The Complainant is The Wikimedia Foundation, Inc, United States of America (“United States” or “US”), represented by Jones Day, United States.
The Respondent is PERFECT PRIVACY, LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 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 the Complainant on October 14, 2021, 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 October 18, 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 the Respondent of the Complaint, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021
The Center appointed Colin T. O’Brien as the sole panelist in this matter on November 18, 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 BackgroundComplainant is a nonprofit charitable organization dedicated to the development and distribution of free, multilingual, educational content. Complainant was founded in 2003. Complainant’s projects include Wikipedia, a free, online encyclopedia compiled, edited, and maintained by over 146,000 active contributors, and Wikimedia Commons, a shared media repository of over 68 million freely usable images, sound files, and video files, and Wikinews, a free-content news source.
Complainant owns approximately 430 trademark registrations worldwide for the WIKIPEDIA trademark and the foreign equivalents thereof, has extensive common law rights, and has acquired distinctiveness in the Wikipedia trademark since its first use in 2001. Complainant owns national and International Registrations for these marks in over 111 jurisdictions around the world.
Specifically, Complainant owns numerous registered trademarks globally including the following United States federal trademark registrations:
Trademark
Reg. No.
Registration Date
Goods and Services
WIKIPEDIA
3,040,722
January 10, 2006
Class 41: Providing information in the field of general encyclopedic knowledge via the Internet.
WIKIPEDIA
3,505,429
September 23, 2008
Class 35: Business administration in the nature of providing information through online websites in the field of general encyclopedic knowledge to third parties.
Class 38: Electronic transmission of data and documents via the Internet and other
databases; Electronic transmission of audiovisual, videographic or written files disseminated and downloadable via electronic communication networks;
Providing information on telecommunications; Providing multiple-user access to a global computer network;
Telecommunication services, namely, providing online electronic bulletin boards and messaging services for transmission of messages among computer users concerning encyclopedia article entries and the administration of an encyclopedia project; Electronic mail.
Class 41: Providing online publications in the form of encyclopedias and encyclopedia articles; Providing of training, namely, courses and seminars in the use of software and multimedia products, and in the editing of and collaboration on articles; Educational services, namely, conferences, workshops, and seminars concerning the administration of an encyclopedia project and the use and administration of encyclopedia article entries; Providing information on educational or entertainment events; Publication of books; Arranging and conducting of colloquia, conferences, and conventions in the fields of software and multimedia product use and in the editing of and collaboration on articles.
Complainant registered the domain name
The Disputed Domain Name was registered on January 27, 2021. At the time of filing the Complaint, the disputed domain name resolved to a website that appears to offer the installation of Virtual Private Network (“VPN”) software. The Panel notes that the Disputed Domain Name does not appear to currently resolve to an active website.
5. Parties’ Contentions A. ComplainantThe WIKIPEDIA mark is unique and proprietary to Complainant, belongs exclusively to Complainant, and represents the distinctive nature and quality of services that Complainant provides. The WIKIPEDIA mark has become a very valuable asset of Complainant.
Complainant and its affiliated chapters have also spent considerable time, effort, and money extensively promoting WIKIPEDIA in the United States and throughout the world.
The WIKIPEDIA mark is extremely well known within the United States and throughout the world such that when consumers see the Disputed Domain Name, they will likely assume the associated website will direct them to one of Complainant’s websites and the goods and services that Complainant provides in connection therewith.
Respondent’s Disputed Domain Name is nearly identical and confusingly similar to Complainant’s trademarks and domain names. The Disputed Domain Name “wikipiedia.com” contains the full WIKIPEDIA mark with the mere addition of the letter “i” between the letters “p” and “e”. Adding a letter has no distinguishing capacity in reference to Complainant’s mark.
Given the notoriety of the WIKIPEDIA mark and the fact that the Disputed Domain Name represents the legal equivalent of the WIKIPEDIA mark, the Disputed Domain Name is likely to cause consumers to believe that the website accessed through the Disputed Domain Name is affiliated with, authorized by, or endorsed by Complainant.
