The Complainant is Wikimedia Foundation Inc. of San Francisco, California, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web udaipur of Denver, Colorado, United States of America and Udaipur, Rajasthan, India. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011. On January 19, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2011, N LLC transmitted by email to the Center its verification 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 the Complainant on January 24, 2011, 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 amendment to the Complaint on January 25, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response but did communicate to the Center via email on January 29, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 24, 2011. 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 is the owner of numerous trademark registrations globally, including the following sample:
Trademark
Country
Status
Reg. No.
Reg. date
Class(es)
WIKIPEDIA
Australia
Registered
1154141
May 24, 2007
09, 35, 38, 41, 42
WIKIPEDIA
India
Pending
09 Int, 35 Int, 38 Int, 41 Int., 42 Int.
WIKIPEDIA
Int’l Registration
Registered
839132
December 16, 2004
41
WIKIPEDIA
Int’l Registration
Registered
907474
September 20, 2006
09, 35, 38, 41, 42
WIKIPEDIA
United States of America
Registered
3040722
January 10, 2006
41
WIKIPEDIA
United States of America
Registered
3773952
April 13, 2010
09, 14, 16, 18, 21 25 28
WIKIPEDIA
United States of America
Registered
3505429
September 23, 2008
09, 35, 38, 41, 42
WIKIPEDIA Design
United States of America
Registered
3594356
March 24, 2009
09, 14, 16, 18, 20, 21,25, 28
The Complainant registered the domain name , on January 13, 2001; and , on January 12, 2001. The Complainant operates a well-known website located at “www.” which resolves from “www.” providing information in the field of general encyclopedic knowledge via the Internet.
The Disputed Domain Name was registered on November 13, 2009.
The Respondent at the time of filing the Complaint used the Disputed Domain Name to point to a web page that displays links in connection with the Wikipedia website operated by the Complainant, cricket and business news and job advertisements placed via Google Inc. 5. Parties’ Contentions A. Complainant
The Complainant cites its registrations of the trademark WIKIPEDIA in numerous countries as prima facie evidence of ownership.
The Complainant submits that its trademark rights predate the Respondents’ registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark because the Disputed Domain Name wholly incorporates its registered trademark (citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.)
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name and infers that the Respondents have no trademark rights in or license to use the mark WIKIPEDIA.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business.” (citing Pancil LLC v. Domain Deluxe,WIPO Case No. D2003-1035 and Kate Spade LLC v. IQ Management Corporation,WIPO Case No. D2005-0109). On the issue of use, the Complainant invited the Panel to draw an adverse inference from the Respondents’ use of a privacy shield and further contends that the Respondents use the Disputed Domain Name for what it describes as a “splog” which it defines as a neologism for “spam-blog” or in other words a variation of a pay-per-click (“PPC”) landing page: a search engine marketing technique for directing traffic to a landing page containing sponsored links and advertisements. In this case, when the Disputed Domain Name is typed in, the website, to which the Disputed Domain Name resolves, “contained random news links about India along with numerous contextual-based advertisements delivered by Google.” B. Respondent
In its amendment of January 24, 2011, to the Complaint, the Complainant named “webudaipur” as the registrant, and identified “Protected Domain Services - Customer ID: NCR-1181691” as a “respondent”. The registrant did not reply to the Complainant’s contentions.
However, an entity purportedly related to the first named Respondent, “Protected Domain Services”, filed what it referred to as an “Informative Filing” on January 20, 2011. The Policy does not provide a mechanism for such a filing. This Panel finds that the “Informative Filing” is intended to operate as a Response containing, as it does, submissions and argument on behalf of the registrant of record despite its explicit disclaimer rejecting such association. Protected Domain Services has not disclosed its legal entity name or the name of a parent legal entity but does submit that it was not the registrant of the Disputed Domain Name and therefore is not a proper Respondent. Protected Domain Services, on behalf of the first named Respondent, submits also that it had no responsibility, role or beneficial interest in the actions of the second named Respondent and is an entirely legitimate and transparently operating a privacy service. It contends that the Panel should declare it not to be a Respondent in respect of the Disputed Domain Name and should make no findings of facts or liability against it. Protected Domain Services says that its role as a privacy service provider was confirmed in Viacom International Inc. v. Hicham Baktit Media,WIPO Case No. D2008-0079 and cites in support of its position: Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638; Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten,WIPO Case No. D2008-0463; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; Building Trade 1868 Kft. v. RegisterF,WIPO Case No. D2006-0396; Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC,WIPO Case No. D2007-0169; Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070; WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks,WIPO Case No. D2006-0975. 6. Discussion and Findings A. Identification of the Respondent
The proper respondent must first be identified as the Panel must be satisfied that any orders made will address the appropriate Respondent or Respondents.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated”. The Complainant’s original Complaint named as the Respondent a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs database prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent or Respondents. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent (or Respondents) by reasonable means.
