The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, internally represented.
The Respondent is Domain Manager, Websoft Inc. of Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 July 11, 2017. The Complaint was notified to the Respondent by email and in hard copy. The hard copy of the Complainant was not able to be delivered due to incorrect contact details.
In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2017. On July 17, 2017 the Respondent sent an email communication to the Center. On July 19, 2017, the Complainant requested the suspension of the proceedings. On July 20, 2017 the Center notified the suspension of the proceedings to the Parties. On August 16, 2017 the Complainant requested that the proceedings be reinstated. On August 17, 2017 the Center notified the parties that the proceedings were reinstated and that the new Response due date was August 28, 2017. The Respondent did not submit any response. Accordingly, the Center informed the Parties it would proceed to panel appointment on August 29, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on September 13, 2017. 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
In the absence of any contrary claims from the Respondent, the Panel has accepted the following as the factual background to this Complaint, derived largely from the Complaint and the case file.
The Complainant is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. The Complainant was founded in 2003, and today manages 11 free knowledge projects built and maintained by a community of over 77,000 active volunteers. The many well-known projects managed by the Complainant include Wikimedia Commons, a shared media repository of over 35 million freely usable images, sound files, and video files; Wiktionary, an online dictionary and thesaurus; Wikivoyage, a free, worldwide travel guide; and first and foremost, Wikipedia, a free, online encyclopedia compiled, edited, and maintained by over 70,000 active contributors.
The Complainant provides technological, legal, fundraising, and administrative support for these projects, which together represent one of the most-visited web properties in the world. The Complainant also supports the Wikimedia movement by overseeing a network of organizations around the world, including Wikimedia chapters, thematic organizations, and user groups. These organizations, which share the Complainant's mission, support Wikimedia movement activities within a specified geographical region by collecting donations, organizing local events, promoting current Wikimedia projects and initiatives, and providing points of contact for potential partners and supporters. Wikimedia chapters, user groups, and thematic organizations adopt names that clearly link them to the Wikimedia movement.
In addition, Wikimedia chapters and user groups are granted the right to use the Complainant's trademarks for work, publicity, and fundraising purposes. Currently, there are over 30 chapters, over 70 user groups, and 1 thematic organization that span over 40 countries and 6 continents. Wikipedia is the oldest and largest of the Complainant's projects. Since its founding in 2001, Wikipedia has grown and today offers over 43 million articles in over 290 languages, has about 500 million unique visitors each month, and is consistently ranked as one of the most popular web properties in the world.
The Complainant is the owner of trademark registrations for WIKIPEDIA, including, inter alia, United States Trademark Registration No. 3,040,722, registered on January 10, 2006.
The Complaint provides evidence of the website at the dispute domain name. That website homepage presents a simple list of links, with titles such as "Wikipedia Encyclopedia", "Encyclopedia Search", and "Wiki Review".
The disputed domain name was created on August 9, 2010. 5. Parties' Contentions A. Complainant
The Complainant provided evidence of having registered rights in a trademark for WIKIPEDIA, including a mark registered in 2006 from the United States Patent and Trademark Office, for "[p]roviding information in the field of general encyclopedic knowledge via the Internet." The registration indicates first use of the mark in January, 2001. In subsequent years, the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark. The Complainant owns approximately 303 trademark registrations worldwide for the WIKIPEDIA trademark and foreign equivalents. The Complainant also claims extensive common law rights in that mark, which it says has acquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001.
The Complainant says that its WIKIPEDIA marks are unique and proprietary to the Complainant. The marks belong exclusively to Complainant, and represent the distinctive nature and quality of services that the Complainant provides. Accordingly, the marks have become very valuable assets of the Complainant. Even though the Complainant is a nonprofit organization, thousands of contributors and volunteers have spent a considerable amount of time and effort researching and developing the reference services that are promoted under the WIKIPEDIA marks.
The Complainant refers to a series of prior decisions under the Policy which found that the Complainant has rights in its marks. These include, e.g., Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises,WIPO Case No. D2011-0911 (concluding that the Complainant owns both registered and common law rights in the mark WIKIPEDIA and that the mark is well known worldwide).
