The Complainant is Wikimedia Foundation, Inc., United States of America (“US”), represented by Jones Day, US.
The Respondent is Registration Private, Domains By Proxy, LLC, US / Aakash Sorout, The Big Green Tree, India and Harsh Agarwal, India.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2020. On March 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2020, 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 April 3, 2020 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 amendment to the Complaint on April 16, 2020. The Center verified that the Complaint together with the amendment to 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 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2020. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on May 22, 2020. 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 incorporated in Florida, US. It was founded in 2003 with the objective of encouraging the growth, development and distribution of free, multilingual, educational content. Amongst other projects, the Complainant operates the well-known free online encyclopedia - Wikipedia, which comprises more than 53 million articles in 309 languages attracting 1.5 billion unique visitors monthly. This information website is built, edited and maintained by over 123,000 active volunteer contributors in different countries worldwide. The Complainant owns over 400 trademarks for WIKIPEDIA in over 100 jurisdictions worldwide, including US Trademark No. 3,040,722 WIKIPEDIA, word, registered on January 10, 2006 in class 41; International Trademark No. 1502943 WIKIPEDIA, figurative, registered on June 27, 2019 in classes 9, 16, 36, 38, 41 and 42; and International Trademark No. 1,224,858 WIKIPEDIA, word, registered on March 27, 2014 in classes 9, 36, 38, 41 and 42, designating among other 48 jurisdictions India. The Complainant further owns the domain name The disputed domain name was registered on June 22, 2018. At the date of this decision, the disputed domain name is inactive resolving to a page with an Internet browser error message. However, according to evidence filed by the Complainant, it was previously linked to a website, in English language, which prominently featured the terms “Wikipedia Creators” (in capital letters) and a version of the Complainant’s figurative mark consisting of a puzzle globe logo. This website offered services to “create a solid wikipedia page that stays” with different “Wikipedia Page Creation Packages” for prices in a currency not specified (presumably in Indian rupee) 12,000, 15,000 or 18,000, and included in its heading, before the text content of the site, a telephone number (with Indian country code) and an email address. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: The term “wikipedia” is a unique identifier and the Complainant’s trademark is well known throughout the world, being the Complainant’s website under The disputed domain name is confusingly similar to the Complainant’s trademark, as it incorporates the mark WIKIPEDIA adding the term “creators”, which is a generic word that describes the services offered by both the Complainant and the Respondent, exacerbating the confusing similarity and increasing the risk of confusion. The Respondent is not a licensee of or otherwise affiliated with or authorized by the Complainant, and there is no indication that the Respondent is commonly known by the disputed domain name, having masked its identity behind a privacy protection service. Further, the Respondent is using the disputed domain name to offer a service adjunct to the Complainant’s own services, operating a paid Wikipedia editing website, which prominently features the Complainant’s WIKIPEDIA mark and its puzzle globe logo, with no prominent and accurate disclosure of the Respondent’s lack of relationship with the Complainant. These are not the circumstances of a bona fide use. Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered and is being used in bad faith. Due to the reputation of the Complainant’s trademark WIKIPEDIA, its unauthorized prominent use on the website linked to the disputed domain name, and the offer through this website of services related to the creation of Wikipedia pages, it is clear that the Respondent registered the disputed domain name in bad faith targeting this mark. Further, the Complainant requested cease and desist in the use of the disputed domain name and its trademarks, using the contact information posted on the website linked to the disputed domain name, and received a response from the Respondent Harsh Agarwal undertaking to allow the registration of the disputed domain name to expire. However, the disputed domain name was renewed, and resolved to the same website actively soliciting the payment for services, which supports an inference of bad faith. The Respondent is holding the disputed domain name willfully, in bad faith, seeking to profit from and exploit the Complainant’s trademark, in complete disregard of its exclusive rights. The Complainant has cited several previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8 and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant indisputably has rights in the registered trademark WIKIPEDIA, incorporated in the disputed domain name in its entirety followed by the term “creators”, which does not prevent a finding of confusing similarity with the mark. The mark WIKIPEDIA is recognizable in the disputed domain name, and the gTLD “.com” is a mere technical requirement. