WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quora, Inc. v. Matthew Pryse, Jola Pty Ltd

Case No. DAU2020-0005

1. The Parties

The Complainant is Quora, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is Matthew Pryse, Jola Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <quora.com.au> is registered with NetAlliance Pty Ltd trading as Netfleet.com.au.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to NetAlliance Pty Ltd trading as Netfleet.com.au a request for registrar verification in connection with the disputed domain name. On March 10, 2020, NetAlliance Pty Ltd trading as Netfleet.com.au transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on April 6, 2020. 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 operates a platform under its QUORA trade mark at <quora.com> that enables users to create, organize, and share content, mainly in question and answer form. It has operated since 2010 from its base in the United States and now has more than 300 million monthly website visitors, approximately half of which come from outside the United States. The Complainant owns various trade mark registrations around the world for its QUORA mark, including Australian trade mark registration No. 1653006 for the combined QUORA word and device mark which was registered in May 2015 with a priority date of October 17, 2014.

The disputed domain name was first registered on July 16, 2011 and the Respondent acquired it on August 10, 2019. Since that time the disputed domain name has resolved to a parked webpage hosted by Netfleet and has also been listed for sale by the Respondent on “Sedo.com”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its QUORA mark as set out above. It says that the disputed domain name incorporates its mark in its entirety, which is sufficient to support a finding of confusing similarity and that the second level domain name designator “.com.au” has no material role in assessing similarity or identicality.

The Complainant asserts that the Respondent has only ever used the disputed domain name to divert to a parked hosting page operated by Netfleet or to offer the disputed domain name for sale at “Sedo.com” and has never made either a bona fide use or demonstrable preparations to use the disputed domain name. It submits that neither of these uses is indicative of a legitimate right or interest. The Complainant also says that it has not authorised or consented to the use of the QUORA mark by the Respondent and that the Respondent is not commonly known by the mark. Further, it adds that there is nothing to indicate that the Respondent is making a legitimate, noncommercial, or fair use of the disputed domain name.

The Complainant asserts that the Respondent had at least constructive knowledge of the Complainant’s QUORA mark when it acquired the disputed domain name. The Complainant asserts that its QUORA mark has enjoyed international fame based on the Complainant’s extensive use and promotion of its services worldwide since 2010 and that based on previous decisions this is enough to infer knowledge. It also says that its QUORA mark is a coined and distinctive mark with no dictionary meaning in English, Latin, or otherwise, and the fact that the Respondent chose to acquire the disputed domain name, which is identical to the Complainant’s mark, is in the circumstances a further indication of bad faith.

It further says that the mere parking of the disputed domain name by the Respondent on the Netfleet page qualifies as a passive holding of the disputed domain name in bad faith and that this is especially the case because the Complainant’s mark is well known and the disputed domain name is identical to the Complainant’s name and trade mark, thus diverting or misleading potential web users from the websites that they are trying to visit.

Further, the Complainant says that it made the Respondent three offers for USD 100, USD 250, and for USD 500 for the acquisition of the disputed domain name through the website at “Sedo.com”, but obtained no response. The Complainant suggests that these circumstances coupled with the fact that the disputed domain name is identical to its mark and that the Respondent has made no bona fide use of it, other than offering it for sale, supports an inference that the Respondent is seeking to sell the disputed domain name for far more than its documented out of pocket costs.

Finally, the Complainant asserts that the Respondent is intentionally trying to attract Internet users to the website to which the disputed domain name diverts by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns various trade mark registrations around the world for its QUORA mark, including Australian trade mark registration No. 1653006 for the combined QUORA word and device mark which was registered on May 13, 2015. Although this is a combined word and device element, the word mark QUORA is a particularly distinctive element of the overall trade mark and in the Panel’s view has equal significance to the Q logo being the other key element of the mark. On this basis, the Panel finds that the Complainant owns registered trade mark rights in its QUORA word mark.

The disputed domain name wholly incorporates the QUORA word mark and features no other element before the second level “.com.au” domain name root and is therefore identical to the Complainant’s QUORA mark (also to the Complainant’s Australian trade mark registration No. 1653006 for the combined QUORA word and device mark QUORA mark, as only the textual portions are capable of representation in a domain name). As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has only ever used the disputed domain name to divert to a parked hosting page operated by Netfleet or to offer the disputed domain name for sale at “Sedo.com” and has never made either a bona fide use or demonstrable preparations to use the disputed domain name. It says that it has not authorised or consented to the use of the QUORA mark by the Respondent and that the Respondent is not commonly known by the mark. Further, the Complainant has submitted that there is nothing to indicate that the Respondent is making a legitimate, noncommercial, or fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut the Complainant’s case, therefore, and for the reasons set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered or Subsequently Used in Bad Faith

It is only necessary under this element of the Policy for the Complainant to demonstrate that it has registered the disputed domain name in bad faith, or that it has subsequently registered the disputed domain name in bad faith.

