WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises
Case No. D2011-0911
1. The Parties
The Complainant is Wikimedia Foundation Inc. of San Francisco, California, United States of America, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Gerente de Dominia, CSRUS Enterprises of Santiago, Region Metropolitana de Santiago, Chile.
2. The Domain Names and Registrar
The disputed domain names <wikiipedia.org>, <wikipediia.org> and <wikippedia.org> (the “Disputed Domain Names”) are registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2011. On May 26, 2011 and May 31, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Disputed Domain Names. On June 1, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 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 June 6, 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2011.
The Center appointed Charné Le Roux as the sole panelist in this matter on July 14, 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 and operator of the extremely well known Wikipedia website, which is one of the worlds largest collaboratively edited reference projects. The Wikipedia website was created during about 2001, with the Complainant being established in about 2003 and is currently one of the ten most visited websites in the world. More than 18,000,000 articles in 268 languages have been published on it. The Complainant is also the owner of numerous trade mark registrations throughout many countries in the world for marks that consist of or include the term “Wikipedia”. The majority of the marks were registered during the course of 2006 with the earliest marks registered in 2004. The Complainant also owns domain names that include the trade mark WIKIPEDIA, being <wikipedia.org> and <wikipedia.com>, registered on January 13, 2001 and January 12, 2001 respectively. The WIKIPEDIA trade mark has been used in commerce from January 13, 2001. The Complainant has in the past successfully restrained other parties from using the trade mark WIKIPEDIA and other deceptively similar marks through UDRP proceedings launched through the Center.
The Respondent registered the Disputed Domain Names between August 10, 2004 and August 15, 2004. The website at each of the Disputed Domain Names redirect to a website using the domain name <inforwardsurvey.com> that offers a social survey in return for which prizes are offered.
5. Parties’ Contentions
The Complainant contends that it is a famous and global provider of information through collaboratively edited reference projects, that it has offered services in connection with the trade mark WIKIPEDIA since early 2001 and that it owns the trade mark registrations and domain names for WIKIPEDIA and several variations of it in many countries in the world. The Complainant submits that previous UDRP decisions held that the Complainant had established rights in the trade mark WIKIPEDIA.
The Complainant contends that the Disputed Domain Names are confusingly similar to its WIKIPEDIA trade mark in that they are virtually identical to the mark WIKIPEDIA, with the only difference being the addition of a single letter and the “.org” extension in respect of each of the Disputed Domain Names.
The Complainant contends that the Disputed Domain Names are designed to lead consumers who are searching for the Complainant’s goods to the Respondent’s websites.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Names in that:
a) the Complainant has not authorized the Respondent to register or use the WIKIPEDIA trade mark in any way;
b) the Respondent is not commonly known by the Disputed Domain Names;
c) the Respondent has never used nor made preparations to use any of the Disputed Domain Names or any names corresponding to any of the Disputed Domain Names in connection with the bona fide offering of goods or services.
d) the Respondent is not making legitimate noncommercial or fair use of the any of the Disputed Domain names without intent for commercial gain, but rather misleads Internet users by diverting them to the websites to which the Disputed Domain Names resolve and that falsely appear to be associated with the Complainant thereby luring them to provide personal information by offering expensive prizes.
The Complainant further contends that the Disputed Domain Names were registered and are being used in bad faith. According to the Complainant and given its prominence worldwide, the Respondent must have known that the incorporation of the words Wikiipedia, Wikipediia and Wikippedia in the Disputed Domain Names would be likely to cause Internet users to believe that they are affiliated with the Complainant. The Complainant submits that the Respondent’s bad faith is exacerbated by the fact that the websites to which the Disputed Domain Names resolve include a puzzle globe logo that is confusingly similar to the Complainant’s WIKIPEDIA globe trade mark that has been registered in multiple trade mark registrations, thereby creating further false associations between the Complainant and the Disputed Domain Names.
The Complainant submits that the Respondent attempts to attract, for commercial gain, Internet users to the websites to which the Disputed Domain Names resolve by creating the likelihood of confusion with the Complainant’s WIKIPEDIA trade mark as set out above.
The Complainant contends that a further indication of bad faith is the Respondent’s registration of each of the Disputed Domain Names prior to the Complainant’s earlier user rights and that it is inconceivable that the Respondents chose to register the Disputed Domain Names without knowledge of the Complainant’s activities and the WIKIPEDIA trade mark.
The Complainant requests that the Disputed Domain Names be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) That the Disputed Domain Names are identical or confusingly similar to the mark in which it has rights;
ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names;
iii) That the Disputed Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s Default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Procedural Issue: The Proper Respondent and Consolidation of Disputed Domain Names
Before a finding of the substantive issues arising from paragraph 4(a) of the Policy can be made, the Panel must determine whether the proper party has been identified as the Respondent by the Complainant and also whether the Complaint regarding the Disputed Domain Names should be consolidated.
