The Complainant is Wikimedia Foundation Inc. of San Francisco, California, United States of America, represented by The GigaLaw Firm, United States of America.
The Respondent is commens, Nan Jiang of Guangzhou, Guangdong, the People's Republic of China.
The Disputed Domain Name <softwarewikipedia.com> is registered with HiChina Zhicheng Technology Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2009. On December 14, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On December 15, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 15, 2009, the Center transmitted by email to the parties regarding the language of proceedings in both Chinese and English. On December 18, 2009, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date. In response to a notification by the Center regarding the Registrant information, the Complainant filed an amendment to the Complaint on December 15, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. The Respondent did not submit any formal response although the Respondent did write two emails to the Center on December 23, 2009 and one email on December 24, 2009. The first email acknowledged receipt of the Complaint, and requested clarification on the basis of the Complainant to which the Center directed the Respondent to the Complaint. The third email was a simple question – “If we change our dmain (sic) name, will everything be settled then?”. The Center's follow-up invitation to the Complainant to consider suspension of proceedings to explore settlement was declined by the Complainant.
The Center appointed Kar Liang Soh as the sole panelist in this matter on January 25, 2010. 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.
The Complainant is a non-profit organization which operates collaboratively-edited reference projects around the world, including the popular Wikipedia website at “www.wikipedia.org”. The Wikipedia website has published over 10 million articles.
The Complainant owns various trademark registrations worldwide for the word WIKIPEDIA (the “WIKIPEDIA Trademark”) including the following:
United States 3,040,722 September 14, 2004
Community Trademark 0839132 December 16, 2004
China G907474 September 20, 2006
The Complainant also owns the domain names <wikipedia.org> and <wikipedia.com> which have both been registered since January 2001.
The Disputed Domain Name was registered on April 13, 2009, quite some years after the Complainant's trademark registrations and domain name registrations.
There is very little information about the background of the Respondent and the Respondent has chosen not to assist this Panel in this respect by not filing a Response. The Complaint indicates that the Respondent operated a website to which the Dispute Domain Name resolved and which adopted many elements corresponding to those on the Complainant's website at “www.wikipedia.org.”
The Complainant, through counsel, had sent a demand letter to the Respondent on November 17, 2009. The Complainant did not receive any reply.
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the WIKIPEDIA Trademark;
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the WIKIPEDIA Trademark. The Respondent uses the Disputed Domain Name in connection with a website that is virtually identical to the look and feel of the Complainant's website and provides services directly competitive with the Complainant's services under the WIKIPEDIA Trademark; and
(c) The Disputed Domain Name is registered and used in bad faith by the Respondent. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the WIKIPEDIA Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website of a product or service on the Respondent's website. The virtually identical look and feel of the Respondent's website to the Complainant's website includes a near duplication of the Complainant's logo.
The Respondent did not reply to the Complainant's contentions.
The Registration Agreement is in the Chinese language and the default language of the proceedings should be Chinese, in accordance with paragraph 11(a) of the Rules. Regardless, the Panel may determine otherwise having regard to the circumstances of the case, to ensure fairness to the parties and to maintain cost-effective and expeditious proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293).
The Complainant requests that the language of the proceedings be English for the following reasons:
(1) The Respondent's website is in English; and
(2) The Disputed Domain Name is in English characters.
The Panel is hesitant to adopt a general rule that use of English words in a disputed domain name is sufficient basis per se for supporting a conclusion that a respondent is competent in English. However, the exclusive use of English on the Respondent's website does suggest very strongly that the Respondent is conversant in English and is unlikely to be prejudiced if the proceeding is conducted in English. Further, the Respondent has communicated with the Center by email exclusively in the English language. This Panel finds that the emails of the Respondent are written in comprehensible English.