The Complainant says that the disputed domain name is identical to its registered WIKIPEDIA mark. The disputed domain name contains the entire WIKIPEDIA mark and does not alter that mark in any way, making the two virtually indistinguishable. Moreover, the Respondent's use of the entire WIKIPEDIA mark increases the likelihood that Internet users trying to visit the Complainant's website will be diverted to a different site.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of or otherwise affiliated with the Complainant, and the Complainant has never authorized or otherwise condoned or consented to Respondent's registration of the disputed domain name. Furthermore, the Respondent is not commonly known by the disputed domain name. The substantial similarities between the disputed domain name and the Complainant's mark is similar to "typosquatting," in which a party deliberately misspells a rights holder's trademark to redirect traffic to the party's site.
Finally, the Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant says that the Respondent has not made preparations to use the disputed domain name in connection with a bona fide offering of goods or service for legitimate noncommercial purposes. Rather, the Respondent is using the disputed domain name to redirect users to malware and potential adware links. Upon visiting the site, Internet users immediately see a page that states "PRIVILEGED & CONFIDENTIAL ATTORNEY WORK PRODUCT", "Software may be out of date" and "Please install the latest version of Flash Player HD." A pop-up also informs the viewer that "FlashPlayer is available for your Mac and is ready to install." Alternatively, visitors are redirected to a webpage that includes several links that appear to be "pay-per-click" advertisements. One link leads, for example, to "E" and "/become-fit-in-1-month." The Complainant provides evidence of screenshots relevant to these webpages.
The Complainant says that using a well-known mark to maliciously divert Internet users to adware and malware is not a bona fide. The Complainant's first use of the WIKIPEDIA mark predates the Respondent's registration of the disputed domain name in 2010. Therefore, the Respondent knew or should have known of the Complainant's rights to the WIKIPEDIA mark. The Complainant also sent the Respondent a cease and desist letter in June 2017, to which the Respondent did not reply. B. Respondent
The Respondent did not reply to the Complainant's contentions.
In response to the notification of the Complaint, on July 17, 2017, the Center received an email from the "Websoft Team" which stated that "My client owns the domain name, and he has no intention to sell it to Wikipedia or to harm the brand. he bought the name few months ago he is willing to give it to for free.. let me know what should we do next."
On July 17, 2017, the Center contacted the parties noting that "pursuant to the Rules, paragraph 17, a UDRP proceeding may be suspended to implement a settlement agreement between the Parties." On July 19, 2017, the Complainant sought a 30-day suspension of the proceedings to explore the possibility of a settlement.
On August 2, 2017, the Center received a further email from the Respondent which stated that "The person who sent the email kept ignoring my emails or my client's. are you going to transfer the domain name without my consent ? my client owns the name, and he didn't use it for evil or trying to sell it. what is the situation here ? the one Charles M. Roslof, kept ignoreing my emails and just send me notifications what does he want ?".
The Complainant sent a further email seeking to clarify that its communications were for the purpose of seeking a settlement. In the event, no settlement was achieved and, on August 16, 2017, the Complainant requested that the proceedings be reinstated.
The Respondent's apparent representative sent a further email on August 21, 2017 which stated only that "My client would like to fill out the complaint, please show us how to do it. We bought this domain name for my client, it's his legal property. My client could even give it to them for free, but not by threats. You still haven't told us how to write a complaint and to which email box."
After the due date for the Response, the Respondent sent a further email on August 29, 2017 stating only that "sorry My client was very busy I will ask him to write you an email tomorrow".
No further communications were received from the Respondent. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
These elements are discussed in turn below, immediately following a brief discussion of the import of the delay in these proceedings being filed. A. Delay
While the Complainant has established a convincing case against the Respondent, detailed further below, the Panel notes that the Complainant did not provide reasons for the evident long delay in filing these proceedings. The Complainant's own evidence was that the disputed domain name was registered by the Respondent in 2010. (The Registrar's own confirmation of the details for the disputed domain name was more equivocal – stating only that the dispute domain name had been registered by the Respondent since "at least" 2016.)
