ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Wikimedia Foundation, Inc. v. Wajahat Khan, Sybex Lab Case No. D2024-4445 1. The Parties Complainant is Wikimedia Foundation, Inc., United States of America (“United States”), represented by Zacco Sweden AB, Sweden. Respondent is Wajahat Khan, Sybex Lab, United States. 2. The Domain Names and Registrar The disputed domain names , , , , and (are registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2024. On October 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown, Data Protected) and contact information in the Complaint. The Center sent an email communication to Complainant on November 1, 2024, 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 November 5, 2024. 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 November 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2024.
page 2 The Center appointed Scott R. Austin as the sole panelist in this matter on December 15, 2024. 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 following facts appear from the Complaint (as amended) and its Annexes, which have not been contested by Respondent. Founded in 2003, Complainant is a United States nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content and today manages 14 free knowledge projects built and maintained by a community of thousands of active volunteers, known as the “Wikimedia movement”, which projects include a free, online encyclopedia compiled, edited, and maintained by over 115,000 active contributors, operated by Complainant under the trademark “WIKIPEDIA” (the “WIKIPEDIA Mark”). Complainant claims common law rights in the WIKIPEDIA Mark through acquired distinctiveness since its first use in 2001 and statutory trademark rights through ownership of “approximately 468” national and international trademark registrations for the WIKIPEDIA Mark and its foreign equivalents in over 111 jurisdictions around the world, including the following: - United States Registration No. 3,040,722, WIKIPEDIA , registered on January 10, 2006, for ”providing information in the field of general encyclopedic knowledge via the Internet,” and claiming a first use date of January 2001; - United States Registration No. 3,505,429, WIKIPEDIA, registered on September 23, 2008, for a range of online encyclopedia services in International Classes 35, 38, and 41, claiming a first use date of January 13, 2001; and - United States Registration No. 3, 773,952, WIKIPEDIA , registered on April 13, 2010, for a range of merchandise in International Classes 9, 14, 16, 18, 21, 25 and 28, claiming a first use date of December 7, 2005. The WIKIPEDIA Mark also serves as the entirety of the second level of Complainant’s official domain name, , registered by Complainant on January 13, 2001, and used to access the official WIKIPEDIA website at “www.wikipedia.org” (“Official WIKIPEDIA Website”), as well as owning other domain names incorporating the WIKIPEDIA Mark, or centered around the term “wiki” as the predominant distinctive portion of the domain name, including , , and numerous others incorporating the term “wiki”. All five disputed domain names were registered with the same Registrar on the same date, June 25, 2024. Each incorporates the term “wiki”, recognized as the common abbreviation of Complainant’s WIKIPEDIA Mark, combined with generic terms. Each shares the same two name servers and the same administrative contact postal address and registrant country. Each resolves to a copycat website configured to prominently include not only the WIKIPEDIA Mark and the Wikipedia logos such as Complainant’s design trademark known as the “puzzle globe”, but also text, graphics and layout to create the impression Respondent is somehow connected, endorsed or sponsored by Complainant without any accurate or prominent disclaimer, in order to further a scam to sell Undisclosed Paid Editing (UPE) services to unsuspecting consumers. Respondent’s registration data email address also references the name of the same respondent who registered in bad faith domain names found to be confusingly similar to Complainant’s WIKIPEDIA Mark in a prior UDRP decision ordering transfer to Complainant.
