/a Salman Anis (collectively, the “Ghaznavis”), and/or corporate entities under their control including, but not limited to, Logojeeves, Inc. (“LogoJeeves”), Logo Bench d/b/a Logobench.com, and/or Angel Hostings. The Ghaznavis and their associated entities, affiliates, and alter egos (individually and collectively, the “Respondent Network”) operate a vast network of hundreds of fraudulent websites that extends well beyond the Domain Names. The Respondent Network has been the subject of investigations, complaints and legal proceedings by customers, technology journalists and other brand owners.

2. Their fraudulent activities have included operating web pages purporting to sell mobile application design services (“App Design Sites”) which are misleading, often stealing apps developed by others, making claims to have designed application for dozens of customers who have never worked with them and featuring fake content. The Respondent Network also launches websites purporting to offer logo design services (the “Logo Design Sites”). The Logo Design Sites also feature fake content, markets domain clipart which either belong to third parties or are part of the public domain and fail to deliver the services agreed with the customers. The Logo Design Sites are the subject of complaints by customers on customer review sites.

3. The Complainant became aware of Logojeeves some time in October 2016. Logojeeves operates a website connected to the domain name <logojeeves.com> (the “LJ Website”). The LJ Website purports to offer graphic design services similar to those of the Complainant. However, it appears that this operation is fraudulent as it fails to deliver the work product on time, to the specification requested by the customer, or at all. Customers’ requests for refunds or amendments to the designs are ignored.

4. The Domain Names were connected to websites offering the Services and displaying the content, layout and style very similar to the LJ Website (the “Websites”). This includes nearly identical terms of service and privacy policies for all the Websites, instant message chat support feature at the bottom right corner of the webpage and similar contact information. Customers of the Websites have confirmed that the agents have falsely represented that the Domain Names are affiliated with the Complainant. Further, all the Domain Names incorporate the Trade Mark and various descriptive terms.

5. GoDaddy the domain name registrar filed a lawsuit in the US federal court against the Ghaznavis in connection with over 30 domain names that include the GODADDY trade marks using the same modus operandi as described above. Some of the websites at those domain names bear the LogoJeeves contact details.

B. Respondent

The following Respondents filed these Responses:

Monica Lawrence, the registrant of Domain Names 18, 33, 34, 35, and 36 contended that there was no bad faith on “their” part as there was no intention to hurt the Complainant, its image or integrity. They claim that they have not used the Trade Mark and that the Complainant has not provided any evidence of the same. Nevertheless, they consent to the transfer of Domain Names 18, 33, 34, 35, and 36.

Joseph Lewis, the registrant of Domain Name 3 contended that there was no bad faith on their part and that they have not used the Trade Mark and that they are not affiliated with Logojeeves and the other Respondents and stated “if you guys think that we have to release this domain than we are ready but we have no affiliation with Logojeeves or other respondent we only answerable for this one domain which we have registered”.

A Response was filed in connection with Domain Names 1, 7, 11, and 32, and two other domain names which are not part of this Complaint under the name “Stewart” and the email address [email protected], which is the same email address of “Stuart Marsh”, the registrant of the Domain Name 32 <99designersinc.com>. He contended that he did not register these Domain Names in bad faith or to create a link with the Complainant. He consented to the transfer of Domain Names 1, 7, 11, and 32 to the Complainant.

6. Preliminary Procedural Issue

6.1 Consolidation of the Proceeding

Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent’s cases and extracted the following general principles:

Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.

The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing a complaint against the individual named respondents.

The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either the same person, entity or network and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant’s marks and harming consumers.

In addition to the above, a single Response was filed in connection with Domain Names 1, 7, 11, and 32 even though these Domain Names are nominally registered to different registrants – Angel Hostings, Daphne Magsi, Archie Nolan, and Stuart Marsh. This confirms the fact that the Domain Names are somehow connected to each other and/or under common control. The using of different identities, as in this case, is the typical method employed by cybersquatters to try to conceal their cybersquatting activities. Further, all three Responses were written and laid out in a very similar format which is further evidence that the person or entity behind these Domain Names were connected or one and the same.

Accordingly, applying the principles to the facts in this case, and the fact that there is an admission that the some of the Domain Names are registered by one person under different names, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. The Respondents may therefore be referred to as the Respondent.