The Complainant’s QUORA trade mark is a highly distinctive coined term which based on the Complainant’s submission has no meaning in English (or Latin). By the date on which the Respondent acquired the disputed domain name (August 2019) the Complainant had already been using its mark for approximately 9 years from its main business platform at <quora.com>. Although there is very little on the record to substantiate the degree of renown attaching to the Complainant’s mark, it has submitted that its platform enjoys 300 million monthly global website visitors, which constitutes a very significant web presence and no doubt some portion of those visitors are from Australia. In addition, by the date of registration of the Respondent’s acquisition of the disputed domain name, the Complainant had registered its Australian trade mark registration

In these circumstances the Panel infers that the Respondent more likely than not acquired the disputed domain name in 2019 with knowledge of the Complainant’s on-line business and trade mark rights, at the least through use if not also registration in the QUORA mark. It seems to the Panel more than likely that the Respondent, in making the decision to acquire the disputed domain name in August 2019 if he did not already know of the Complainant, would have undertaken a search for the QUORA name on the Internet and finding the Complainant’s website and realizing the amount of traffic directed to it, thought that it could take advantage of this in one way or another by acquiring the disputed domain name. This amounts to registration of the disputed domain name in bad faith. Even if this was not the case however, the Panel finds that the Respondent has used the disputed domain name in bad faith for the purposes of the Policy as set out below.

To date the disputed domain name remains parked. The Complainant asserts that this amounts to passive use by the Respondent in bad faith. The factors that panels have previously considered to amount to a passive holding in bad faith are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (which is more recent and, importantly, based on exponentially more UDRP case law experience, but largely consistent with the approach also described at paragraph 3.2 of a the auDA Overview of Panel Views on Selected auDRP Questions First Edition) and include: (i) the degree of distinctiveness or reputation of the Complainant’s mark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the disputed domain name may be put.

The Panel has already found that the Complainant’s mark is distinctive. The Respondent has failed to provide any evidence of actual or contemplated good faith use and has failed to respond to the Complainant’s offers to acquire the disputed domain name. While there is no evidence that the Respondent has sought to mask his identity there is nothing on the record to explain his choice to acquire the disputed domain name in circumstances that it wholly incorporates the very unusual coined term QUORA and in circumstances that the Complainant enjoys such a substantial amount of monthly web traffic to its domain name at <quora.com>. In these particular circumstances the Panel considers that the Complainant has made out the requirements for a finding of passive holding in bad faith.

Even if this was not the case however, the Respondent has sought to put the disputed domain name on the market for sale through “Sedo.com”. The Complainant sought to acquire it on three occasions through the usual process on “Sedo.com”, with no response from the Respondent, even for the final offer for USD 500. The Panel infers from this pattern of conduct by the Respondent that it is seeking a much higher price for the disputed domain name than USD 500, a sum that represents more than the ordinary “out of pocket” registration costs for registration for the disputed domain name – at least, in this regard, the Panel notes that the Respondent has not put any evidence on record as to the price he paid for the disputed domain name.

In all of the circumstances, including that the Complainant’s QUORA mark is a coined and distinctive term that has through very considerable online use become well reputed and that the Respondent has not to date sought to use the disputed domain name for any bona fide purpose but has parked it and listed it for sale with “Sedo.com”, it appears more likely than not that the Respondent acquired the disputed domain name with a view to re-selling it for a sum far in excess of any documented out of pocket registration costs in terms of paragraph 4(b)(i) of the Policy and that this also amounts to evidence of use in bad faith.

Panels under the auDRP have generally found that registration of a disputed domain name that consists solely of the complainant’s trade mark or name has the effect of preventing the complainant from reflecting its mark in the domain name and is evidence of bad faith (see section 3.1B of the auDA Overview of Panel Views on Selected auDRP Questions First Edition). In this case the disputed domain name (excepting the “.com.au” element) consists solely of the Complainant’s QUORA mark and accordingly the Panel also finds that the requirements of paragraph 4(b) (ii) of the Policy are fulfilled and that this is further evidence of the Respondent’s bad faith.

For these reasons, the Panel finds that the Respondent has either registered or used the disputed domain name in and faith and as a consequence the Complaint also succeeds under this element of the Policy.

7. Decision

For all 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 <quora.com.au> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: April 9, 2020