page 3 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names: Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s trademark. Notably, Complainant shows that the disputed domain names are confusingly similar to its trademark WIKIPEDIA, as in each of then the term “wiki”, being the common abbreviation of the WIKIPEDIA Mark, is fully incorporated, and combined with generic terms. Complainant further contends that Respondent has no rights or legitimate interests in respect of each disputed domain name; and that each disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview 3.0, section 4.2. Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of the probabilities that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7. The Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. Complainant’s trademark registration evidence has been submitted in the form of electronic copies of valid and subsisting national and international trademark registration documents in the name of Complainant referenced in section 4 above. 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; see Advance Magazine Publishers Inc., Les Publications
page 4 Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. Prior UDRP panels have found Complainant has registered and common law rights in the WIKIPEDIA Marks and that the WIKIPEDIA Mark is well known worldwide. See, e.g., Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911; Wikimedia Foundation, Inc. v. Domain Administrator, PrivacyGurdian.org / John Ray, WIPO Case No. D2019-0010. The WIPO Overview 3.0, section 1.8 provides: “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.” Prior UDRP panels have also found the term “wiki”, to be a distinctive element and the common abbreviation of Complainant ’s trademark WIKIPEDIA. See, e.g., Wikimedia Foundation, Inc. v. Joseph lewis, Ecommerce Company; Kevin Lesnar, Infinity Project Manager; Soft Fellow, WIPO Case No. D2024-2343; Salvatore Ferragamo S.p.A. v. Zhan Jie, WIPO Case No. D2016-1601; While the addition of the terms here, “elite”, “mastery”, “validate”, “expertise”, and “moderators”, to “wiki”, as the generally accepted abbreviation for the WIKIPEDIA Mark, may bear on assessment of the second and third elements, the Panel finds the addition of such terms within each respective disputed domain name does not prevent a finding of confusing similarity between the disputed domain names and Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. See Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203. This is especially the case here where the Panel finds the website content associated with each disputed domain name clearly shows Respondent seeks to target Complainant’s WIKIPEDIA Mark through each disputed domain name to further its undisclosed paid editing scam discussed in more detail under elements two and three below. Prior UDRP panels have held where the mark is not present in its entirety in a disputed domain name, the content at the corresponding website serves to affirm a finding of confusing similarity. Additionally, the registration of multiple domain names with similar content and targeting the same mark reinforces this conclusion. See Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156; WIPO Overview 3.0, section 1.15. Prior UDRP panels have also found the Top-Level Domains, such as “.com” and “.org”, being viewed as a standard registration requirement, may typically be disregarded under the first element analysis. See WIPO Overview 3.0, section 1.11.1; see also Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820. The Panel finds Complainant’s WIKIPEDIA Mark is recognizable in its commonly accepted abbreviated form WIKI within each of the disputed domain names. Accordingly, all five of the disputed domain names are confusingly similar to the WIKIPEDIA Mark for the purposes of the Policy. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to
page 5 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in each of the disputed domain names. Complainant contends that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a respondent’s rights to and legitimate interests in a domain name are present in this case. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. First, Complainant asserts that it has no commercial relationship with Respondent, who is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent authority or license to register or use Complainant’s trademarks in any manner, including in domain names. Prior UDRP panels have held “in the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; see also Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798. Second, Complainant contends Respondent is not commonly known by any of the disputed domain names, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). The Registrar’s registrant data submitted to the Center for each of the corresponding disputed domain names, identified “Wajahat Khan/Sybex Lab” as their registrant/registrant organization. The registrant/registrant organization listed above as Respondent could not be considered to be commonly known by any of the disputed domain names because each clearly bears no resemblance to it, nor to the WIKIPEDIA Mark, the WIKI abbreviation for the WIKIPEDIA Mark, nor to Complainant’s official domain name. Prior UDRP panels have held where no evidence, including the WhoIs record for the disputed domain name, suggests that Respondent is commonly known by the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. Most importantly, Complainant contends Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence shows the respective websites to which each respective disputed domain name resolves has been carefully crafted to create a false association or affiliation with Complainant to further Respondent’s Undisclosed Paid Editing scam offering unauthorized Wikipedia page writing service which fraudulently claims their writers “have been deemed by Wikipedia itself as experts at what they do”. Panels have held that the use of a domain name for illegal activity, as applicable to this case: impersonation/passing off, or other types of fraud through Respondent’s offering of UPE services to extort money from unsuspecting consumers can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports Complainant’s argument because it shows each Respondent website prominently features unauthorized use of Complainant’s WIKIPEDIA Mark for the sale of unauthorized UPE services to create the false impression that WIKIPEDIA page writing services for sale at each Respondent website are not only authorized, but endorsed by Complainant and as Complainant contends used as a scheme to unlawfully extract money, financial and personal information from unsuspecting consumers believing Respondent to be affiliated with Complainant. Respondent, therefore, is using the disputed domain name to confuse Internet users and suggest an affiliation with or sponsorship by Complainant to attract Internet users to its websites for its commercial gain. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading. Respondent, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525.
