The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“USA”), internally represented.
The Respondents are Domain Administrator, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia, Yeonju Hong, Dzone Inc. of Gwangju, the Republic of Korea and Mike Kerry, Dzone Inc. of Gwangju, the Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing multiple underlying registrant and contact information for the disputed domain names which differed from the named Respondent (Domain Administrator, Whois Privacy Services Pty Ltd) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint in light of the Registrar’s disclosure. The Complainant filed an amended Complaint on July 14, 2015. However, the amended Complaint only added as named Respondents Yeongju Hong and Mike Kerry, Dzone Inc., in relation to the following disputed domain names:
Yeonju Hong, Dzone Inc. of the Republic of Korea
Yeonju Hong, Dzone Inc. of the Republic of Korea
Yeonju Hong, Dzone Inc. of the Republic of Korea
Mike Kerry, Dzone Inc. of the Republic of Korea
The amended Complaint did not name Jeff Lander (the Registrar-confirmed registrant of ) as a Respondent. The Complainant named Whois Privacy Services Pty Ltd again, as the Respondent in connection with said disputed domain name.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2015.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on August 14, 2015. 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.
On September 7, 2015, the Center notified to the Parties of the Procedural Order No. 1, by means of which the Panel requested the Complainant to clarify its Complaint, by either:
a) indicating whether it believes Jeff Lander and Yeongju Hong / Mike Kerry, Dzone Inc. are the same or connected entities such as to permit the proceeding to continue in relation to all of the disputed domain names; or
b) should the Complainant not wish to provide consolidation arguments or in the event the Complainant was unable to argue a case for consolidation to the satisfaction of the Panel, indicate the Complainant’s preference:
- whether the Complainant wished for the present proceeding to continue only in respect of the disputed domain names , , , and with an order of dismissal without prejudice as to the disputed domain name ; or
- to progress formally as two separate proceedings.
The Order also provided the Respondents and Mr. Lander an opportunity to respond to the same.
The Parties did not file any submission in response to said Procedural Order. 4. Factual Background
The Complainant is a non-profit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual educational content.
The Complainant manages projects such as Wikipedia Commons, Wiktionary, Wikivoyage and Wikipedia, among others. According to the Complainant’s arguments, overall, these projects represent one of the ten most-visited web properties in the world.
Wikipedia is the oldest and largest of all of the Complainant’s projects. Said project offers over 33.5 million articles in 288 languages and has over 500 million visitors each month.
The Complainant indicates that Wikipedia is the most comprehensive and widely used reference work ever compiled.
The Complainant owns the following trademark registrations, among others: Registration No. Trademark Country Class Registration Date
3040722
WIKIPEDIA
United States of America
41
January 10, 2006
3505429
WIKIPEDIA
United States of America
35, 38 and 41
September 23, 2008
3773952
WIKIPEDIA
United States of America
09, 14, 16, 18, 21, 25 and 28.
April 13, 2010
4070951
WIKIPEDIA
United States of America
09, 16, 18, 21, 25, 28, 35, 38, 41 and 42
December 13, 2011
839132
WIKIPEDIA
European Union and Japan
41
December 16, 2004
907474
WIKIPEDIA
Inter alia, the Republic of Korea
9, 35, 38, 41 and 42
September 20, 2006
In addition, the Complainant owns the following domain names: Domain Name Registration Date
December 1, 2001
December 13, 2004
August 10, 2004
The disputed domain names , , , , and were registered on July 29, 2004, July 12, 2006, April 28, 2010, May 4, 2006 and January 19, 2008, respectively. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
That it has extensive common law rights over the trademark WIKIPEDIA and has acquired distinctiveness in said trademark since its first use in 2001.
That even though it is a non-profit organization, thousands of contributors and volunteers have spent a considerable amount of time and effort researching and developing the services that are promoted under the WIKIPEDIA trademarks.
That the WIKIPEDIA trademarks are extremely well-known in the United States and throughout the world. A. Identical or Confusingly Similar
That the disputed domain names are nearly identical and confusingly similar to its trademarks and domain names.
That the disputed domain name contains the WIKIPEDIA trademark with the addition of the letter “i”.
That the disputed domain name contains the full WIKIPEDIA mark and differs only in one letter from the WIKIMEDIA FOUNDATION mark.
That the other disputed domain names , , add different types of letters to the WIKIPEDIA mark, which constitutes typosquatting.
