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 Jamie Wells of Flushing, New York, United States of America.
The disputed Domain Names <wikimobipedia.org> and <wikimobipedia.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2010. On February 22, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name <wikimobipedia.org>. On February 23, 2010, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 16, 2010.
On March 18, 2010, the Center received a supplemental filing from the Complainant, requesting the addition of the disputed domain name <wikimobipedia.com> to the proceeding. The Center accepted the supplemental filing and addition of the disputed domain name <wikimobipedia.com> on a preliminary basis pending the outcome of a registrar verification response. On March 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name <wikimobipedia.com>. On March 18, 2010, GoDaddy.com, Inc. 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 thereafter on March 19, 2010 accepted the Complainant's supplemental filing on a provisional basis, subject to the discretion of the Panel. The Respondent was given an additional 20 calendar days to submit a Response, with the due date for Response of April 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 14, 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 Florida nonprofit corporation based in San Francisco, California. The Complainant was established in 2003 by Jimmy Wales, the creator of Wikipedia. As recounted in the Complaint,
“Complainant operates some of the largest collaboratively edited reference projects in the world, including the Wikipedia website (at www.wikipedia.org), the fourth most-visited website in the world. More than 10 million articles in 250 languages have been published on the Wikipedia website.”
The Complainant holds numerous trademark registrations worldwide comprising or containing the standard-character mark WIKIPEDIA. These include United States Trademark Registration No. 3040722 (registered January 10, 2006) and No. 3505429 (registered September 23, 2008), and European Union Common Trademark No. 0839132 (registered December 16, 2004).
The Complainant or its predecessor have operated websites associated with the domain names <wikipedia.org> and <wikipedia.com> since 2001.
Both Domain Names were registered on May 16, 2009. The Domain Names currently resolve to an active website, and the Complaint attaches screen shots of the Respondent's website associated with the Domain Names. The website prominently features what appears to be an exact copy of the Complainant's distinctive “puzzle globe” graphic, and the name “Wikimobipedia” is displayed in a similar manner to that used by the Complainant, including larger first and last letters, with “mobi” inserted in a different typeface. The home page introduces the Respondent's website as “Your Independent Resource for All Things Mobile”. Specifically, the home page characterizes the website as
“a user-generated index of mobile suppliers and insights – mobile advertising networks, case studies, rich media, content, apps, mobile video, sms platforms, research, audience data, WAP site builders, and more. The objective here is to provide a centralized, dynamic resource for buyers of mobile marketing, advertising and related products and services – so that they can easily access the information they need to begin the purchase process.”
On January 5, 2010, the Complainant's general counsel sent an email to the Respondent saying that users had reported that the Respondent's website featured “variants” of the Complainant's trademarked and copyrighted logos. Counsel asked whether the Respondent had ever sought a license to use them, and the Respondent replied on the same day that he had not. The Complainant's counsel communicated further as follows:
“Well, since you're not affiliated at all with us, we're going to have to insist that you change your logo to one that is not confusingly similar to our puzzle-globe logo. That leaves us with the question of the word mark ‘wikipedia' and your variant of it in ‘wikimobipedia.' Clearly it's not a parodic use of our word mark, as inspection of your site confirms. We'd prefer that you migrate your site to a domain name that doesn't free-ride on the good will established by the word mark ‘Wikipedia.'”
The Respondent promptly replied by email that he did not agree that a user would confuse the websites.
In his next email on the same day, the Complainant's counsel cited the Complainant's trademark rights and offered to reimburse the Respondent for expenses in moving his website, with non-infringing material, to another domain name. In reply, the Respondent said he did not have time to address this request immediately. He also stated that he sold no advertising on the website, and he indicated that he chose the name (“wikimobipedia”) because he uses open-source wiki software and provides encyclopedic references, including “information about mobile”. This proceeding followed.
The Complainant contends that the Domain Names are confusingly similar to its WIKIPEDIA mark and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant argues that the Respondent registered and used the Domain Names in bad faith to mislead Internet users and attract them to the Respondent's website for commercial gain.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As recounted above, after the commencement of this proceeding the Complainant submitted a supplemental filing requesting the addition of the Domain Name <wikimobipedia.com>. The Center accepted the supplemental filing provisionally and obtained registrar verification, confirming that <wikimobipedia.com> is also registered to the Respondent. The Center gave the Respondent an additional 20 days to submit a Response addressing both Domain Names, and the Respondent did not submit any response.
Paragraph 10(e) of the Rules empowers the Panel to consolidate multiple domain name disputes, subject to the Panel's obligations to conduct the proceedings with “due expedition” and to ensure that each party is given a fair opportunity to present its case (Rules 10(b), (c)). As the same parties are involved with both Domain Names and the Center provided a full response period for the additional Domain Name, the Panel finds it both expedient and fair to accept the Complainant's supplemental filing and add the Domain Name <wikimobipedia.com> to this proceeding.
The Complainant holds registered trademarks for WIKIPEDIA, a distinctive coined name combining “wiki” (a term for a website or software allowing easy creation and editing of interlinked web pages) and “pedia” (the last syllables of “encyclopedia”), suggesting a wiki-based encyclopedic reference website. The Domain Names both reproduce these elements in their entirety, inserting “mobi” between them. “Mobi” is often used generically to refer to mobile communications and mobile services, as in the top-level domain name “.mobi”.
The addition of such generic material between elements of a distinctive mark does not reduce or eliminate the confusing similarity of the Domain Names. See, e.g., GoDaddy.com, Inc. v. Domainsnext.com, WIPO Case No. D2009-0073 (<gotodaddy.com> was found to be confusingly similar to the GODADDY mark). In this case, the additional material may actually contribute to the likelihood of confusion, since the Complainant itself offers mobile versions of its websites, as well as “apps” (software applications) designed to facilitate access to the Complainant's websites by mobile telephones and other wireless devices. Consequently, the Panel finds confusing similarity between the Domain Names and the Complainant's mark for purposes of the first element of the Complaint.
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of any domain name confusingly similar to the Complainant's WIKIPEDIA mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Names, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response explaining his choice and use of the Domain Names. The record includes only screen shots of the home page associated with the Domain Names (the Internet Archive's Wayback Machine does not include any pages from the Respondent's former website) and brief email replies from the Respondent in January 2010. The website was expressly designed to index commercial offerings and provide resources for buyers and sellers of mobile marketing and advertising services and related products, which does not appear to be a “legitimate noncommercial or fair use” of the Domain Names. It is also not evident that the Respondent himself offered goods or services using the Domain Names or that the Respondent or an associated business were commonly known by a corresponding name.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) 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.”
The Respondent said in an email that he did not display advertising on the website, and no advertising is apparent on the screen shots of the home page. It is not known if and how the Respondent obtained revenues from listing commercial offerings of third parties in his interactive index, or if he relied on the website to generate interest in his own professional capabilities.
What is clear, however, is that the Domain Names themselves are confusingly similar to the widely known WIKIPEDIA mark, and that the Respondent used the Domain Names to bring visitors to his own website, which was designed with a remarkably similar “look and feel” to the Complainant's websites, including copied logos and typefaces. As another UDRP WIPO panel found in similar circumstances,
“[t]he 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).” Wikimedia Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699.
Whether this practice was for the Respondent's direct commercial gain in this instance or for some other motivation, the use of confusingly similar Domain Names, along with logos and presentations copied from one of the most visited websites on the World Wide Web, reflects bad faith in the registration and use of the Domain Names. The Panel finds this conduct sufficient to establish the third element of the Complaint.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <wikimobipedia.org> and <wikimobipedia.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: April 15, 2010