Complainant is WP101, LLC, United States of America (“United States”), represented by The Kinney Firm, P.A., United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Mei Han, 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 April 28, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2021, 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 May 3, 2021, 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 May 11, 2021. 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 2, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on June 10, 2021. 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 a popular provider of on-line educational videos and live tutorials connected to WordPress. Complainant has operated its website through the Respondent registered the disputed domain name on July 5, 2018. At the time of this Complaint, the disputed domain name resolves to a website titled “Meet WordPress”. Respondent’s website appears to mimic elements of Complainant asserts ownership of the WP101 trademark and has adduced evidence of trademark registration in the United States, with earliest priority dating back to April 16, 2009. The disputed domain name is identical to Complainant’s trademark, according to Complainant, because it is incorporated in its entirety. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any license or authorization from Complainant to allow Respondent to use the WP101 trademark; Respondent’s infringement of trademarks and copyrights belonging to the WordPress Foundation, in so much as Respondent’s website is a duplication of Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s use of the disputed domain name to profit from the exploitation of Complainant’s WP101 trademark; Respondent’s use of the disputed domain name to purport to be associated with the WordPress Foundation and Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default 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. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the WP101 trademark has been registered in the United States with priority dating back to April 16, 2009, nearly a decade before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the WP101 trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s WP101 trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s WP101 trademark because, disregarding the “.net” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n 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 confusingly similar...”). gTLDs, such as “.net” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11. In view of Complainant’s registration of the WP101 trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. Prior panels have categorically held that use of a domain name for illegal activity - including the impersonation, phishing and fraud, the likes of which Complainant has credibly alleged in its Complaint - can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity., including that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). See also The Commissioners for HM Revenue and Customs v. Name Redacted,WIPO Case No. D2017-0501 (“In addition, the disputed domain names have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) As discussed in greater detail below with respect to the third element of the Policy, Respondent has configured the disputed domain name to resolve to a website ostensibly mimicking the WordPress Foundation, and Complainant has made the credible and unrebutted argument that the Respondent’s actions are part of an illegal scheme to phish for personal information belonging to individuals who visit Respondent’s website. Further to this point, the Panel observes that Respondent’s website no longer resolves to any content, which only further corroborates Complainant’s assertion that a successful takedown complaint was filed against Respondent by the WordPress Foundation. Furthermore, it is evident that Respondent, identified by registration data for the disputed domain name as Mei Han, is not commonly known by the disputed domain name or Complainant’s WP101 trademark. In view of the absence of any evidence supporting rights or legitimate interests in the disputed domain name, Respondent’s configuration of the disputed domain name to resolve to a website mimicking the WordPress Foundation, and Complainant’s credible and unrebutted argument that the Respondent uses the disputed domain name as part of an illegal scheme to phish for personal information belonging to individuals who visit Respondent’s website, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Prior panels have categorically held that registration and use of a domain name for illegal activity – including impersonation, passing off, and other types of fraud which Complainant has credibly alleged in its Complaint – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Wrongful use of others’ trademarks to extort information from unsuspecting and unwary people, by using the disputed domain name for phishing activity, is considered abusive registration of the disputed domain name under the Policy. See CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; The Boots Company, PLC v. The programmer adviser,WIPO Case No. D2009-1383; WSI Holdings Ltd. v. WSI House, Case No. D2004-1089 (“Respondent appears to be engaged in “phishing” for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”) While Respondent’s website no longer resolves, Respondent appears engaged in the misappropriated use of the WordPress Foundation’s stylized logo, website layout, and pictorial works marketing the use of WordPress to create a website. Furthermore, Respondent’s website featured numerous buttons titled “Get WordPress” ostensibly intended for users to click to download WordPress software, and which Complainant has credibly alleged are used by Respondent to defraud website visitors or otherwise phish for their personal information. The website content used as part of Respondent’s illegal scheme mimics content of the WordPress Foundation,. Respondent’s wrongful use of Complainant’s WP101 trademark as part of that scheme to extort information from unsuspecting and unwary people nevertheless constitutes abusive registration and use in bad faith. In view of Respondent’s use of the Complainant’s trademark as a domain name resolving to a website that displays content belonging to the WordPress Foundation, Complainant’s credible arguments that Respondent’s website phishes for personal data, and Complainant’s credible argument that Respondent’s website has been suspended by Respondent’s hosting provider, the Panel concludes that Complainant has established the third element 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 Phillip V. Marano
ii. 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.
Sole Panelist
Date: June 24, 2021
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