That some of the disputed domain names are so similar to the trademarks of the Complainant that word processing autocorrect software suggests correcting “wikipediia” to “wikipedia”, assuming that the user has made a typing error.
That the overall impression deriving from the disputed domain names is that they are connected to the Complainant and its trademarks.
That the fact that the Respondents have altered or removed one letter from the disputed domain names , , and gives them a greater tendency to be confusingly similar to the WIKIPEDIA mark.
That when the disputed domain names are compared visually to the WIKIPEDIA marks, they also appear as confusingly similar.
That these methods of typosquatting have been considered as “deliberate” by previous UDRP panels, demonstrating an attempt to confuse Internet users. B. Rights or Legitimate Interests
That the Respondents registered the disputed domain names through a privacy service in order to hide their identities, which is why it should be assumed that the Respondents are not commonly known by the disputed domain names.
That the Complainant has never authorized or otherwise condoned or consented to the Respondents’ registration of the disputed domain names, and has not licensed the Respondents to use the WIKIPEDIA mark.
That the similarity between the Complainant’s trademarks and the choice of the Respondents to engage in typosquatting practices, indicate that there are no rights or legitimate interests on the side of the Respondents.
That there are no bona fide offerings of goods or services in the websites to which the disputed domain names resolve, due to the fact that the websites to which the disputed domain names and resolve, direct to malware pages. The websites to which the disputed domain names and resolve, direct to pages with pay-per-click advertisements, and the website to which the disputed domain name resolves, diverts traffic.
That all of these uses have been deemed by other UDRP panels as illegitimate and unfair, which is why the Respondents have no rights or legitimate interests over the disputed domain names.
That right after the filing of this Complaint, the Respondents changed the registrant information pertaining to the disputed domain names, from Domain Administrator, Whois Privacy Services Pty Ltd to Yeonju Hong/ Mike Kerry, Dzone Inc.
That taking the decisions of other UDRP panels into account, it can be assumed that the Respondents are, in fact, the same entity and/or that the disputed domain names are under common control. C. Registered and Used in Bad Faith
That the Respondents are using the disputed domain names willfully, in bad faith, in complete disregard of the Complainant’s exclusive rights to use and authorize the use of its trademarks.
That the use of a well-known mark to maliciously divert Internet users constitutes an instance of bad faith and registration of domain names containing well-known trademarks is indicative of bad faith.
That by using the disputed domain names, the Respondents have intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s well-known marks. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
As the Respondents have failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (see Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Preliminary issue: Consolidation of Respondents
Consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve.
As at the date the Complaint was filed with the Center, “Whois Privacy Services Pty Ltd” was recorded as the registrant of the disputed domain names in the publically available WhoIs. “Whois Privacy Services Pty Ltd” is the “privacy” service of the Registrar.
In response to the Center’s request for registrar verification in relation to disputed domain names, the Registrar identified the underlying registrant of the disputed domain names as follows:
- Yeonju Hong, Dzone Inc. of the Republic of Korea
- Yeonju Hong, Dzone Inc. of the Republic of Korea
- Yeonju Hong, Dzone Inc. of the Republic of Korea
- Mike Kerry, Dzone Inc. of the Republic of Korea
- Jeff Lander of Panama.
The Center provided the underlying registrant information disclosed by the Registrar to the Complainant and requested the Complainant either to add the disclosed registrants as named respondents providing arguments that they are under common control, or to file a separate complaint for domain name(s) associated with different registrants.
The Complainant filed an amended Complaint, adding Yeongju Hong / Mike Kerry, Dzone Inc. as a named Respondent, but noted that the registrant remained the same for as Whois Privacy Services Pty Ltd, attaching relevant WhoIs search results.
While the Panel notes that the underlying registrant information for was not publically available, this information was confirmed by the Registrar and provided to the Complainant in the Center’s communication on July 13, 2015.
In light of this disclosure, consolidation as to this registrant should have been addressed by the Complainant, either in the amended Complaint or in response to the Panel Procedure Order No. 1.
As Jeff Lander of Panama appears to be at least nominally, separate from Yeongju Hong / Mike Kerry, Dzone Inc. and in the absence of any arguments by the Complainant indicating otherwise, the Panel is of the view that it is inappropriate for this proceeding to continue as a single proceeding in respect of all of the disputed domain names.
