The Complainants are Automattic, Inc. and Bubblestorm Management (Pty) Limited of San Francisco, California, United States of America ("United States"), represented by Steven M. Levy, United States.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o of Prague, Czech Republic / John Obeye, DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM of Prague, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 22, 2017. On November 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2017, the Registrar transmitted by email to the Center its verification response 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 Complainants on November 29, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 1, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 26, 2017.
The Center appointed George R. F. Souter as the sole panelist in this matter on January 10, 2018. 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
Bubblestorm Management (Pty) Limited ("Bubblestorm") is a wholly-owned subsidiary company of Automattic, Inc. ("Automattic") and is the owner of the WOOCOMMERCE trademark. Automattic is a web development company that was founded in August 2005 and is a promoter of the WordPress website design and publishing software platform. As early as 2012, the Complainants commenced use of the WOOCOMMERCE mark in connection with the development and sale of an open source e-commerce software plugin for Internet websites that run on the WordPress platform. Various forms of the WooCommerce software have since been downloaded nearly 35 million times and the product is currently used in over 28 percent of all online stores worldwide.
The Complainants have a number of trademark applications pending, but currently have no registered trademarks.
The disputed domain name was registered on September 29, 2016. 5. Parties' Contentions A. Complainants
The Complainants allege that the disputed domain name is confusingly similar to their WOOCOMMERCE mark, containing their WOOCOMMERCE mark in its entirety, with the mere addition of a third "O".
The Complainants allege that the Respondent lacks rights or legitimate interests, in particular that the Respondent's actions are not a bona fide offering of goods or services under the Policy, as the Respondent's website under the disputed domain name resolves to a classic pay-per-click page displaying links which divert visitors to other websites which are not associated with the Complainants and, in some instances, are owned by companies that may be competitors. The Complainants state that, to the best of their knowledge, the Respondent is not currently generally known by the disputed domain name.
The Complainants allege that the Respondent has registered the disputed domain name in bad faith, and is using the disputed domain name in bad faith in connection with a pay-per-click website which, inter alia, may divert users to the products of competitors. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainants must prove to merit a finding that the disputed domain name be transferred to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. A. Identical or Confusingly Similar
The Complainants have satisfied the Panel that they have sufficient trademark rights in their WOOCOMMERCE trademark for the purposes of these proceedings.
It is well-established in prior decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".org", and ".net") are irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel considers the ".com" gTLD indicator to be irrelevant in the present case.
The Panel considers that the addition of a third "O" in the disputed domain name does not distinguish it from the Complainants' mark WOOCOMMERCE, either in overall impression or pronunciation, sufficiently to avoid a finding of confusing similarity. Further, the Panel fails to find a plausible reason for the adoption of the disputed domain name other than it was "engineered" with the Complainants' trademark in mind. Accordingly, the Panel finds that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which there is only a minimal difference between the Complainants' trademark and the disputed domain name, and the Panel feels that there is an overwhelming probability that the disputed domain name was copied from the Complainants' mark, as appropriate to lead to a finding of registration in bad faith, and the Panel so finds.
It is well-established in prior decisions under the Policy, with which the Panel agrees, that the use of a disputed domain name in connection with a pay-per-click website leading to the products of competitors of the complainant constitutes use in bad faith. The Panel, accordingly finds, in the circumstances of the present case, that the disputed domain name is being used in bad faith. 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, Automattic, Inc.
George R. F. Souter
Sole Panelist
Date: January 24, 2018
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