Complainant is Wikimedia Foundation, Inc., United States of America (“United States” or “US”), represented by Jones Day, United States.
Respondent is Registration Private, Domains By Broxy, LLC, United States / Brian Jackson, United States. 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 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 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 Complainant on April 2, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 3, 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 Respondent of the Complaint, and the proceedings commenced on April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 20, 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 Complainant is an organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. It was founded in 2003 and today manages 13 free knowledge projects built and maintained by a community of over 123,000 active volunteers. Among those knowledge projects are Wikipedia, a free online encyclopedia compiled, edited, and maintained by over 123,000 active contributors, Wikimedia Commons, a shared media repository of over 58 million freely usable images, sound files, and video files, and Wikinews, a free-content news source. Complainant also oversees a network of organizations that contribute to Complainant’s mission and objectives, including Wikimedia chapters, thematic organizations, and user groups. Currently, this network spans over 38 countries and 6 continents around the world. Complainant owns various US trademark registrations for its WIKIPEDIA trademark (“Complainant’s Mark”) including registration numbers 3,040,722 (registered on January 10, 2006), 3,505,429 (registered on September 23, 2008), and 4,853,585 (registered on November 17, 2015). Complainant also owns and operates the Respondent registered the disputed domain name, Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it reproduces identically and entirely the WIKIPEDIA mark. The addition of the generic term “official” alongside Complainant’s Mark actually increases, rather than decreases, the potential risk of confusion, according to Complainant, because it reinforces the impression that the disputed domain name is connected with Complainant. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because it is being used to provide paid editing services for consumers who wish to edit or create their own Wikipedia.org page. Complainant alleges that it has never authorized or licensed Respondent to use Complainant’s Mark despite Respondent’s heavy use of Complainant’s Mark in the disputed domain name’s website. This, according to Complainant, gives the overall impression of an official connection with Complainant when none exists. Under these circumstances, Complainant argues that it has satisfied its burden under paragraph 4(a)(ii) of the Policy and has made a prima facie showing that Respondent does not any have rights or legitimate interests in the disputed domain name. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the WIKIPEDIA mark given its worldwide notoriety, the existence of United States trademark registrations for it at the time the disputed domain name was registered, and the complete incorporation of the WIKIPEDIA mark in the disputed domain name. Moreover, according to Complainant, Respondent’s failure to respond or acknowledge the various cease and desist letters Complainant sent also supports an inference of bad faith. Complainant further argues that Respondent’s disclaimer in its website does not cure Respondent’s bad faith. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the WIKIPEDIA mark through its United States registrations. With Complainant’s rights in the WIKIPEDIA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Furthermore, as stated in section 1.8 of the 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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s WIKIPEDIA mark is fully incorporated in the disputed domain name, and the addition of the dictionary term “official” does not prevent a finding of confusing similarity. See Merck KgaA v. Registrant [3644982]: Chen Yan Hua,WIPO Case No. D2011-1010. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s WIKIPEDIA mark. 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 domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating 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. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. WIPO Overview 3.0, section 2.1. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden then shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Id. UDRP panels often view the correct approach of establishing a prima facie case under this second element is for the complainant to put forward whatever evidence is available (e.g., complainant has rights to the mark, the respondent has no rights to the domain name that complainant is aware of, complainant has not authorized respondent to use the mark in question). Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110, Julian Barnes V- Old Barn Studios Limited,WIPO Case No. D2001-0121. In this case, the Panel finds that the Complainant has made out a prima facie case. Complainant showed that its rights to the WIKIPEDIA mark long predate the disputed domain name’s registration. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the WIKIPEDIA mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Respondent’s offering of goods and services under a trademark he was not authorized or licensed to use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Ciccone v. Parisi,WIPO Case No. D2000-0847)). Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name. In addition, the nature of the disputed domain name carries a risk of implied affiliation. In fact, the inclusion of a dictionary term giving the impression of an authorized relationship between the disputed domain name and Complainant actually exacerbates the likelihood of confusion between Complainant’s Mark and the disputed domain name and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by Complainant. WIPO Overview 3.0, section 2.5.1. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a 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. A clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith in cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name. WIPO Overview 3.0, section 3.7. On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, UDRP panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. Id. In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous US registrations of the WIKIPEDIA mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the WIKIPEDIA trademark when it registered the disputed domain name, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the WIKIPEDIA mark and adds the dictionary term “official”. The addition of the term “official” strongly suggests that Respondent is affiliated or authorized by Complainant to use the WIKIPEDIA mark despite Respondent’s inclusion of a brief disclaimer at the bottom of the disputed domain name’s landing page, stating that it is “in no way affiliated with Wikipedia, a registered trademark for the Wikimedia Foundation.” The Panel believes that the disclaimer’s text is more indicative of an admission by Respondent that users may be confused with the disputed domain name and its content. This, along with the fact that Respondent is actively making unauthorized use of Complainant’s Mark for his own commercial benefit, confirms that Respondent was also using the disputed domain name in bad faith. In this context, Respondent’s failure to reply to Complainant’s previous letters also supports a finding of bad faith. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, 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, Brian J. Winterfeldt
Sole Panelist
Date: June 5, 2020
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