The Complainant is The Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally represented.
The Respondent is Abid Karmali of Karachi, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, 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 April 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018. The Center received an informal email communication from the Respondent on May 3, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 9, 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 is a non-profit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. It is the proprietor of the trademark WIKIPEDIA, under which it operates an Internet-based encyclopedia, freely consultable online by users. Details of over 300 trademark registrations of the Complainant’s WIKIPEDIA trademark, in the United States and elsewhere, have been supplied to the Panel (see e.g., United States registration No. 3040722 for WIKIPEDIA, registered January 10, 2006), as have details of various prior decisions under the Policy, in which the Complainant’s WIKIPEDIA trademark has been widely recognized by UDRP panels as well known.
The disputed domain name was registered on August 1, 2011, and is currently being used in connection with a website offering a paid editing service. The website displays the following message: “Hire a Wikipedia writer – looking for a Wikipedia article writer or editor? Get the very best from our team of experts […]” 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its WIKIPEDIA trademark, containing the WIKIPEDIA trademark in its entirety, with the mere addition of the descriptive or non-distinctive word “writers”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent has never received either the Complainant’s consent or permission to use the Complainant’s WIKIPEDIA trademark, nor has the Respondent made any 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, nor has the Respondent used the disputed domain name for any
legitimate noncommercial or fair use purpose as the Respondent is offering a paid article editing service under the disputed domain name.
The Complainant alleges that the disputed domain name has been registered in bad faith, and is being used in bad faith in connection with a paid editing service, which is adjunct to the service being offered by the Complainant under its WIKIPEDIA trademark. B. Respondent
The Respondent replied to the Complaint, alleging that it has not encountered any actual confusion in practice between the disputed domain name and the Complainant’s WIKIPEDIA trademark. The Respondent claims that its website has nothing to do with Wikimedia Organization and its products, and the Respondent has a notice in that regard on the website. The Respondent did not, in its reply, offer any argument to justify its rights or legitimate interests in the disputed domain name. The Respondent denied registration of the disputed domain name in bad faith, and pointed out that it was not the Respondent’s intention to create a “Wikipedia 2”. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred 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. A. Identical or Confusingly Similar
The Panel has no difficulty in accepting that the Complainant’s WIKIPEDIA trademark is well known, and that the Complainant has clear trademark rights thereto.
It is well established in prior decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.org”, and “.net”) may be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the “.com” gTLD indicator to be irrelevant in the present case.
It is well established in prior decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the added element “writers” is clearly, in the Panel’s view, either descriptive or non-distinctive. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 Complainant (described above under section 5A) as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity in its reply to the Complaint 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 Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In the circumstance of the present case, in which the Complainant’s WIKIPEDIA trademark is currently so well known that the Panel cannot believe otherwise than that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name. Indeed, in the Respondent’s reply to the Complaint, it is obvious that the Respondent was clearly aware of the Complainant’s WIKIPEDIA trademark and its associated services. Accordingly, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
It is well established in prior decisions under the Policy that the use of a disputed domain name held to be confusingly similar to a trademark in which the complainant has rights in connection with a website offering products or services competing with those of the complainant constitutes use of a disputed domain name in bad faith. The Panel is of the opinion that the principle behind these decisions extends to the provision of services adjunct to those of the complainant, as is the case in the circumstances of the present case. The Panel notes the small disclaimer on the website stating that the Respondent is not associated with Wikipedia. However, the mere existence of a disclaimer cannot cure bad faith use, nothing also that the disclaimer in this case is not clear and sufficiently prominent. Accordingly, the Panel finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) 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.
George R. F. Souter
Sole Panelist
Date: June 4, 2018
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