The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, internally represented.
The Respondent is Jorge Navarro of Valencia, Spain, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2017, 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 October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Response was filed with the Center on October 25, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 10, 2017. 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 nonprofit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual, educational content. Founded in 2003 it supports the Wikipedia, a free, online encyclopedia, the Wikimedia Commons, a media repository and Wikinews, a free-content news source.
It is the owner of 303 trademark registrations around the world amongst which are:
- International trademark registration No. 839132 for WIKIPEDIA registered on December 16, 2004; and
- United States of America trademark Registration No. 3,040,722 for WIKIPEDIA, registered on January 10, 2006.
The disputed domain name was registered on November 19, 2007 and is currently redirected to , the Respondent’s webpage that displays an online encyclopedia similar to the Complainant’s one, in the Valencian language. 5. Parties’ Contentions A. Complainant
The Complainant asserts to have first used the WIKIPEDIA trademark in 2001, having registered the domain name on January 13, 2001. In spite of being a nonprofit organization and as a direct result of considerable time, effort, money and promotion, the WIKIPEDIA mark has come to serve as a unique identifier of goods and services emanating from the Complainant, especially the reference services that are promoted under it.
In view of the well-known status the WIKIPEDIA mark has obtained in the United States and throughout the world, the Complainant argues that the disputed domain name will likely be associated with it and the goods and services provided in connection therewith by Internet users.
According to the Complainant, the disputed domain name consists of a phonetic transliteration of the Complainant’s trademark in Catalan, what is likely to cause consumers to believe that the website made available at the disputed domain name is affiliated with, authorized by, or endorsed by the Complainant.
Also, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name given that:
(i) the Respondent is not a licensee of or otherwise affiliated with the Complainant, never having the Complainant authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain name;
(ii) the Respondent is not commonly known by the disputed domain name; and
(iii) in addition to copying the Complainant’s website content without attribution, including the Complainant’s privacy policy, the Respondent also included links on his website that redirect to the Complainant’s website, what does not constitute a bona fide use of the disputed domain name.
Bad faith in the registration of the disputed domain name which is phonetically identical to that of the Complainant’s arises, according to the Complainant, in view of the fact that when registering the disputed domain name, the Complainant’s trademarks had already been registered and in use as early as 2001.
Furthermore, evidence suggests that the Respondent was well-acquainted with the Complainant’s mark since the Respondent’s website copies the Complainant’s website and the Respondent’s website refers to “la wikipedia en valencià” creating an affiliation to the Complainant’s page available in the Catalan language.
Moreover, the Respondent’s website works using the same software, MediaWiki, which is used and developed by the Complainant, being such knowledge, under the Complainant’s view, sufficient to establish that the disputed domain name was appropriated by the Respondent in bad faith.
The Complainant argues that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s well-known mark, what is emphasized by the links to the Complainant’s website.
Lastly, another element to corroborate with the bad faith of the Respondent is that, in an attempt to solve the matter amicably the Complainant sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain name, to which no reply was received.
Finally, evoking Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 the Complainant states that the Respondent is clearly holding the disputed domain name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive rights to its mark. B. Respondent
The Respondent argues that the disputed domain name does not include the Complainant’s transliterated trademark since the characters W and K are available in the Valencian language, having the disputed domain name a different phonetic. As to the suffix “pedia” the Respondent states that is comes from the Greek term paidea and the term enciclopedia, over which the Complainant has no rights, not being the Complainant a licensor of any pedia suffix domain name or brand.
As to his rights or legitimate interests the Respondent argues that the payment and maintenance of the disputed domain name for the past 10 years is proof thereof, as well as the provision of a public and free service for an online community comprising more than 756 registered users, 3,627 files, 12,868 articles, 29,448 pages and 123,897 editions.
As to the allegations of bad faith, the Respondent states that the Complainant has not included any evidence thereof. As to the reproductions of the Complainant’s website the Respondent states that they were included in a publicly editable page and were nevertheless removed.
Furthermore, in all of the pages relating to the disputed domain name the Respondent’s logo and name is used, not being possible to create confusion with the Complainant’s Catalan website, being the only similarities found due to the use of the MediaWiki software which is a free software.
The Respondent also states that no communication from the Complainant was received in spite of the official channel available for asking for changes within his webpage.
Moreover, the Respondent states that he and the Complainant are not competitors since the Complainant targets Catalan, which is different to the Respondent’s target which are users of the Valencian language, not having the Complainant proved any loss of Internet users due to the existence of the disputed domain name.
The Respondent further states that he has no intention of commercial gain as his website does not seek to have donations or advertisements and that his website includes links to the Complainant’s website merely to credit the authorship of the software.
Lastly, the Respondent requests the right to keep the disputed domain name since he has changed any references to the Complainant and the Complainant’s trademark from the website relating to the disputed domain name, adding a disclaimer clarifying that his project is not related to the Complainant, having renamed and redirected his website. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy. A. Identical or Confusingly Similar
The Complainant has established its rights in the WIKIPEDIA trademark as set out in Section 4 above.
The Panel finds that the disputed domain name is confusingly similar therewith, in particular in view of the phonetic similarity between UIQUIPEDIA and WIKIPEDIA. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The first element of the Policy has therefore been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(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, despite not having acquired 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 Complainant’s trademark or service.
The Respondent states that his rights and legitimate interests over the disputed domain name arise from the payment and maintenance of the disputed domain name for the past 10 years as well as the provision of a public and free service for an online community comprising more than 756 registered users, 3,627 files, 12,868 articles, 29,448 pages and 123,897 editions.
As the evidence suggests – and as recognized by the Respondent – however, the Respondent targeted the Complainant and its webpage when registering and using the disputed domain name, specifically referring itself as “la wikipedia en valencià” (the “Wikipedia in the Valencian language”), copying not only the lay-out of the Complainant’s website, but also the Complainant’s privacy policy and links to the Complainant’s website. Such use characterizes an attempt to impersonate the Complainant and cannot be considered, under this Panel’s view, as a bona fide one.
The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name since it was used to target the Complainant’s website, in an attempt to create confusion with the Complainant’s trademark and domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant’s well-known trademark appears to be evident from the mention in the website that was available from the disputed domain name as “la wikipedia en valencià” (the “Wikipedia in the Valencian language”), as well as in view of the copy of the lay-out of the Complainant’s website, privacy policy and links to the Complainant’s website. The Respondent’s counter claim to this stating that they were included in a publicly editable page is no excuse for his wrongdoing since just because something is published in a public editable page it does not mean that anyone is authorized to copy and use it.
The present use of the disputed domain name, redirecting Internet users to a website that exploits the same kind of activities as the Complainant, still with the same lay-out of the Complainant’s original one, maintains a likelihood of association of Internet users between the disputed domain name and the Complainant’s services. The attempt to impersonate the Complainant and the likelihood of undue association overrides the Respondent’s feeble excuses of not targeting the Complainant’s Catalan audience and lack of proof of loss of Internet users.
The Respondent’s statement that he has no intention of commercial gain with the disputed domain name and his request to keep it are contradictory in view of not providing the Panel with any explanation as to his choice of the disputed domain name, being it not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law (as in Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Lastly, two other circumstances of this case further support the Panel’s finding of bad faith:
(i) the Respondent’s choice to use a privacy protection service in an attempt to hide its true identity;
(ii) the absence of reply to the cease-and-desist letter sent to the Respondent prior to the filing of the Complaint.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: November 24, 2017
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