The Complainant is Plone Foundation of Fishers, Indiana, United States of America (“United States”), represented by Nutter McClennen & Fish, LLP, United States.
The Respondent is Private Registration of Denver, Colorado, United States / Jared Grey of Saint George, South Carolina, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with DropC 654 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2018, 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 Complainant on March 8, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 9, 2018.
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 March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 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
The Complainant, beginning in 2001, directly, through its predecessors in interest and/or through its or their licensees, began to offer computer software for content management, namely, the creation, editing, management and publishing of digital content. Beginning at least as early as 2003, the Complainant directly, through its predecessors in interest and/or through its or their licensees, began offering educational services in the nature of conferences for instruction in the implementation, installation and use of its computer software and for online publications in the nature of documentation and manuals for the implementation, installation and use of that software.
The Complainant owns registered trademarks that it uses as part of its business. Specifically, the Complainant owns United States Trademark Registration No. 3,643,402, registered on June 23, 2009, for the word mark PLONE for use in International Classes 9 and 41; United States Trademark Registration No. 3,646,778, registered on June 30, 2009, for the design mark for use in International Classes 9 and 41; United States Trademark Registration No. 3,058,641, registered on February 14, 2006, for the design mark for use in International Class 9; and European Union Trademark Registration No. 014299341, registered on November 17, 2015, for the design mark for use in International Class 9 (collectively, the “PLONE Mark”).
The Complainant’s software has long been recognized as well suited for government application. In the late 2000s, the Complainant, directly and through its licensees, launched “PloneGov,” a collaborative initiative for the adaptation of its software for use in government.
The Complainant registered the domain name , which resolves to the Complainant’s official website “www.”, through which it promotes its software, events, articles and manuals.1
The Disputed Domain Name was registered on April 23, 2017 by the Respondent. The Disputed Domain Name resolves to a website that replicates the Complainant’s website and includes verbatim articles that were published on the Complainant’s website years earlier. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PLONE Mark based on longstanding use as well as its trademark registrations for the PLONE Mark in the United States and in the European Union. The Disputed Domain Name consists of the PLONE Mark in its entirety followed by the descriptive term “gov”, followed by the generic Top-Level Domain (“gTLD”) “.org”. It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, the Disputed Domain Name contains the Complainant’s entire PLONE Mark and thus, the Disputed Domain Name is identical to the PLONE Mark. Moreover, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Finally, the addition of a gTLD such as “.org” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PLONE Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name, which resolves to a website that replicates the Complainant’s website and bears the PLONE Mark, the Panel finds that the Respondent is neither making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s PLONE Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s PLONE Mark.
The website to which the Disputed Domain Name resolves is confusingly similar to the Complainant’s genuine website at “www.”. Thus, the Respondent’s attempt to use the significant goodwill in the PLONE Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website that appears to be the Complainant’s official site, demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent’s website is sponsored, affiliated with or endorsed by the Complainant.
Second, the Respondent has without authorization adopted the PLONE Mark as the Respondent’s own logo on the Respondent’s website to which the Disputed Domain Name resolves. Moreover, the Respondent’s bad faith registration and use is also demonstrated by the unauthorized copying of articles originally published on the Complainant’s website ten years earlier.
Third, the Panel finds that the Respondent had actual knowledge of the Complainant’s rights in its widely-used PLONE Mark when registering the Disputed Domain Name. The Respondent’s actual knowledge of the Complainant’s rights can be inferred from the Respondent’s use of the PLONE Mark to create a website that bears the PLONE Mark to convince customers that the website is affiliated with the Complainant.
Finally, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic 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.
Lynda M. Braun
Sole Panelist
Date: April 13, 2018
1 The Complainant alleges that the Disputed Domain Name was previously owned by one of the Complainant’s members, although the Complainant does not reveal how the Respondent ended up owning the Disputed Domain Name.
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