World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation Inc. v. Moniker Privacy Services / Domain Admin, Frontline Media LLC

Case No. D2011-0106

1. The Parties

The Complainant is Wikimedia Foundation Inc. of San Francisco, California, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, Atlanta, Georgia, United States of America.

The Respondents are Moniker Privacy Services of Pompano Beach, Florida / Domain Admin, Frontline Media LLC, of Chicago, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain names <wikkipedia.org> and <wekipedia.com> are registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011 in relation to the domain name <wikkipedia.org>. On January 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <wikkipedia.org>. On January 20, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for this disputed domain name which differed from the named Respondent and contact information in the Complaint.1 The Center sent an email communication to the Complainant on January 24, 2011 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 January 25, 2011.

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 Respondents of the Complaint, and the proceedings commenced on January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 17, 2011.

The Center appointed William R. Towns as the sole panelist in this matter on February 28, 2011. 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.

On March 1, 2011, subsequent to the appointment of the Panel, the Center received an Amended Complaint from the Complainant, identifying an additional disputed domain name, <wekipedia.com> and naming an additional Respondent, Lee Schachtschneider. The Amended Complaint alleges that a substantial identity of interests exists between the three named Respondents in respect of the disputed domain names. The Panel issued a Procedural Order on March 6, 2011, directing the Center to transmit to the Registrar a request for registrar verification in connection with the disputed domain name <wekipedia.com>, and thereafter to formally notify the Respondents of the Amended Complaint, and to set a due date for Responses in accordance with the Rules.

In connection with the disputed domain name <wekipedia.com>, the Registrar on March 8, 2011 responded to the Center’s March 7, 2011 request for registrar verification by advising that this disputed domain name also was registered to Domain Admin, Frontline Media LLC.2 On March 9, 2011, the Center formally notified the Respondents of the Amended Complainant, and setting due date for the Response of March 29, 2011 in accordance with the Rules. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 30, 2011.

4. Factual Background

The Complainant is a non-profit organization that operates some of the largest collaboratively edited reference projects in the world, including the free online encyclopedia at the website “www.wikipedia.org”. The Complainant owns trademark registrations in the United States and elsewhere for WIKIPEDIA and other WIKIPEDIA-formative marks in connection with such services. The Complainant has used the WIKIPEDIA mark in commerce in the United States since January 2001. The Complainant also is the registrant of the domain names <wikipedia.com> and <wikipedia.org>.

The disputed domain names were registered on May 14 and 15, 2004. According to the Registrar’s WhoIs registrant database, the registrant of each of the disputed domain names is the Respondent Domain Admin, Frontline Media LLC. Both of the disputed domain names had been shown to be registered to Respondent Moniker Privacy Services, a privacy protection service affiliated with the Registrar, but the Registrar promptly disclosed Domain Admin, Frontline Media LLC as the registrant upon receiving registrar verification requests from the Center. The Respondent Lee Schachtschneider, using the Registrar-confirmed registrant’s email address “[…]@flm.net”, contacted the Complainant regarding this proceeding on February 7, 2011.

The disputed domain names both currently resolve to pay-per-click (“ppc”) parking pages containing links relating to a variety of goods or services, including those that compete with the services offered by the Complainant under the WIKIPEDIA mark. Prior to the filing of the original Complaint, the disputed domain name <wikkipedia.org> had been used with a website that redirects Internet visitors to a website at “http://www.wikipedia.com-survey.social2survey.info/survey1.html”, where personal information is solicited with the lure of “prizes” valued up to “$1,000.00”. Similar promotions are featured via pop-up windows. This website greets Internet visitors with the message “Dear Wikipedia Visitor” and also includes the Complainant’s globe logo.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the named Respondents are “aliases for each other”. The Complainant asserts right in its WIKIPEDIA mark by virtue of its registration and use in commerce since January 2001. According to the Complainant, the disputed domain names are confusingly similar to its WIKIPEDIA mark as both domain names are classic examples of “typosquatting”. The Complainant argues that the overall impression of each of the disputed domain names is one of being connected with the Complainant’s trademark.

The Complainant maintains that the Respondents lack rights or legitimate interests in the disputed domain names as the Complainant has not authorized the Respondents to use the WIKIPEDIA mark, and the Respondents are not commonly known by the disputed domain names. Further, the Complainant argues that the Respondents’ use of the disputed domain names, as reflected in the record, does not constitute the use of the domain names in connection with a bona fide offering of goods or services, and that the Respondents cannot claim to be making a legitimate noncommercial or fair use of the disputed domain names.