Therefore, the disputed domain name will not be analyzed under this proceeding and the Panel orders that the Complaint is terminated without prejudice as to the disputed domain name .
Nevertheless, this Panel leaves the rights of the Complainant intact, regarding the disputed domain name , should the Complainant decide to file another complaint under the Policy in relation to said disputed domain name.
In relation to the remaining disputed domain names , , and , the Panel finds that the fact that the Respondents Yeongju Hong and Mike Kerry (henceforth, the “Respondents”) belong to the same organization (Dzone Inc.) is enough to indicate that common control is being exercised over such disputed domain names. B. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for WIKIPEDIA. This Panel agrees with other UDRP panels that this trademark is widely known due to its global presence and recognition.
The disputed domain names , , and are confusingly similar to the Complainant’s trademark WIKIPEDIA.
The disputed domain name incorporates the trademark WIKIPEDIA and adds a letter “i” in the final part of said trademark, constituting a typosquatting case.
The disputed domain name changes the letter “e” of the Complainant’s trademarks WIKIPEDIA for a letter “s”. This is also a typosquatting case.
The disputed domain name changes the letter “k” of the Complainant’s trademarks WIKIPEDIA for a letter “c”. The domain name is clearly confusingly similar to the trademark WIKIPEDIA. The exchange of the letter “k” for the letter “c” does not diminish the risk of confusion.
From a graphical standpoint, the similarity is evident. There are also phonetical and ideological similarities between the disputed domain names and the trademark WIKIPEDIA.
The minimal changes made by the Respondents to the different disputed domain names are insignificant for the purposes of this analysis, as they do not provide any distinctiveness to the disputed domain names , and , because the disputed domain names do not create a new visual, graphical or orthographical impression when compared to the Complainant’s trademarks (seeSanofi v. Contact Privacy Inc. Customer 0132380420 / ICS inc.,WIPO Case No. D2013-0367; see alsoExpress Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302).
Moreover, common misspellings of trademarks are typically found to be confusingly similar to the trademark, where the misspelled trademark remains the dominant component of the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.10.
The disputed domain name comprises in its entirety the trademark WIKIPEDIA and is confusingly similar to it. The addition of the descriptive term “foundation” does not prevent users and consumers from confusion with the Complainant’s trademarks. Moreover, it is likely that said term will increase the confusing similarity due to its resemblance to the Complainant’s tradename.
The addition of the generic Top-Level Domain (“gTLD”) “.com” or “.net” is immaterial for purposes of the first element of the Policy, because they typically do not provide any distinctiveness to a domain name.
This Panel finds that the disputed domain names , , and are confusingly similar to the Complainant’s trademark. The first requirement of the Policy has been fulfilled. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (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 Respondents have not submitted any evidence showing actual bona fide use, or preparations to use the disputed domain names with a bona fide offering of services, nor have they demonstrated being commonly known by the disputed domain names, or that they are making a legitimate noncommercial or fair use of the disputed domain names.
The record shows that the websites to which the disputed domain names and resolve, have been parked under the same pay-per-click program. These websites feature sponsored links that are likely to generate revenue in favor of the Respondents, a practice that constitutes commercial bad faith, with the intention to misleadingly divert consumers for commercial gain (see Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708; Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404; Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258).
The evidence submitted by the Complainant shows that the website to which the disputed domain name resolves, redirect users to malware pages, a fact that is harmful to users, and which constitutes unfair use by the Respondents (see Spoke Media Holdings, Inc. v. Andrey Volkov,WIPO Case No. D2010-1303; Adidas Ag v. Domain Manager,WIPO Case No. D2014-1414).
Moreover, the website to which the disputed domain resolves, redirects users to sites where the user is invited to earn money by completing online surveys, a situation that is indicative of the Respondents’ illegitimate use of said disputed domain name in a commercial manner. Personal data of Internet users is being put at risk by means of this conduct (see Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).
In the Panel’s view, the Respondents in this case are not entitled to register domain names that incorporate the company name and trademarks of the Complainant, because this conduct can cause confusion among Internet users and consumers (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113).
There is no evidence on the record that would indicate that the Respondents have any rights to, or legitimate interests in the disputed domain names. Mere registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092).
Since the Respondents are making a commercial use of the disputed domain names without permission or consent of the Complainant, by creating an impression of affiliation or sponsorship with the Complainant, the Panel finds no rights or legitimate interests on the side of the Respondents.
The fact that the disputed domain redirects users to malware pages aggravates the conduct of the Respondents.