Complainant identified the privacy service indicated in the WhoIs report as a Respondent. It elected to amend the Complaint after being notified by the Center of the identity of the underlying registrant, being Gerente de Dominia, CRUS Enterprises, by including it as an additional Respondent. A question that has been posed to many UDRP Panels is whether a privacy service, which is listed as the domain name registrant at the time the complaint is filed but following the filing, the registrant is identified as someone other than the privacy service, should be treated as a proper party respondent.
Detailed discussions concerning the use of privacy services and their effect were had by a three member panel in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438. The panel took account of the fact that previous Panels who received information regarding the identity of the underlying registrant, have either treated both the underlying registrant and the respondent jointly as a respondent, or elected to disregard the privacy service entirely and to analyze only the acts of the underlying registrants. The panel concluded that where provision of the information by the Registrar was not unduly delayed, that the underlying registrant should be treated as the proper party respondent for purposes of its analysis.
In this matter and on the basis that a) the Registrar provided the correct underlying registrant information without undue delay; b) it was obvious from the nature of the information contained in the actual WhoIs that formed part of the Complaint that the Disputed Domain Names were subject to a contracted privacy service and c) the privacy service holds no ownership interests in the Disputed Domain Names, this Panel finds that the privacy service is not the registrant of the Disputed Domain Names and can thus not be considered the proper Respondent for purposes of the application of the Policy. Since the underlying registrant has been nominated by the Complainant as a respondent and is therefore a proper respondent party to these proceedings, an analysis of the merits and a finding with respect to the conduct of the underlying registrant can be made.
Paragraph 3(c) of the Rules also 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. The Panel is persuaded from the facts that consolidation is appropriate under paragraph 3(c), as all three Disputed Domain Names are registered to the same domain name holder, as identified by the Registrar and who is properly identified as a Respondent.
B. Identical or Confusingly Similar
The Panel finds on the evidence and as established by previous UDRP Panels in matters concerning this Complainant’s trade marks, namely Wikimedia Foundation Inc. v. Moniker Privacy Services / Domain Admin, Frontline Media LLC, WIPO Case No. D2011-0106; Wikimedia Foundation Inc. v. Protected Domain Services - Customer ID: NCR 1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107; Wikimedia Foundation Inc. v. Jamie Wells, WIPO Case No. D2010-0269; Wikimedia Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699; Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798; and Wikimedia Foundation Inc. v. Value Domain and Digirock, Inc., WIPO Case No. D2009-0139 that the Complainant owns both registered and common law rights in the trade mark WIKIPEDIA and also that this trade mark is well known world wide.
The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s WIKIPEDIA trade mark. The only difference between the Complainant’s and Respondent’s domain names is the addition of the extra letters “i” and “p” respectively in the Disputed Domain Names which does not, taking into account sound, sight and overall impression, assist the Respondent in escaping a finding of confusing similarity.
The first requirement of Paragraph 4(a) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the Disputed Domain Names is not in connection with a bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. On the contrary, its use of the Disputed Domain Names takes unfair advantage of the extensive reputation of the Complainant’s WIKIPEDIA trade mark and of the Disputed Domain Names’ identity to or confusing similarity with that trade mark, in order to divert Internet users seeking information about the Complainant and its services to the Respondent’s websites.
The Panel further finds that the Respondent is not commonly known by the Disputed Domain Names, that it is not making legitimate, noncommercial or fair use of the Disputed Domain Names, that it is not authorized by the Complainant to use the Disputed Domain Names and that there is no other basis on which it could claim to have rights or legitimate interests in the Disputed Domain Names in this case.
The second requirement of Paragraph 4(a) of the Policy is satisfied.
D. Registered and Used in Bad Faith
The Panel finds on the evidence that by using the Disputed Domain Names, the Respondent is intentionally attracting Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship and affiliation or endorsement of the Respondent’s websites. In the Panel’s view, Internet users seeking information about the Complainant’s services are liable to be diverted by confusion between the Disputed Domain Names and the Complainant’s mark, to the Respondent’s websites where they are lured into providing personal information. This allows the Respondent to profit from and exploit the goodwill associated with the Complainant’s WIKIPEDIA trade mark. Acts of this manner, particularly those concerning well-known marks such as WIKIPEDIA, constitute classical forms of cybersquatting and are the very reason why policies and procedures such as those found in the UDRP had to be established.
In accordance with Paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Names in bad faith. There is no evidence displacing this presumption.
The third requirement of Paragraph 4(a) of the Policy has been met.
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 Names <wikiipedia.org>, <wikipediia.org> and <wikippedia.org> be transferred to the Complainant.
Charné Le Roux
Dated: July 28, 2011