The Complainant asserts that the Respondents registered and are using the disputed domain names in bad faith. According to the Complainant, it is inconceivable that the Respondents registered the disputed domain names without knowledge of the Complainant’s activities and its WIKIPEDIA mark. The Complainant maintains that the Respondents are seeking to exploit and profit from the Complainant’s trademark rights to divert Internet traffic to the Respondents’ websites, and that the use of the Complainant’s globe logo on one of these websites is further evidence of such bad faith.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Consolidation also may be appropriate with respect to differently named respondents where common control is exercised over the disputed domain names or the websites to which the domain names resolve. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. Such common control may justify treatment of multiple respondents as a single domain name holder.

In this case the Complainant asserts that the three named Respondents are aliases for each other. This assertion, however, is not strongly supported by the record before this Panel. Moniker Privacy Services is a privacy protection service affiliated with the concerned Registrar. And while there is indication in the record that Lee Schachtschneider, using the Registrar-confirmed registrant’s email address “[…]@flm.net”, contacted the Complainant regarding this proceeding, this without more is not persuasive evidence that Domain Admin, Frontline Media LLC is an alias for Lee Schachtschneider.

Regardless, the Panel concludes that the consolidation of the disputed domain names in a single proceeding is consonant with paragraph 3(c) of the Rules. In response to requests for registrar verification respecting the disputed domain names, the concerned Registrar promptly informed the Center that the registrant of each of the disputed domain names was the Respondent Domain Admin, Frontline Media LLC. The Panel is persuaded from the facts and circumstances of this case that Domain Admin, Frontline Media LLC is the proper Respondent, and finds that consolidation is appropriate under paragraph 3(c), as both domain names are registered to the same domain name holder – namely, Domain Admin, Frontline Media LLC (hereinafter the “Respondent”).

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations which shall constitute evidence of the registration and use of a domain name in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain 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, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) 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. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s WIKIPEDIA mark, in which the Complainant has established rights through registration and use in commerce. Regarding the question of identity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

The disputed domain names <wikkipedia.org> and <wekipedia.com> are virtually identical to the Complainant’s WIKIPEDIA mark, the former differing only by an additional “k”, and the latter differing only by the substitution of “e” for the initial “i” in WIKIPEDIA. These slight differences do not diminish the confusing similarity of the disputed domain names to the Complainant’s mark in terms of sight, sound and overall impression. Further, this is strongly evocative of the practice commonly referred to as “typosquatting” – the intentional registration and use of a domain name that is a common misspelling of a distinctive mark. In a typical “typosquatting” case, the respondent has registered and is using the domain name in order to take advantage of typographical errors made by Internet users seeking the complainant’s commercial website and divert them to the respondent’s website. Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain names are confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain names to attract Internet users to pay-per-click websites with advertising links to various goods and services, a number of which compete with the services offered by the Complainant. There is no indication that the Respondent has been commonly known by the disputed domain names, nor any evidence that the Respondent has been authorized by the Complainant to use the Complainant’s mark.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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 has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel concludes that the Respondent most likely registered the disputed domain names in order to trade on the initial interest confusion between the disputed domain names and the Complainant’s distinctive WIKIPEDIA mark, intending to attract Internet users to the Respondent’s pay-per-click websites, as well as to a website designed to collect personal information from Internet visitors by falsely suggesting an association with the Complainant. See Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986 (and decisions cited at paragraph 6.18 therein). This does not constitute use of the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). See also Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. The Respondent has not been authorized to use the Complainant’s mark, and is there no evidence that the Respondent has been commonly known by the disputed domain names. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. Based on the undisputed facts and circumstances reflected in the record, the Panel entertains little doubt that the Respondent knew of and had in mind the Complainant’s WIKIPEDIA mark when registering the disputed domain names. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

Based on the record before it, the Panel concludes that the Respondent registered and has used the disputed domain names with the intent to profit from and exploit the goodwill associated with the Complainant’s WIKIPEDIA mark. See Aubert International SAS and Aubert France SA v. Tucows.com Co., supra. This is a clear case of typosquatting. The Panel finds that the Respondent registered and is intentionally using the domain names for commercial gain, to divert Internet users to its websites, relying on typographical errors made by Internet users seeking the Complainant’s website. See, e.g., Red Bull GmbH v. Grey Design, supra.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

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 <wikkipedia.org> and <wekipedia.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Dated: April 13, 2011


1 Prior to the filing of the original Complainant, the registrant identified in the Registrar’s WhoIs records was the Respondent Moniker Privacy Services, a privacy protection service affiliated with the Registrar. Upon receipt of the Center’s request for registrar verification, the Registrar promptly informed the Center that the underlying or beneficial registrant of the disputed domain name was Domain Admin, Frontline Media LLC.

2 The record reflects that Moniker Privacy Services was identified in the WhoIs records as the registrant of the disputed domain name at the time of the filing of the Amended Complaint.

 

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