WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation Inc. v. www.visichat.net / Rokibul Islam - (Rony)
Case No. D2011-1031
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, United States of America.
The Respondent is www.visichat.net / Rokibul Islam - (Rony) of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <webhostingwikipedia.com> is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2011. On June 17, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On June 21, 2011, Dynadot, LLC. 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 June 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2011. The Respondent did not submit any formal response, however, an email was received from the Respondent on June 21, 2011. Accordingly, the Center notified the Respondent’s default on July 13, 2011. However, the Respondent sent an email communication with comments on July 15, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on July 15, 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
Jimmy Wales created the Wikipedia website in 2001 and subsequently established the Complainant in 2003. The Complainant is a non-profit charitable organization dedicated to encouraging the growth, development and distribution, free of charges, of multilingual content of reference projects to the public. The Complainant operates some of the largest collaboratively edited reference projects in the world including the Wikipedia website at “www.wikipedia.org”, one of the ten most visited websites in the world, on which website, more than 18 million articles in 268 languages have been published.
The Complainant has registered and owns numerous trademark registrations in the world consisting of or comprising the trademark WIKIPEDIA which was first used by Jimmy Wales, the predecessor in title of the Complainant, and the said trademark is registered in many countries in the world (herein the “WIKIPEDIA Trademark” or the “Trademark”). The Complainant is now the registered owner of the domain names <wikipedia.com> and <wikipedia.org> and uses these domain names in connection with the corresponding websites for the services associated with providing information in the field of general encyclopedic knowledge via the Internet.
The Complainant has been, in respect of its WIKIPEDIA Trademark, a complainant in six UDRP proceedings wherein panels have recognized the Complainant’s rights in the WIKIPEDIA Trademark.
The Complainant has never assigned, granted, licensed the right or in any way authorized the Respondent to register the disputed domain name or use the WIKIPEDIA Trademark in any manner.
The disputed domain name was registered by the Respondent on August 19, 2009.
The Respondent, at the disputed domain name, has a website that offers information about and advertisement for web hosting services. The Complainant sent two demand letters to the Respondent, a first letter on May 5, 2010, requesting a response by May 12, 2010 and a second, an email, on March 2, 2011, requesting a response within 10 days. The Respondent has not responded to either of these letters.
5. Parties’ Contentions
The Complainant represents that it has rights in its registered WIKIPEDIA Trademark by reasons of its continuous use in association with its services since the Complainant was established in 2003 and by reason of the use of said Trademark since 2001, by James Wales himself, the predecessor in title.
The Complainant further represents that the disputed domain name is confusingly similar to the Trademark WIKIPEDIA and that the generic terms “web hosting” and the top level domain “.com” should be disregarded and have no source-indicating significance. See Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456; Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WIPO Case No. D2008-0745; Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 and SANOFI-AVENTIS v. Health Care Marketing Company, WIPO Case No. D2007-0475. The Complainant relies on these panel decisions to represent that the addition of the words “web” and “hosting” and “.com” to the term “wikipedia” in the disputed domain name does not diminish “the overall impression of the designation” of the disputed domain name as one of “being connected to the trademark of Complainant”.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name by reason of the fact that the Complainant has never assigned, granted, licensed, sold, transferred or in any was authorized the Respondent to register the disputed domain name or use the WIKIPEDIA Trademark and furthermore, that the Respondent pursuant to WhoIs information is not known by the Trademark WIKIPEDIA, nor by the disputed domain name.
According to the Complainant, the Respondent has never used or made preparation to use the disputed domain name in connection with a bona fide offering of goods and services but, to the contrary, the Respondent is using the disputed domain name in connection with a website that offers advertisement and information for web hosting services. The Complainant relies on previous panel decisions where the panels have found that such type of sites does not give a domain name registrant any rights or legitimate interests in a domain name. See MBI, Inc. v. Moniker Privacy Sevices/Nevis Domains LLC., WIPO Case No. D2006-0550 and Emmis Television Broadcasting, L.P., d/b/a KHON-TV v. Henry Chan, WIPO Case No. D2004-0366.
The Complainant, relying on its knowledge and verification, contends that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. According to the Complainant, the Respondent is not making a legitimate or noncommercial fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s WIKIPEDIA Trademark, but to the contrary, the Respondent is using the disputed domain name in connection with a website that offers information about, and advertisement for web hosting services and such activities failed to establish legitimate interests of the Respondent. See Grundfos A/S v. Manila Industries Inc., WIPO Case No. D2006-1295 and True Value Company v. Jucco Holdings, NAF Claim No. 684382.
The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith.
According to the Complainant it is inconceivable that the Respondent was not aware of its Trademark WIKIPEDIA considering its registration and extensive use since 2001 and the obvious connection with the Complainant with whom the Respondent has no connection. See Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 and Wikimedia Foundation Inc. v. Moniker Privacy Services / Domain Admin, Frontline Media LLC, WIPO Case No. D2011-0106. These elements demonstrate opportunistic bad faith.
The Complainant further submits that the use of the disputed domain name which creates a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website in respect of a website which offers information about and advertisement for, web hosting services, activities from which the Respondent profits, is use in bad faith. See Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951 and WalMart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850.