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests. The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing paragraph 4(c) of the Policy the circumstances, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions. A core factor in assessing fair use of a domain name is whether the domain name falsely suggests affiliation with the Complainant’s trademark. See section 2.5 of the WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark WIKIPEDIA followed by the term “creators” that allude to the services provided by the Complainant and/or its community of volunteers, who, among other activities, build and maintain the information provided in the pages or articles included in the Complainant’s online information platform. The Panel further notes the high presence over the Internet of the trademark WIKIPEDIA, as well as its continuous use worldwide, including in India, where the Complainant is present through a specific chapter that represents and supports the Complainant’s projects in this specific area. The Complainant’s Indian Chapter is a non-profit independent organization that supports, promotes and educates the general Indian public about the availability and use of free open educational content, as well as the ability to access, develop and contribute to the Complainant’s online information platforms. The Panel, under the general powers articulated in the Rules, has consulted the Complainant’s website as well as the evidence provided by the Complainant. Therefore, the Panel considers that there is a risk of implied affiliation and confusion that may lead Internet users to believe that the disputed domain name is owned or related to the Complainant or to one of the Complainant’s chapters or affiliates (probably its Indian Chapter). See section 2.5.1 of the WIPO Overview 3.0. Furthermore, as the website that was linked to the disputed domain name offered a service adjunct to or included in the Complainant’s own services or the services provided by the Complainant’s community of volunteers, the Panel considers the doctrine related to nominative (fair) use by resellers, distributors or service providers. The consensus view of UDRP panels, outlined in the “Oki Data test” (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), is that to establish a bona fide offering of goods or services in such circumstances, the Respondent must comply with certain requirements, including accurate and prominent disclosure of its relationship or lack of relationship with the trademark holder. See section 2.8 of the WIPO Overview 3.0. In the Panel’s view, there is no such accurate and prominent disclosure in this case. The website that was linked to the disputed domain name was dominated by the terms “Wikipedia Creators” (in capital letters) and a version of the Complainant’s well-known puzzle globe logo (which repeatedly appear in various sections of the site), omitting any reference to the lack of relationship with the Complainant or its community of volunteer editors, chapters and affiliates worldwide. Taken together with the use of the Complainant’s trademark in the disputed domain name, the website gave the overall impression of some sort of official connection with the Complainant and/or its community. Such use of the disputed domain name could not be said to be bona fide. It is further remarkable that the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name. On the contrary, the website that was linked to the disputed domain name has been apparently taken down, being the disputed domain name currently inactive resolving to a page with an Internet browser error message. All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all the cumulative facts and circumstances indicate that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith All cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark WIKIPEDIA in its entirety, adding a term (“creators”) referred to the same services of the Complainant, its community of volunteers and/or to one of the Complainant’s chapters (probably its Indian Chapter), intrinsically creating a likelihood of confusion and affiliation; (ii) the trademark WIKIPEDIA is well known internationally; (iii) the disputed domain name was used to host a website offering services related to the Complainant’s online information platform, also provided by the Complainant and/or its community of volunteer creators and editors; (iv) the said website reproduces prominently the Complainant’s well-known trademark WIKIPEDIA and a version of its puzzle globe logo, not accurately and prominently disclosing the lack of relationship with the Complainant or its community and these trademarks; (v) the website that was linked to the disputed domain name did not offer any information about the company providing the services it offered apart from the name “Wikipedia Creators”, indicating only an email address and a telephone number (with an Indian country code); (vi) the Respondent masked its identity behind a privacy protection service and reaction of the Respondent Harsh Agarwal to the Complainant’s cease and desist request was to commit to allowing the registration of the disputed domain name to lapse; however, the disputed domain name was renewed; (vii) apparently, the website that was linked to the dispute domain name has been taken down, being the disputed domain name currently inactive resolving to a page with an Internet browser error message; and furthermore, (viii) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. On the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark WIKIPEDIA with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its trademarks, its community of creators and editors and/or to one of its chapters, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business. All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has established the third element of paragraph 4(a) 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 Reyes Campello Estebaranz 1 The Panel notes that the Complainant has maintained correspondence with Harsh Agarwal and the registrant of record is Aakash Sorout, The Big Green Tree (as confirmed by the Registrar). In view of the case file, and in particular, noting the email address for Harsh Agarwal and Aakash Sorout, The Big Green Tree is the same, the Panel will consider and refer to Harsh Agarwal and Aakash Sorout, The Big Green Tree collectively as the Respondent (unless otherwise indicated when referring individually to one of them).
Sole Panelist
Date: June 5, 2020
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