The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally represented.
The Respondent is Domain Administrator, Domain Enterprises of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2015. On August 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015.
The Center appointed Alfred Meijboom as the sole panelist in this matter on September 29, 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. 4. Factual Background
The Complainant is a non-profit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, and educational content. The Complainant was founded in 2003, and today manages eleven free knowledge projects built and maintained by a community of volunteers, which include Wikimedia Commons, Wiktionary, Wikivoyage, and Wikipedia. Wikipedia is the oldest and largest project of the Complainant, which is ranked as one of the ten most-visited websites in the world.
The Complainant obtained a United States trademark registration WIKIPEDIA on January 10, 2006, and the registration indicates first use of the mark in January, 2001. In subsequent years, the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark, in various classes with the United States Patent & Trademark Office and is the registrant of the domain name which was registered on January 13, 2001. The Complainant uses these domain names in connection with the Wikipedia website described above.
Including the above, the Complainant owns approximately 148 trademark registrations worldwide for the WIKIPEDIA mark and foreign equivalents.
The Complainant’s WIKIPEDIA trademarks shall be referred to below as the “WIKIPEDIA mark”.
The disputed domain name was registered on March 4, 2004 and the disputed domain name is used by the Respondent to spread malicious computer software (“malware”). 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its registered WIKIPEDIA mark. It notes that a dominant part of the disputed domain name contains a name that is identical to the Complainant’s registered WIKIPEDIA mark, with the mere addition of a single “L” to the Complainant’s WIKIPEDIA mark, and is nearly indistinguishable in sound and appearance. The Complainant argues that this constitutes a classical example of typo-squatting, which takes advantage of Internet users seeking to find its domain names.
The Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant indicates that the Respondent is not a licensee of the WIKIPEDIA mark and has not otherwise obtained authorization to use the WIKIPEDIA mark.
The Complainant argues that the Respondent is not using the disputed domain name as part of a bona fide offering of goods or services, or for a legitimate noncommercial use. As such, the Respondent’s use of the disputed domain name to spread malware which, specifically, is often used to steal consumer information or disrupt devices for commercial gain, constitutes use of the disputed domain name in bad faith. In doing so, the Respondent prevents users who intended to visit the Complainant’s “Wikipedia” website from accomplishing their goal, creates confusion, and tarnishes the reputation and goodwill of the WIKIPEDIA mark for its own commercial gain.
Further, the Complainant’s first use of the WIKIPEDIA mark pre-dates the Respondent’s registration of the disputed domain name and, therefore, the Respondent knew or should have known of the Complainant’s rights to the WIKIPEDIA mark.
The Respondent is clearly holding the disputed domain name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive right to use the WIKIPEDIA mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domains (“gTLDs”), such as “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the disputed domain name is confusingly similar to the WIKIPEDIA mark. The Respondent has taken the WIKIPEDIA mark in its entirety and merely added the letter “L”, which is insufficient to differentiate the disputed domain name and WIKIPEDIA mark.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that there is no affiliation between the Complainant and the Respondent, no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name incorporating the WIKIPEDIA mark, the Respondent has not been commonly known by the disputed domain name, the Respondent has no prior rights or legitimate interests in the disputed domain name, by choosing a domain name which is nearly identical to the WIKIPEDIA mark, and the disputed domain name resolving to a website which leads to malware, the Respondent is diverting consumers to the website under the disputed domain name for its own commercial gain so that there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainants remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
The disputed domain name was registered a few months before the registration of the first WIKIPEDIA mark, so that the Panel first needs to address the Complainant’s contention that it had acquired unregistered common law trademark rights in respect of the WIKIPEDIA mark. In this respect the Panel concurs with the panel in Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098, who discussed the same and found that
“The Panel is satisfied on the evidence submitted that by the date of registration of the first of the Domain Names to be registered (..) the Complainant had indeed acquired such rights. Were there any doubt in the matter the fact that the Respondent so obviously sought to “ape” the “Wikipedia” name for his commercial purposes confirms the existence of those rights. To put it another way, it is inconceivable to the Panel that anyone would have registered any of the Domain Names were it not the case that at date of registration there was already in existence a significant reputation and goodwill in respect of the name “Wikipedia”.”
Accordingly, the Panel finds that the Complainant had unregistered common law rights vested in the WIKIPEDIA marks when the disputed domain name was registered, and the Respondent must have been aware of such rights when it registered the disputed domain name.
The Respondent’s use of the disputed domain name to lead Internet users to malware constitutes use of the disputed domain name in bad faith per se, which bad faith is further strengthened by the fact that the registration of the disputed domain name is a clear act of cyber-squatting, which in itself is sufficient to establish bad faith registration and use in the context of the Policy (e.g. Google, Inc. v. N and Leonard Bensonoff,WIPO Case No. D2001-0060).
Consequently, the third and last element of paragraph 4(a) of the Policy is also 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 name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: October 12, 2015
Full & Egal Universal Law Academy