page 6 Further, Complainant contends the websites connected to the Domain Names do not avail themselves of any of the protections put forward in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in connection with any allegation that Respondent is a legitimate service provider in relation to Complainant’s products and services making a bona fide offering of goods or services, such as providing a clear and accurate disclaimer or statement clarifying that Respondent is not affiliated with Complainant in any way. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Finally, according to the WIPO Overview 3.0, section 2.5.1, where a domain name consists of the complainant’s trademark and certain additional terms, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the complainant. Having reviewed the record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established for each of the disputed domain names. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Complainant contends that Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business by configuring and registering each domain name that incorporates the commonly accepted abbreviated form of WIKIPEDIA Mark, WIKI in its entirety with the addition of descriptive terms “elite”, “mastery”, “validate”, “expertise”, and “moderators”. Respondent has thereby configured five domain names for registration that are each confusingly similar to Complainant’s trademark, as well as its official domain name to perpetrate a fraudulent undisclosed paid editing scam. Prior UDRP panels have found a domain name was registered in bad faith where the respondent registered the domain name for the purpose of intentionally attempting to impersonate or mislead in order to commit fraud. See, e.g., Houghton Mifflin Co. v. The Weatherman Inc., WIPO Case No. D2001-0211; Marlink SA v. Sam Hen, Elegant Team, WIPO Case No. D2019-1215; Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861. Prior UDRP panels have also held where the disputed domain name is configured in a manner to wholly incorporate a complainant’s well known mark, as the recognized abbreviated form of Complainant’s WIKIPEDIA Mark is incorporated with the additional terms here, the disputed domain name can only sensibly refer to Complainant; thus, there is no obvious possible justification for Respondent’s selection of the disputed domain names other than registration in bad faith. See Wikimedia Foundation, Inc. v. Domain Administrator, PrivacyGuardian.org / John Ray, WIPO Case No. D2019-0010. As discussed in greater detail in Section 6B above, Complainant shows in evidence in the Annexes to its Complaint that Respondent used each disputed domain name to link it to a website to create a false association with Complainant and give the misleading and fraudulent impression that Respondent’s unauthorized UPE services are sponsored or endorsed by Complainant; purportedly to extract money from Internet users seeking the opportunity to add their biographies to Complainant’s online encyclopedia through the purported sale of Respondent’s expertise which is either counterfeit or non-existent and likely intended only to further a fraudulent UPE scam which constitutes evidence of bad faith use under the well-established principles in the cases decided under the Policy. See WIPO Overview 3.0, section 3.4; see also The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephan Chukwumaobim, WIPO Case No. D2012-1088;
page 7 Ropes & Gray LLP v. Domain Administrator, c/o DomainsByProxy.com / Account Receivable, WIPO Case No. D2020-0294. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain names constitutes bad faith registration and use under the Policy. The Panel finds that the evidence presented here, Respondent’s five respective copycat websites selling unauthorized copies of Complainant’s products under its WIKIPEDIA Mark on the respective copycat websites to pass itself off as affiliated with, endorsed or sponsored by Complainant’s Official WIKIPEDIA Website, as well as further the risk of a fraudulent UPE scam is sufficient for this Panel to find bad faith registration and use of all five of the disputed domain names. See WIPO Overview 3.0, section 3.4; see also On AG, On Clouds GmbH v. Web Commerce Communications Limited, Domain Admin, Whoisprotection.cc / Christin Schmidt, Sandra Naumann, Jana Papst, WIPO Case No. D2021-2263. The Panel finds the third element of the Policy has been established. 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 names , , , , and be transferred to Complainant. /Scott R. Austin/ Scott R. Austin Sole Panelist Date: December 26, 2024
Full & Egal Universal Law Academy