Regardless, the Panel has disregarded this delay in considering the elements that follow. A delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. And the Respondent itself has not come forward with any argument that any delay is material to these proceedings. B. Identical or Confusingly Similar
Is the disputed domain name identical or confusingly similar to the Complainant's undisputed rights in its registered trademark for WIKIPEDIA? In answering this question, it is well established under domain name dispute resolution policies, in similar terms the Policy in this case, that the domain name suffix is to be disregarded. If that suffix is disregarded, the text of the disputed domain name is self-evidently identical to the Complainant's mark.
The Panel therefore finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Is there any evidence that the Respondent has rights or legitimate interests in the disputed domain name?
The Complainant has strongly contested that there is no such evidence, as set out above. By doing so, the Complainant has established a prima facie case against the Respondent. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition: "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 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Respondent has failed to come forward with relevant evidence, or for that matter any evidence, that would demonstrate that it has rights or legitimate interests. The few emails sent to the Center by the Respondent contain no substantive claims to having such rights or legitimate interests.
While the issue of bad faith is a separate ground under the Policy, discussed further below, the Panel considers that a finding of bad faith would also point towards a prima facie finding that the Respondent lacks rights or legitimate interests in the disputed domain name. A finding against a respondent in similar circumstances has been established in a series of previous decisions under the UDRP, see, e.g., TAG HEUER S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871.
In this case, the Complainant's mark is very well-known, is exactly reproduced in the disputed domain name, has apparently used for "pay per click" advertising and potentially also malware, and the Respondent has made no substantive response to the allegations against it. In these circumstances, the Panel cannot regard the Respondent's conduct as demonstrating a bona fide offering of goods or services, or providing any other basis on which rights or legitimate interests might be established.
For these reasons, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel also considers that the evidence points to the registration and use of the disputed domain name in bad faith.
As noted above, and found in previous cases under the Policy, the Complainant's mark is very well-known. The Respondent itself appears to acknowledge that it was aware of the Complainant's "brand", by making claims in its emails that its registration was not intended to harm it. The Panel therefore infers that the Respondent was well-aware of the Complainant's mark when it registered and subsequently used the disputed domain name.
The Panel further considers that the evidence indicates that the Respondent registered and has used the disputed domain name, that exactly reproduces the Complainant's mark, to misleadingly attract Internet users for commercial gain. Intentional conduct of this kind is evidence of bad faith, as set out in paragraph 4(b)(iv) of the Policy. As set out above, the Respondent has used the disputed domain name to link to a website with a variety of links, many of which are suggestive of the Complainant's business. The Complainant provides evidence that at one point the Respondent's website redirected users to other commercial oriented websites, and offered downloads of software that the Complainant claims was malware or adware.
There is further evidence of bad faith in this case. The Respondent failed to reply to a cease and desist letter sent by the Complainant. As outlined above, the Respondent also sent a series of emails to the Center suggesting that it was willing to transfer the disputed domain name to the Complainant. These emails led to a suspension of these proceedings for a period, to facilitate a potential settlement between the parties. In the event, no such settlement was achieved, for reasons that are not clearly articulated in the case file.
However, the Panel has inferred that, given the demonstrated prior willingness of the Complainant to avoid these proceedings through its cease and desist letter, the failure of the parties to achieve a settlement was due to the failure of the Respondent to follow through on its claims to be willing to transfer the disputed domain name. There are some claims in the Respondent's emails to not receiving replies from the Complainant. The Panel does not consider these claims to be plausible given the prior steps and effort the Complainant has apparently taken to seek a transfer of the disputed domain name. In the circumstances, the Respondent's repeated suggestions, at a very late stage of these proceedings and after appointment of the Panel, is suggestive that the Respondent was seeking only to drag out these proceedings so as to continue deriving some commercial benefit from its misleading registration. Such conduct has also been found to contribute to a finding of bad faith in previous decisions under the Policy: see, e.g., Malley's Candies Inc. v. Texas International Property Associates - NA NA,WIPO Case No. D2008-1803.
For these reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith for the purpose of 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, , be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: September 27, 2017
Full & Egal Universal Law Academy