The Complainant is WordPress Foundation of San Francisco, California, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar 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 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 August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 26, 2013. 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.
The language of this administrative proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainant operates a software and services business operating in numerous countries providing one of the most popular self-hosted blogging and Internet publishing tools in the world, used on millions of websites, and seen by tens of millions of people every day in hundreds of different languages. The Complainant holds registrations for the WORDPRESS trademark and variations of it in numerous countries including the United States of America (“U.S.”), which it uses to designate a downloadable software program for use in design and managing content on a website. Its U.S. registration No. 3201424 has been in effect since 2007 but the mark has been used since 2004.
The Complainant conducts business on the Internet using numerous domain names containing the word “wordpress” including and with its websites relating to its blogging software business resolving from these domain names.
The disputed domain name was created on July 16, 2006 and has subsequently resolved to a parking web page containing a variety of advertisements and links including some that relate to blogging software. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark WORDPRESS in various countries as prima facie evidence of ownership.
The Complainant submits that the mark WORDPRESS is well-known (citing media mentions in the New York Times, cN, San Francisco Chronicle, USA Today and elsewhere). The Complainant submits that its rights in that mark predate the Respondent’s registration of the disputed domain name . It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the WORDPRESS trademark and that the similarity is not removed by the obvious misspelling by transposition of the letters “o” and “r” where they first appear.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in or license to use the Complainant’s trademark (presumably alluding to Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). The Complainant also contends that “the Respondent has used the Domain Name to pass itself off as the Complainant in order to attract traffic to its website”. The Respondent contents that to do so is not a bona fide offering of goods or services or a legitimate noncommercial or fair use (citing Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258).
Finally, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules. On the issue of registration, the Complainant submits “Respondent was nevertheless put on notice of Complainant’s rights in the WORDPRESS Marks through Complainant’s extensive use of the Marks and common-law rights which predate the creation date of the domain.”. On use, the Complainant submits that by using a version of the Complainant’s WORDPRESS mark in the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks because the disputed domain name is used in a manner that “redirects users. This appears to be false, third-party, information-gathering gift offer. Upon information and belief, each time a searcher submits its information through this site, Respondent receives compensation from the third-party website owner who may then use the visitor’s information for purposes of marketing or even identity theft.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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. Identification of 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 has named and proceeded against Fundacion Private Whois, Domain Administrator of Panama, Panama.
Under paragraph 3(b)(v) of the Rules, the Complaint is required, inter alia, to provide the name of the respondent and contact information. The ICANN Registrar Accreditation Agreement (2009/2013) at paragraph 3.7.7.1 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them.” In other words, the registrant and the registrar are required to keep in contact. Having regard also to the commercial benefit derived by the privacy service and onerous obligations incumbent on a complainant, this Panel finds it is procedurally efficient, and equitable, to permit joinder of the privacy service named as the Respondent.
Finally, while the Center must attempt reasonably to contact the Respondent, it can do no better than to send communications to the contact information on official record or provided in the Complaint (or meant to be provided by the Registrar in its Registrar Verification Response). Proof of service is not required. Paragraph 2 of the Rules use the words “calculated to achieve actual notice”, not “actually achieve actual notice”. As no Response was filed, the Panel has reviewed the record to ensure that the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged this responsibility. B. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark WORDPRESS in the U.S. and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark WORDPRESS pursuant to U.S. Trademark Registration No. 3201424 from January 3, 2007, which does not predate registration of the disputed domain name. Even so, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark WORDPRESS.
However, it is necessary for the Panel to give consideration to whether the Complainant has common law rights in WORDPRESS. That is so because, although the time when a Complainant acquires its trademark rights may not be significant for the purposes of paragraph 4(a)(i) of the Policy, it may well be important during a consideration of paragraphs 4(a)(ii) and (iii) of the Policy. It is therefore necessary to consider whether the Complainant has common law trademark rights and, if so, whether they date back to a time when the disputed domain name was not registered.
The Complainant has submitted solid evidence concerning the recognition of the word “wordpress” as a trademark and other indicia of secondary meaning that has occurred and evidence that it has been known in the trade or publicly as the source of blogging software going back to around 2004. This Panel finds the Complainant has, for the purposes of the Policy, carried its burden of proving that it enjoys common law rights in WORDPRESS.
The Panel also finds that the mark WORDPRESS is well-known: see for example WordPress Foundation v. duanxiangwang, WIPO Case No. D2011-0836 (“The Panel accepts that the WORDPRESS trade mark is a well-known trade mark in the area of blogging and Internet publishing”).
Turning to whether the disputed domain name is identical or confusingly similar to the WORDPRESS trademark, the Panel observes that the disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark (b) with the letters “o” and “r” transposed where they first appear (c) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made is with the second level portion of the disputed domain name “wrodpress”.
It is also well established that where a domain name incorporates a common and obvious misspelling of a complainant’s well known and distinctive registered trade mark, it is confusingly similar to that mark despite the misspelling: see WordPress Foundation v. duanxiangwang, supra (“The Domain Names [, and ] are all common and obvious misspellings of the Complainant’s registered trade mark, WORDPRESS”).
This Panel finds, consistently with a long line of typosquatting decisions by other Panels, that the transposition of the letters “o” and “r” where they first appear do not serve to adequately distinguish the Disputed Domain Name and so it remains confusingly similar to the registered trademark: (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7).
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 Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The disputed domain name is therefore confusingly similar to the WORDPRESS 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 the respondent may demonstrate rights or a legitimate interest in the domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the 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 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 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 respondent’s rights or legitimate interest in the relevant domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the 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 2.0, paragraph 2.1).
The Complainant contends that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark and contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has also established that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This Panel finds that the Respondent is not known as “wrodpress” and is not making a fair use of that name within the meaning of paragraph 4(c)(ii)-(iii) of the Policy. This Panel also finds that the Respondent is not using the domain name “in connection with a bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy. Although the Respondent does offer blogging information and links at its website, the offering is not “bona fide” because the Respondent is using the disputed domain name to divert users to its own website through confusion (see: Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413; Universal City Studios, Inc. v. G.A.B. Enterprises,WIPO Case No. D2000-0416; AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937).
In light of this and in the absence of any contention of an interest, legitimate or otherwise, by the Respondent, the Panel finds that the Respondent had no rights or legitimate interest in the disputed domain name or the WORDPRESS trademark which the disputed domain name seeks to exploit. This Panel therefore finds that the Respondent is making an illegitimate commercial use of the disputed domain name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s well-known mark in order to attract Internet users to its website and has been exploiting a typing mistake for the disputed domain name to divert Internet traffic to its web page.
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. you have 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 you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See: M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
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. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal 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).
The trademark WORDPRESS is so well-known globally for blogging software that it is inconceivable, in this Panel’s view, that the Respondent was unaware of the WORDPRESS trademark when it registered a domain name similar to the mark without knowing of it. In WordPress Foundation v. duanxiangwang, supra, the Panel stated: “The fact the Domain Names are deliberate misspellings of the WORDPRESS mark evidences the fact that the Respondent either knew or ought to have known that of the Complainant’s use and rights in the WORDPRESS trade mark. The content of the websites connected to the Domain Names indicates actual knowledge on the part of the Respondent of the WORDPRESS brand.”.
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 Respondent has taken the Complainant’s trademark WORDPRESS and, with a deliberate misspelling, incorporated it in the disputed domain name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Respondent’s web pages which either engage in “typosquatting” or offer products and services for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: October 10, 2013
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