WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WordPress Foundation v. Guo Lei aka Lei Guo
Case No. D2011-0932
1. The Parties
The Complainant is WordPress Foundation of San Francisco, California, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Guo Lei aka Lei Guo of Shandong, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <wordress.org> (“Disputed Domain Name”) is registered with 35 Technology Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2011. On June 1, 2011, the Center transmitted by email to 35 Technology Co., Ltd. a request for registrar verification in connection with the Disputed Domain Name. On June 3, 2011, 35 Technology Co., 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 June 3, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested 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 June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 13, 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 has been using the trade mark WORDPRESS on its own and through its licensee, Automattic, Inc, since as early as March 28, 2003, in connection with a blogging and Internet publishing services. The Complainant is a leading provider of such services and its website resolved from its domain names <wordpress.com> and <wordpress.org> are ranked highly by Quantcast.com. Since 2003, the Complainant and the trade mark WORDPRESS has been discussed in online articles by CNET.com, and the Complainant’s WORDPRESS trade mark has been the subject of news articles, YouTube videos and other publicity. The “Dummies” series of books has a book entitled “WordPress for Dummies”. The Complainant has received many awards and recognitions, including a 2007 Packt Open Source CMS Award and the 2009 best Open Source CMS Award. In 2008, the Complainant’s website was ranked number 31 by Alexa.com with 90 million page views.
The Complainant has registered its trade mark WORDPRESS around the world including the following:
Jurisdiction Trade mark number Registration date
United States 3201424 January 3, 2007
Community Trade Mark 005101068 November 19, 2008
China 5579753 August 14, 2009
The Disputed Domain Name was registered on April 15, 2008. As of May 6, 2010, the Disputed Domain Name resolved to a parking webpage that provides no information about the Respondent. The content was entirely in English.
As no Response was filed, very limited information beyond the WhoIs record of the Disputed Domain Name about the Respondent is available. The WhoIs record indicates an incomplete contact address for the Respondent in Shandong, China and provides facsimile number which does not work.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the WORDPRESS trade mark. The Disputed Domain Name is a minor misspelling of the WORDPRESS trade mark;
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is using the WORDPRESS trade mark without the Complainant’s consent. The Respondent is not making a bona fide offering of goods or services. The Respondent is not commonly known by the name “wordress.org”, the name “wordpress”. The Respondent does not operate a business or other organization under the WORDPRESS trade mark or own any trade mark registration for the same. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name;
3) The Respondent registered and used the Disputed Domain Name in bad faith. The Respondent is a known cybersquatter who engaged in a pattern of bad faith registration of domain names, namely in Microsoft Corporation v Lei Guo, NAF Case No. FA1267659. The Respondent is using the Disputed Domain Name to intentionally attract for commercial gain Internet searches to its website by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation or endorsement of its website or product or service on its website. The Respondent is operating a “pay-per-click” website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The language of the Registration Agreement is in Chinese. Therefore, the default language of the proceeding is Chinese. However, the Complaint was filed in English. The Complainant has also requested that English be the language of the proceeding. Pursuant to paragraph 11(a) of the Rules, the Panel holds that English shall be the language of the proceeding for the following reasons:
1) No Response was filed and the Respondent does not appear to be interested to participate in the proceeding;
2) The website resolved from the Disputed Domain Name contained entirely English content;
3) Imposing a translation requirement on the Complainant will lead to additional cost and burden on the Complainant which is unwarranted in the circumstances;
4) The Complainant has advised it is not in a position to conduct the proceedings in Chinese without great expense and delay; and
5) No discernible benefit will be achieved by insisting on the default language of the proceeding.
The Panel will now consider the following limbs of paragraph 4(a) of the Policy which the Complainant must establish to succeed in this proceeding:
1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
2) The Respondent has not rights or legitimate interests in the Disputed Domain Name; and
3) The Disputed Domain Name was registered and used in bad faith.
A. Identical or Confusingly Similar
By virtue of trade mark registrations, the Complainant clearly owns trade mark rights in WORDPRESS. The Complainant’s trade mark registrations pre-date the registration of the Disputed Domain Name at least in the United States. The long and extensive use of the trade mark WORDPRESS since 2003 has also imbued the Complainant with rights in WORDPRESS separately from the trade mark registrations.
The only difference between the Disputed Domain Name and the trade mark WORDPRESS is the letter “p” which is absent in the Disputed Domain Name. The Panel agrees with the Complainant that the difference is minor. On the face of a comparison between the Disputed Domain Name and the trade mark WORDPRESS, there is a reasonable person may confuse the Disputed Domain Name with the trade mark WORDPRESS.
The Panel holds that the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainants confirmed that it did not permit the Respondent to use the WORDPRESS trade mark. There is no information before this Panel to suggest that the Respondent is known by the name “wordress” or “wordpress”. Despite receiving a very serious allegation of lack of rights or legitimate interests in the Disputed Domain Name, the Respondent has chosen not to file a Response. A reasonable person in the Respondent’s shoes would have resisted such accusations if they were false. The failure of the Respondent to respond leads to a strong inference that the Complainant’s allegation is justified.
The Panel determines that the Complainants have shown a prima facie case that the Respondent does not have any rights or legitimate interest in the Disputed Domain Name. The Respondent has failed to discharge the burden of showing otherwise. In the circumstances, the second limb of paragraph 4(a) is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states the following example 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.”
The Panel has already found the Disputed Domain Name to be confusing similar to the WORDPRESS trade mark and that the Respondent has no rights or legitimate interests in the same. Therefore, the adoption of the Disputed Domain Name by the Respondent is in all likelihood for capitalizing on the confusing similarity as described in paragraph 4(b)(iv).
The Complainant contends that the offering of pay-per-click services justifies a finding of bad faith registration and use thereunder. The Panel agrees that the offering of pay-per-click services on the website resolved from the Disputed Domain Name would speak of commercial gain. However, there is no evidence before this Panel that the Respondent is specifically operating a “pay-per-click” website
Nevertheless, “pay-per-click” revenue is but only an example of commercial gain. The webpage resolved from the Disputed Domain Name contains advertisements for various types of services. It is likely that the Respondent is either a provider of the services advertised on the webpage, or an advertiser for providers of the services advertised on the webpage. Both possibilities are associated with commercial gain. The Panel is of the view that the facts justify a prima facie finding that the Respondent has registered and used the Disputed Domain Name in bad faith under paragraph 4(b)(iv).
A domain name registrant has a duty to act honestly. Past UDRP panels have consistently held that the deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason and its subsequent use is bad faith (e.g., Luxottica Group S.p.A. , Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; FAROUK SYSTEMS INC. v. DAVID, WIPO Case No. D2009-1245). The Respondent’s contact address and facsimile are ineffective and are probably fictitious. The Panel is of the view that the use of such particulars to register the Disputed Domain Name corroborates the finding of bad faith above.
The Complainant also highlighted that the Respondent is a known cybersquatter on the basis of Microsoft Corporation v Lei Guo, supra. The name “Lei Guo” is the English transliteration based on the “Hanyu Pinyin” system of Romanization of a Chinese name and is unlikely to be unique to a single individual. The only evidence available to the Panel to link the Respondent to the respondent in that case is the common name. The Panel is not able to conclude on this alone that the Respondent is the same individual as the respondent in that case. Nevertheless, in view of the findings above, it is not necessary to determine that the Respondent is a habitual cybersquatter to establish bad faith registration and use in the present circumstances.
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 Name, <wordress.org>, be transferred to the Complainant.
Kar Liang Soh
Dated: August 5, 2011