6.2. Consent to Remedy

In view of the consent to transfer filed by the Respondent, the Panel confirms that the following 10 Domain Names are transferred to the Complainant:

The references to Domain Names from paragraph 7 below concern only the remaining 26 Domain Names.

7. Discussion and Findings

7.1. 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 a trade mark or service mark in which the Complainant has rights;
(ii) The Respondents have 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.

7.2 Substantive Analysis

A. Identical or Confusingly Similar

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

The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark is reproduced either in its entirety or almost in its entirety in the Domain Names. Every Domain Name uses the number “99”, some variation of the term “designs” (e.g., design, designer(s)) and descriptive or generic words and misspellings of the same including “coupon(s)”, “café”, “inc”, “deals”, “couponnz”, “shark(s)”, “offer(s)”, “pro(s)”, “dealz”, “offer”, and “sale”. The addition of such words do not prevent a finding of confusing similarity.

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 various generic domain suffixes. For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the 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.

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Respondent is not commonly known by any of the Domain Names or the Trade Mark nor does it operate a business or other organisations under the Trade Marks. It does not own any trade mark rights in the Trade Marks which comprise the Domain Names. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, and are not making any legitimate noncommercial or fair use of the Domain Names. Some of the Domain Names are being passively held and therefore does not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.

The active Websites have been set up to create an impression of association with the Complainant. In fact, for many of the Domain Names, there is evidence of representatives of the Respondent misleading customers that the Domain Names are connected to the Complainant.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register so many Domain Names comprising a trade mark which he has no connection to. 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.

C. Registered and Used in Bad Faith

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

The Panel is satisfied that the Respondent must have been aware of the Trade Marks when it registered the Domain Names. Many of the Domain Names offered identical services to the Complainant and registering so many Domain Names with different versions or combinations of the Trade Marks confirms it awareness and knowledge of the Trade Mark. It is implausible that the Respondent was unaware of the Complainant when it registered the Domain Names.

In 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.”

The fact that there is a clear absence of rights or legitimate interests coupled with no 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). In light of the above, the Panel finds that registration is in bad faith.

The Domain Names are also used in bad faith. The reasons are as follows:

(1) The active Websites could potentially divert Internet users and potential customers away from the Complainant and disrupt the business of the Complainant while potentially harming consumers as the Domain Names bear the Trade Mark and also the Respondent’s representatives have been found to actively attempt to mislead customers into thinking that they are employees, affiliates or somehow connected to the Complainant;

(2) Such use by the Respondent shows an intention on the part of the Respondent to attract for commercial gain by misleading Internet users into believing that the websites are authorised by or somehow connected to the Complainant.

(3) As evidenced above in the section relating to the consolidation of the proceeding, the Respondent have gone to great lengths to hide its identity in order to avoid the legal consequences of prolific cybersquatting activities it is engaged in.

(4) Even in the case of the websites which are inactive, the passive holding of the Domain Names does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the Respondent is acting in bad faith. UDRP panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. In this case, inferences of bad faith use in found in the following - as stated in the finding in favour of consolidation, the Respondent is clearly attempting to hide its identity, these Domain Names belong to the same registrant who also use Domain Names bearing the Trade Marks to mislead Internet users and the Respondents have failed to file a Response.

From the above, the Panel concludes that Domain Names were registered and are being used in bad faith.

8. 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 <99designcafe.com>, <99designcoupon.com>, <99designcoupons.com>, <99designcouponz.com>, <99designdeals.com>, <99designersinc.com>, <99designers.online>, <99designerspro.com>, <99designers.site>, <99designinc.com>, <99designoffer.com>, <99designoffers.com>, <99designpros.com>, <99designsale.com>, <99designs-coupon.com>, <99designs-coupons.com>, <99designscoupons.com>, <99designsharks.com>, <99designsinc.com>, <99designs-offer.com>, <99designsoffer.com>, <99designsoffers.com>, <99designspro.com>, <99designsshark.com>, <99designssharks.com>, <99designzdeals.com>, <99logodesigners.com>, <99logodesignsinc.com>, <999designdealz.com>, <99designersonline.com>, <99designers247.com>, <99designersllc.com>, <99designerscorp.com>, <99designersworld.com>, <99designerslab.com>, and <99webdesigners.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: November 14, 2019