Since the Respondent has chosen not to participate in this proceeding and/or object to the Complainant's request for English to be the language of the proceedings, it would also be inordinately burdensome to require the Complaint to be submitted in Chinese. Having regard to the circumstances, the Panel determines that English shall be adopted as the language of the proceedings in accordance with paragraph 11(a) of the Rules.
Paragraph 4(a) of the Policy requires the Complainant to show that:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
In view of the trademark registrations above, this Panel concludes that the Complainant owns rights in the WIKIPEDIA Trademark. Save for the addition of the word “software”, the word “wikipedia” in the Disputed Domain Name is identical to the Complainant's WIKIPEDIA Trademark.
The weight of authority of past panel decisions have established that a domain name incorporating a trademark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trademark (e.g., Edmunds.com, Inc. v. keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427; PM-International AG v. Man Utd Club, WIPO Case No. D2008-1432). The word “software” in the Disputed Domain Name is a non-distinctive prefix. There being no special circumstances in the facts requiring exceptional treatment, this Panel accepts that the Disputed Domain Name is confusingly similar to the Complainant's WIKIPEDIA Trademark.
It should be pointed out that the above holding is consistent with that of Wikimedia Foundation Inc v. Value Domain and Digirock, Inc, WIPO Case No. D2009-0139, filed by the Complainant in connection with the domain name <visualwikipedia.com>.
The lack of any substantive Response in the face of the many assertions in the Complaint that the Respondent has no rights or legitimate interests in the Disputed Domain Name is telling. The Panel concludes that the Respondent is not authorized by the Complainant to use the Complainant's WIKIPEDIA Trademark.
The evidence shows that the Respondent's website under the Disputed Domain Name incorporated many of the look-and-feel elements of the Complainant's website (including colour scheme, layout, typeface, section names and sizes, menu items, and spherical logo). This Panel accepts that the Respondent's website could be easily mistaken as the Complainant's website by a casual visitor. Without going into whether the Respondent's website amount to infringement of the Complainant's WIKIPEDIA Trademark and/or infringement of the copyright in the Complainant's website, the character of the Respondent's website is highly suspicious and points towards a reasonable likelihood that it may be used for such illegitimate purposes. The only observable reaction from the Respondent is an informal enquiry whether changing the Disputed Domain Name could settle the dispute between the parties.
In addition, the Respondent has displayed significant disinterest in protecting and disregard for the proceedings and the strong allegations of the Complainant and leaves this Panel with serious doubts as to whether the Respondent could have any rights or legitimate interests in the Disputed Domain Name.
In the light of the above, this Panel holds that a prima facie case has been made out in relation to the second limb of paragraph 4(a) of the Policy.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Having established that the Respondent's website is sufficiently similar to the Complainant's website to be mistaken for the latter, there arises a strong suspicion that the Respondent's website is using or intending to use the Disputed Domain Name to provide products and services under the Complainant's WIKIPEDIA Trademark. It is not necessary for the Panel to establish trademark infringement by the Respondent under the laws governing the relevant trademark registrations. The use of the Disputed Domain Name, the Complainant's WIKIPEDIA Trademark and the look-and-feel of the Complainant's website on the Respondent's website, without any sound explanation from the Respondent, leads to the conclusion that the Respondent is intentionally attempting to attract Internet users to the website for commercial gain in the manner described in paragraph 4(b)(iv).
The Complaint refers to various prior panel decisions which found bad faith registration and use of domain names incorporating well-known marks. The Panel suspects that the WIKIPEDIA Trademark being a globally ubiquitous mark may indeed be well-known. However, the Complainant has not provided significant evidence which permits this Panel to make such a finding in this particular proceeding. Be that as it may, it is not necessary for this Panel to consider these cases since the facts sufficiently establishes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In view of the above findings, the Panel holds that the registration and use of the Disputed Domain Name is also contrary to the third limb of paragraph 4(a) of the Policy.
For all 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, <softwarewikipedia.com>, be transferred to the Complainant.
Kar Liang Soh
Dated: February 9, 2010