On January 20, 2011, in response to a request, the registrar N LLC., sent an email to the Center advising that “webudaipur” and/or “web udaipur” was the registrant of the Disputed Domain Name.
“webudaipur” was then named as the second Respondent in the Complainant’s Amendment to the Complaint.
This Panel finds that in light of the record the named Respondent “Protected Domain Services - Customer ID: NCR 1181691” is a proper Respondent, whether on its own behalf or as an agent for “webudaipur” and “web udaipur”, and does so find for the following reasons. First, the Disputed Domain Name was registered to “Protected Domain Services - Customer ID: NCR 1181691”. Second, “Protected Domain Services - Customer ID: NCR 1181691” has filed a Reply disingenuously headed “Informative Filing” in an unsubtle attempt to advance arguments and submissions to the Panel while seeking to avoid falling within the ambit of the Policy. Third, “Protected Domain Services” has been named and found by other Panelists to be a proper Respondent in a number of other proceedings (e.g.: Eli Lilly and Company v. Protected Domain Services, Customer ID: NCR-1221337/JM Networks,WIPO Case No. D2010-1477; RapidShare AG, Christian Schmid v. Protected Domain Services/Dmytro Gerasymenko,WIPO Case No. D2010-1071). This Panel infers from this omission that the “Informative Filing” is incomplete and therefore is unreliable and can be given little weight. Fourth, it is unclear whether the second named respondent has a separate legal personality. Fifth, this Panel has regard to the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243 and is satisfied that it is appropriate and fair to join Protected Domain Services - Customer ID: NCR 1181691 jointly as a Respondent. This Panel also finds that “webudaipur” and “web udaipur” is also a proper Respondent (see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320). Jointly and severally these parties will be referred to as the Respondent.
As noted, having regard to the Complainant’s submissions and the location of the principal office of the registrar, it appears that the applicable mutual jurisdiction is Colorado in the United States of America.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondents by reasonable means. Prima facie evidence of this is the delivery reports received by the Center after the notification of the Complaint to the Respondent. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. B. Identical or Confusingly Similar
The Complainant has produced evidence to demonstrate that it has registered trademark rights in the mark WIKIPEDIA in the United States, European Union and in numerous other countries. The Panel finds that the Complainant has rights in the mark WIKIPEDIA that date back to December 2004.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark, the Panel observes that the Disputed Domain Name comprises (a) the country name “India”, followed by; (b) an exact reproduction of the Complainant’s trademark WIKIPEDIA; and (c) followed by the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded when considering identity or confusing similarity. The relevant comparison to be made is with the dominant part of the Disputed Domain Name: “indiawikipedia”.
