Complainant is Wikimedia Foundation, Inc., United States of America (“United States”), represented by Jones Day, United States.
Respondent is WhoisGuard Protected, Panama / Salman Yousuf, 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 July 31, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 3, 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 named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 18, 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 August 18, 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 August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2020. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 29, 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 Founded in 2003, Complainant is a non-profit charitable organization that provides free, multilingual educational content through its thirteen knowledge projects. One of Complainant’s projects is Wikipedia, a free online encyclopedia with over 123,000 active contributors. Since 2001, Complainant has used the WIKIPEDIA mark in connection with its encyclopedia project. Complainant owns over four hundred trademark registrations comprised of the WIKIPEDIA mark and its foreign equivalents, including United States registration No. 3,040,722 for WIKIPEDIA, registered on January 10, 2006; United States registration No. 3,505,429 for WIKIPEDIA, registered on September 23, 2008; and United States registration No. 3,773,952 for WIKIPEDIA, registered on April 13, 2010. Complainant also owns United States trademark registration no, 4,710,546, registered on March 31, 2015, for a mark consisting of a globe design. Respondent registered the Disputed Domain Name on July 30, 2018. The Disputed Domain Name redirects to a website at www.wikieditors.net”, a website which offers to provide creation and maintenance services for articles on Complainant’s Wikipedia platform. The website displays Complainant’s globe design mark. On April 8, 2019, Complainant sent a cease-and-desist letter to Respondent via email, requesting that Respondent ceases using the Disputed Domain Name. Respondent did not respond to Complainant’s letter. 5. Parties’ Contentions A. Complainant Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant’s WIKIPEDIA mark. Complainant states that the Disputed Domain Name incorporates the entire WIKIPEDIA mark and the dictionary term “editors”. Complainant contends that the additional term “editors” increases instead of mitigates the risk of confusion. Thus, according to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s WIKIPEDIA mark. Complainant further alleges that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent is not commonly known by the Disputed Domain Name. Further, Complainant has not authorized or licensed Respondent’s use or registration of the Disputed Domain Name. Complainant also contends that Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. According to Complainant, the WIKIPEDIA mark is not only inherently distinctive, bust also famous or widely-known. Thus, Complainant alleges, Respondent was fully aware of Complainant’s marks when Respondent registered the Disputed Domain Name. Complainant further contends that the content of the website to which the Disputed Domain Name redirects suggests Respondent was well-acquainted with the Disputed Domain Name. Finally, Complainant alleges that the redirection of the Disputed Domain Name to another website and Respondent’s failure to respond to the cease-and-desist letter are indicative of Respondent’s bad faith registration and use. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that Complainant has demonstrated its rights in the WIKIPEDIA mark by way of its trademark registrations. The Disputed Domain Name incorporates the WIKIPEDIA mark in its entirety. The addition of the term “editors” in the Disputed Domain Name does not prevent a finding of confusing similarity. It suggests that Respondent is affiliated with Complainant. Accordingly, the Panel finds the Disputed Domain Name is confusingly similar to Complainant’s mark. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized or licensed Respondent’s use of the WIKIPEDIA mark in the Disputed Domain Name. There is no evidence on record showing that Respondent is commonly known by the Disputed Domain Name. Moreover, there is no evidence that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. The website to which the Disputed Domain Name redirects does not accurately disclose Respondent’s relationship with Complainant. Therefore, the Disputed Domain Name is not being used in connection with a bona fide offering of services. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“To be bona fide, the offering must meet several requirements. Those include, at the minimum, […] [t]he site must accurately disclose the registrant’s relationship with the trademark owner[.]”; see also Wikimedia Foundation, Inc. v. Domain Manager,USA Domain Manager,WIPO Case No. D2014-0920. Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent registered the Disputed Domain Name in bad faith. When he registered the Disputed Domain Name, Respondent was obviously well aware of Complainant’s rights in the trademark WIKIPEDIA. The Disputed Domain Name redirects to a website that prominently displays Complainant’s globe design mark. This, when combined with the incorporation of the entire WIKIPEDIA mark in the Disputed Domain Name, demonstrates Respondent’s familiarity with Complainant’s well-known WIKIPEDIA mark. See Wikimedia Foundation, Inc. v. Domain Manager,USA Domain Manager,WIPO Case No. D2014-0920 (finding bad faith where the respondent, who registered a domain name comprised of Complainant’s mark, prominently displayed Complainant’s other mark on the respondent’s website). Respondent intended to attract Internet users to the website for commercial gain. The Panel also finds that Respondent is using the Disputed Domain Name in bad faith. By using the Disputed Domain Name to redirect Internet users to a website offering editing services for Complainant’s Wikipedia platform without disclosing the lack of relationship between Complainant and Respondent, Respondent has created a likelihood of confusion with Complainant’s mark in violation of the Policy. There is nothing on the website to indicate that the website is not associated with Complainant. In fact, there is a strong likelihood that Internet visitors would perceive the Disputed Domain Name as being the official website for editors of pages on Complainant’s Wikipedia platform. Complainant has satisfied 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 Lawrence K. Nodine
Sole Panelist
Date: October 13, 2020
Full & Egal Universal Law Academy