Therefore, the Panel finds no rights or legitimate interests on the side of the Respondents. The second requirement of the Policy has been fulfilled. D. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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 its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The trademark WIKIPEDIA is widely known according to the evidence filed by the Complainant, which was not rebutted by the Respondents.
Several UDRP panels have recognized the notoriety and fame of said trademark (see Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises,WIPO Case No. D2011-0911; Wikimedia Foundation Inc. v. / Rokibul Islam - (Rony),WIPO Case No. D2011-1031; Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798). This Panel agrees.
The Respondents were likely aware of the Complainant’s trademarks, given the registration of the WIKIPEDIA mark in the Republic of Korea, where the Respondents appear to be located, the widespread recognition and use of the mark including in the Republic of Korea and multiple domain name registrations by the Respondents incorporating typographical variances of the Complainant’s mark.
Since the exposure of WIKIPEDIA is vast in most of the world, the registration and acquisition of the disputed domain names constitutes bad faith by the Respondents (see NBC Universal Inc. v S/ Michele Dinoia,WIPO Case No. D2007-0077; and ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287). The Respondents likely knew of the existence of the trademark WIKIPEDIA.
Previous UDRP panels have found bad faith in the use of a domain name that incorporates a famous mark, by someone with no connection with said trademark (see Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited,WIPO Case No. D2007-1641).
The websites to which the disputed domain names and resolve, display a typical pay-per-click page, which the Respondents likely gain financial benefit, taking an unfair advantage of those looking for the Complainant’s services. The website to which the disputed domain name resolves, redirects users to a website where the users are invited to earn money by participating in online surveys, thus placing users at a risk of having their personal data compromised.
The above demonstrates that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain names , and resolve, by creating a likelihood of confusion with the Complainant’s trademark (see, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA,WIPO Case No. D2007-1143).
The website to which the disputed domain name resolve, redirect users to malware pages, making it clear that the Respondents have displayed deceptive and malicious conducts under a non-authorized use of a domain name that is confusingly similar to the trademark WIKIPEDIA. These types of conduct have been considered as bad faith use by other UDRP panels (see Spoke Media Holdings, Inc. v. Andrey Volkov,WIPO Case No. D2010-1303; Adidas Ag v. Domain Manager,WIPO Case No. D2014-1414).
Moreover, this Panel notes that the Respondents have been subject to other UDRP proceedings, having registered and used domain names that incorporate well-known trademarks (see Kayak Software Corporation v. Yeonju Hong, WIPO Case No. D2010-1177; Concord Music Group, Inc. v. Domain Hostmaster, Customer ID: 45460253667202, Whois Privacy Services Pty. Ltd. / Yeonju Hong, Dzone Inc.,WIPO Case No. D2015-0836; Google Inc. v. Dzone Inc., Yeonju Hong/ Whois Privacy Services Pty Ltd.,WIPO Case No. D2011-1033; Jaguar Land Rover Limited v. Mike Kerry, Dzone Inc.,WIPOCase No. D2014-2219; Lange Uhren GmbH v. Whois Privacy Services Pty Ltd / Domain Hostmaster, Customer ID: 97459717259019/ Dzone Inc. Mike Kerry,WIPO Case No. D2013-1699; Richemont International, S.A. v. Whois Privacy Services Pty Ltd. / Dzone Inc. - Mike Kerry,WIPO Case No. D2013-1641).
The above indicates that the Respondents have engaged in a pattern of conduct which has prevented trademark owners to reflect their marks in a corresponding domain name. The Respondents have participated in many other proceedings under the Policy as Respondents, and have been found to be lacking legitimate rights or interests, and to have acted in bad faith. This conduct constitutes further evidence of bad faith under paragraph 4(b)(ii) of the Policy (see Gruner + Jahr Printing & Publishing Co., G+J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment Inc. v. Savior Baby,WIPO Case No. D2000-1741).
Moreover, the Respondents in this case took active steps to hide their true identity by hiring a data privacy service when acquiring the disputed domain names, adding to the bad faith registration of the disputed domain names.
The Panel finds that the Respondents have registered and are using the disputed domain names in bad faith. The third element of the Policy has been met. 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 names , , and be transferred to the Complainant. The Complaint is terminated without prejudice as to the disputed domain name .
Kiyoshi Tsuru
Sole Panelist
Date: September 15, 2015
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