Respondent is not a licensee of or otherwise affiliated with Complainant and Complainant has never authorized or otherwise condoned or consented to Respondent’s registration of the Disputed Domain Name.
Respondent is not commonly known by the Disputed Domain Name. There is no evidence to suggest that Respondent is or has been commonly known by “Wikipedia” or “Wikipiedia” or any variation thereof. Respondent has registered the Disputed Domain Name through a privacy service to hide its identity. Given Respondent’s attempt to mask his or her identity behind a privacy protection service, the Panel should presume that Respondent is not commonly known by the Disputed Domain Name.
Respondent has not 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 Respondent used the Disputed Domain Name for any legitimate noncommercial or fair use purpose.
Respondent has registered and is using the Disputed Domain Name to capitalize on Internet users’ misspelling of Complainant’s domain name
Respondent reserved, used, and is holding the Disputed Domain Name willfully, in bad faith, and in complete disregard of Complainant’s exclusive rights to use and authorize the use of the WIKIPEDIA mark. Respondent did not adopt the Disputed Domain Name in ignorance of Complainant’s WIKIPEDIA mark. Rather, evidence suggests that Respondent was well-acquainted with Complainant’s WIKIPEDIA mark when it registered the Disputed Domain Name in 2021.
By using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain or for the purpose of making Internet users download malicious software, by creating a likelihood of confusion with Complainant’s well-known 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.
Complainant confirmed that the Disputed Domain Name redirects to a purported VPN software update and compelling users to download and install the VPN software.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has demonstrated it owns registered trademark rights in the WIKIPEDIA mark. The Disputed Domain Name incorporates a misspelling of the WIKIPEDIA mark, namely with the mere addition of the letter “i” between the letters “p” and “e”, which does not prevent a finding of confusing similarity between the mark and the Disputed Domain Name. See sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to the mark in which Complainant has rights.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not at any time been commonly known by the Disputed Domain Name. The fact that Respondent registered the Disputed Domain Name, which is a misspelling of Complainant’s WIKIPEDIA mark indicates that Respondent sought to use the Disputed Domain Name with an intent of capitalizing on the misdirection the nearly identical Disptued Domain Name would cause Internet users, which does not amount to fair use. Complainant has also presented prima facie evidence that the Disputed Domain Name offers the installation of what purports to be a VPN software, though the Complainant claims this is in actuality a malware scheme operated by the Respondent.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name; rather, the evidence suggests that the Disputed Domain Name was registered by Respondent to confuse users seeking or expecting the Complainant. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556.
In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Disputed Domain Name was registered many years after Complainant first registered and used its WIKIPEDIA mark. Considering the evidence on the record provided by Complainant with respect to the extent of use of its WIKIPEDIA mark, the typosquatting of Complainant’s mark in the Disputed Domain Name, combined with the absence of any evidence provided by Respondent to the contrary, it is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, Respondent undoubtedly knew of Complainant’s WIKIPEDIA mark, and knew that it had no rights or legitimate interests in the Disputed Domain Name. Prior panels have held that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
There is no benign reason for Respondent to have registered the Disputed Domain Name. Further, the use by Respondent is clearly in bad faith. The Complainant has provided evidence that the website to which the Disputed Domain Name is involved in a purported malware scheme, offering the installation of VPN software. Prior panels have held that the use of a domain name for purposes other than to host a website (such as malware distribution) may constitute bad faith. See section 3.4 of the WIPO Overview 3.0. Notwithstanding the prior use, the Panel notes that the Disputed Domain Name currently fails to resolve, which serves as further indication of bad faith. Moreover, considering the circumstances of the proceeding, the current passive-holding of the Disputed Domain Name does not prevent a finding of bad faith. See section 3.3. of the WIPO Overview 3.0.
Accordingly, the Panel concludes that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Colin O’Brien
Sole Panelist
Date: December 5, 2021