It is also well-established that the addition in a domain name of a geographic name to a trademark is not sufficient to make the domain name distinguishable in relation to the trademark at issue for purposes of the Policy (see: Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Alstom v. Yulei,WIPO Case No. D2007-0424; and Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601). The trade mark WIKIPEDIA is “a distinctive coined name combining ‘wiki’ (a term for a website or software allowing easy creation and editing of interlinked web pages) and ‘pedia’ (the last syllables of ‘encyclopedia’), suggesting a wiki-based encyclopedic reference website” (Wikimedia Foundation Inc. v. Jamie Wells,WIPO Case No. D2010-0269). The addition of the country name “India” to the Complainant’s trademark does not serve to differentiate the Disputed Domain Name from the trademark. The Respondent appears to have engaged in conduct designed to create a domain name that is confusingly similar to the Complainant’s trademark and so create confusion amongst Internet users who are seeking the Complainant or information about Wikipedia.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or a legitimate interest in the disputed domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that a complainant need only put forward a prima facie case that a respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name may coincidentally and unintentionally correspond to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see National Trust for Historic Preservation, supra; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). The rationale for this is that when a widely used generic term is coupled with a geographic location, there is a possibility that it will enjoy generic recognition, rather than be recognized for its association with a particular trademark. However, this Panel finds that the Disputed Domain Name resembles the Complainant’s trademark WIKIPEDIA, as the coined word “Wikipedia” is not a dictionary word, so the Respondent makes no ground on this issue.
The Complainant’s evidence demonstrates that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a page composed of advertisements and links including the Complainant’s own trademark, thereby attempting illegitimately to intentionally trade on the widely known mark of another to lure Internet users to the Respondents’ website. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 the panel stated that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a webpage that displays links in connection with cricket and news as well as advertisements delivered by Google.
In the absence of substantive arguments in the Response to rebut the persuasive prima facie case advanced by the Complainant, the Panel finds for the Complainant on the second element of the Policy. D. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [(relevantly)]:
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product . . . .”
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries to ensure that the registration of the Disputed Domain Name does not infringe or violate the third party rights.
The trademark WIKIPEDIA is so widely known around the world for providing information in the field of general encyclopedic knowledge via the Internet that it is inconceivable to this Panel that the Respondent might have registered a domain name similar to this mark without knowing of it. (See TPI Holdings, Inc. v. Roxane Gwyn,WIPO Case No. D2009-0824; TPI Holdings, Inc. v. Elaine Noe,WIPO Case No. D2009-0568; TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361; TPI Holdings, Inc. v. Alfredo Rowland,WIPO Case No. D2008-0960; TPI Holdings Inc. v. Shola Ajiboye,WIPO Case No. D2007-1019). In this Panel’s view, the absence of such knowledge on the Respondent’s part is most unlikely and finds that the brand WIKIPEDIA is widely known throughout the world. In an analogous case, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the panel found that a claim that the domain name at issue, , could have been registered without knowledge of the complainant’s trademark not just implausible, but incredible.
Nor can a respondent willfully shut its eyes in case its chosen domain name infringes the rights of another. Paragraph 2 of the Policy clearly states: “It is your [the domain name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The Respondents’ apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, for example by conducting trademark searches or search engine searches, supports in the Panel’s view a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oreal v. Domain Park Limited,WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448).
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent “webudaipur” and/or “web udaipur”’s use of a privacy shield. The Disputed Domain Name resolves to a webpage containing advertisements and links including a link to the website operated by the Complainant. It is not a website critical of, or satirising, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose for which the Respondent “webudaipur” and/or “web udaipur” has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2004-0453; CCM IP S.A. v. Traverito Traverito,WIPO Case No. D2007-0542; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647).
Two further conclusions can therefore be drawn about the Respondents from their use of the Disputed Domain Name resolving to a webpage containing links, Google advertisements and with a direct link to the website operated by the Complainant. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, in this Panel’s view, it is in breach of the “N Domain Name Registration Agreement” for breach of the acknowledgment and warranty [at para 9]: “You acknowledge and agree that it is your responsibility to determine whether the registration and use of your domain name infringes the rights of any third party or violates any applicable laws or regulations. You warrant that neither the registration of your domain names, nor the manner in which they are or will be used, infringes the intellectual property rights or other legal rights of any third party.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
This Panel finds that the Respondents have taken the Complainant’s widely known trademark WIKIPEDIA then added a geographical name, in this case the country “India”, and by incorporating it into the Disputed Domain Name, have engaged in diverting Internet users to their webpage for commercial gain without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the Complainant’s trademark. This amounts to funneling unsuspecting Internet users to the website taking advantage of the confusion created by the similarity of the Disputed Domain Name to the Complainant’s trademarks: the very essence of bad faith use under the UDRP.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: March 9, 2011
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