WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WordPress Foundation v. duanxiangwang
Case No. D2011-0836
1. The Parties
The Complainant is WordPress Foundation of San Francisco, California, United States of America, represented by FairWinds Partners, United States of America.
The Respondent is duanxiangwang of Shaodong, Hunan, the People’s Republic of China.
2. The Domain Names and Registrars
The disputed domain names <wirdpress.org>, <wordprees.org> and <wordprss.org> are registered with Xiamen eName Network Technology Corporation Limited dba eName Corp. The disputed domain name <woordpress.org> is registered with Ascio Technologies Inc. – Denmark ((all four together the “Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2011. On May 16, 2011, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp and Ascio Technologies Inc. - Denmark a request for registrar verification in connection with the Domain Names. On May 16, 2011, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <wirdpress.org>, <wordprees.org> and <wordprss.org> and providing contact details. The registrar also confirmed that the language of the Registration Agreements in relation to these domain names is Chinese. On May 17, 2011, Ascio Technologies Inc. – Denmark transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <woordpress.org> and providing the contact details. The language of the Registration Agreement in relation to the domain name was confirmed to be English. On May 20, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 22, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 May 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on June 21, 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.
4. Factual Background
The Complainant is the owner of the WORDPRESS trade mark. Some time on or before March 28, 2003, the Complainant and its licensee, Automattic, Inc started use of the WORDPRESS trade mark in connection with a self -hosted blogging and Internet publishing tool. Since commencement, the Complainant has built up a substantial reputation and goodwill in the WORDPRESS brand through its extensive use. It has become a well-known brand and is recognized as a leading provider of blogging and Internet publishing services.
The Complainant owns both registered and unregistered trade mark rights in WORDPRESS. The WORDPRESS trade mark is registered around the world including the United States of America, Canada, the European Union and China. Evidence of these registrations were submitted with the Complaint. The date of registration of the earliest trade mark submitted was May 2006. The Complainant and Automattic, Inc operate websites at “www.wordpress.com” and “www.wordpress.org”.
The Domain Names were registered on the following dates: <wirdpress.org> - September 14, 2009; <wordprees.org> - April 28, 2009; <wordprss.org> - August 12, 2008 and <woordpress.org> October 2, 2008. At the time of writing this decision, the Panel reviewed the websites connected to the Domain Names. All were inactive except for <woordpress.org> which was connected to a registrar parking page. At the time of the submission of the Complaint, the Complainant submitted evidence to show that the websites included pay per click websites, registrar parking page and surveys designed to harvest information.
The Respondent has had prior adverse UDRP decisions made against him/her including a case filed by Automattic Inc against him/her for the domain name <wordpresss.com> (Automattic Inc v. Duan Xiang Wang NAF Case No. FA1338496).
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the WORDPRESS trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the registrar Xiamen eName Network Technology Corporation Limited dba eName Corp, the language of the registration agreements for domain names <wirdpress.org>, <wordprees.org> and <wordprss.org> is Chinese.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceeding should be English. The Complainant contends that the Respondent is capable of communicating in the English language based on the following relevant facts:
- The Domain Names are composed of typographical errors of words in the English language which shows sufficient capability in the language to intentionally create such errors;
- The websites connected to the Domain Names were/are in the English language;
- The Respondent is a known cyber squatter and has been involved in other UDRP complaints involving domain names in the English language and where the decisions have been in the English language;
- In one of the complaints when the complaint was filed in Chinese, the Respondent failed to respond creating unnecessary expense for the complainant;
- The registrar for <woordpress.org> is based in Denmark and English is the language of the Registration Agreement.
The Complainant is a United States headquartered company. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint in Chinese. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in paragraph 10 of the Complaint regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the WORDPRESS trade mark is a well-known trade mark in the area of blogging and Internet publishing.
The Domain Names are all common and obvious misspellings of the Complainant’s registered trade mark, WORDPRESS. The consensus view on this issue as set out in paragraph 1.7 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“A domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trademark remains the dominant or principal component of the domain name.”
The Domain Names here all contain misspelled versions of the Complainant’s trade mark in its entirety.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.org”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant contends that the Respondent does not satisfy any of the circumstances set out under paragraph 4(c) of the Policy to demonstrate he/she has rights or legitimate interests to the Domain Names. The websites connected to the Domain Names do not show a bona fide offering of goods or services. When they were active, they included a pay per click website, registrar parking page and surveys designed to harvest information. The Domain Names were aimed at diverting the Complainant’s customers and potential customers to the Respondent’s websites or other websites which had nothing to do with the Complainant and in some cases are associated with the Complainant’s customers. The Respondent is not commonly known by any of the Domain Names. He/she does not operate a business or organization under the WORDPRESS name nor does he/she own any trade marks with the name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain. The Respondent’s actions have tarnished and diluted the Complainant’s trade mark rights in WORDPRESS as he/she has diminished consumers’ capacities to associate the marks with the quality products offered by the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
The WORDPRESS trade mark was registered and used by the Complainant before the registration of the Domain Names. The WORDPRESS mark is a well-known mark in its field of activity. The fact the Domain Names are deliberate misspellings of the WORDPRESS mark evidences the fact that the Respondent either knew or ought to have known that of the Complainant’s use and rights in the WORDPRESS trade mark. The content of the websites connected to the Domain Names indicates actual knowledge on the part of the Respondent of the WORDPRESS brand. The fact that the Respondent has had a previous adverse UDRP decision against him/her in relation to the WORDPRESS trade mark (see Section 4 above) brand is another piece of evidence in support of the fact that the Respondent had knowledge of the trade mark when he/she registered the Domain Names. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Names.
At the time of the filing of the Complaint, the websites connected to the Domain Names were all active. The Respondent was obtaining commercial gain from his/her use of the Domain Names as one resolves to a registrar parking page which invites visitors to purchase information from the registrar. Another appears to be a survey which seeks to harvest information from visitors to sell to marketers. The remaining two are pay per click websites providing listings of hyperlinks, some of which lead to the websites of the Complainant’s competitors. The above is sufficient evidence of bad faith use on the part of the Respondent.
The fact that some of the websites are no longer active does not change this. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In addition to the above, the misspellings of the Complainant’s trade mark in the Domain Names is intended to attract searchers to the Respondent’s websites by creating a likelihood of confusion in order to make visitors think that they are on the Complainant’s legitimate websites or that these websites are endorsed and sponsored by or affiliated to the Complainant. Such use amounts to use in bad faith.
Considering all the circumstances of the case, the Panel concludes that the actual use of the Domain Names is in bad faith. There is a clear intention to attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s WORDPRESS mark as to source, sponsorship, affiliation or endorsement. This is clearly bad faith under paragraph 4(b)(iv) 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 Domain Names <wirdpress.org>, <wordprees.org>, <wordprss.org> and <woordpress.org>
be transferred to the Complainant.
Dated: July 6, 2011