The Complainant concludes its representations on bad faith use in reiterating the inconceivable situation of the Respondent’s ignorance of the Complainant’s Trademark, so widely known throughout the world; see Wikimedia Foundation Inc. v. Protected Domain Services – Customer ID: NCR1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107. Further support for a determination of bad faith registration and use is found in the fact that the Respondent did not respond to either of the two demand letters sent by the Complainant in 2010 and 2011. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
The Respondent did not reply to the Complainant’s contentions within the specified response period. However, in an email dated July 15, 2011, the Respondent, thereafter, forwarded some representations.
The Respondent does not understand why he was asked by the legal representative of the Complainant to transfer the disputed domain name to the Complainant. He does not understand why he cannot keep the disputed domain name and why he could not operate his website that he has made a long time ago after the registration of the disputed domain name, in particular since he is not using any information from WIKIPEDIA in his website nor the WIKIPEDIA logo.
Furthermore, the Respondent states that there is simply the fact that his domain name has the WIKIPEDIA word in it and he further adds “if it is making the violation of rules and regulation then nothings to say”.
The Respondent concludes in saying “then I want to tell that from my point of view I haven’t broken any rules and wikipedia Company has opened the case with wrong intention.”
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) The disputed 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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Comments on the Respondent late communication
While the Respondent did not submit any response within the specified response period, but sent an email communication thereafter, the Panel, upon assuming that the Respondent does not appear to be familiar with UDRP criteria and procedure, has decided, in fairness to the Respondent, to note and consider his comments and representations.
A. Identical or Confusingly Similar
The Complainant has clearly established that the term “wikipedia” is a trademark that has been used first by Jimmy Wales since January 13, 2001 and then by the Complainant since 2003 and that, furthermore, the Trademark is incorporated in two domain names, <wikipedia.org> and <wikipedia.com>, registered more than ten years ago and presently owned by the Complainant. Furthermore, the Trademark WIKIPEDIA is registered as a Trademark in many countries in the world including the United States of America and in United Kingdom of Great Britain and Northern Ireland, where the Respondent resides.
Finally, the said Trademark has been involved in six previous UDRP disputes and in each instance, the panel, under the Policy, has recognized the Complainant’s rights in the WIKIPEDIA Trademark.
The Panel finds that the Complainant has rights in the WIKIPEDIA Trademark.
The disputed domain name incorporates the whole of the WIKIPEDIA Trademark to which the Respondent has added the generic and descriptive terms “web hosting” and the suffix “.com” which do not in any way diminish the likelihood of confusion of the disputed domain name with the WIKIPEDIA Trademark as it has been argued by the Complainant, relying and using the support of earlier UDRP decisions in particular Hoffmann-La Roche Inc. v. UrProxy Domains, supra; Wikimedia Foundation Inc. v. Kevo Ouz a/d/a Online Marketing Realty, supra; Edmunds.com, Inc. v. Keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007-1427; Alpine Entertainment Group, Inc. v. Daniel Griffin, Kimberly Hall (a.k.a Kimberly Litvak) c/o Alpha Marketing Group, LLC, WIPO Case No. D2007-0034, Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. These decisions fully support the representations of ownership and distinctiveness of its Trademark WIKIPEDIA made by the Complainant and this Panel adopts them in finding that the disputed domain name is confusingly similar the WIKIPEDIA Trademark.
This Panel finds that the first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding although he has sent a short email in which he does not deny the evidence or representations made by the Complainant herein. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of its Trademark. There is no evidence that the Respondent has ever engaged in any legitimate business under the term or Trademark WIKIPEDIA.
The Respondent in his email communication to the Complainant’s legal counsel did not make any statement or adduced any evidence that he was previously known by the term “wikipedia” or had used the term “wikipedia” before registering the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
This Panel finds that the second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that [the Respondent] ha[s] registered or [the Respondent] ha[s] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] ha[s] 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] ha[s] engaged in a pattern of such conduct; or
(iii) [the Respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Respondent considers that since he was able to register the disputed domain name, he was entitled to it and does not understand why he was asked by the counsel of the Complainant to transfer the same. In this Panel’s view, it is not because a domain name such as the disputed domain name can be registered as the Respondent contends or thinks, that another person can register and use such domain name and be immune from representations and recourses by the owner of a well-known trademark which is incorporated in the said disputed domain name.
As it appears from the evidence, in particular Annex 5 to the Complaint, the website at the address of the disputed domain name is predominantly offering information about, and advertisements for, web hosting services, services which do correspond to the descriptive elements of the disputed domain name. It has been determined in previous UDRP decisions that the use of a domain name and corresponding website with contextual-based advertising related to a particular topic such as web hosting services constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy by reason of the likelihood of confusion created with the Complainant’s WIKIPEDIA Trademark. In Columbia Pictures Industries, Inc. v. North West Enterprise, Inc., WIPO Case No. D2006-0951, the panel observes that web pages sometimes known as an “online domain monetization system”, a “monetized parking page” or a “paid link farm service” have become an “increasingly popular way for domain name registrants to profit from their activity with little effort”. The panel further stated “the lack of any indication that the websites are not associated with Complainant, it is likely that a website visitor would be led to such website, or make decisions once he or she has arrived at such website, based on a mistaken belief that Complainant is the source of the website or that Complainant has sponsored, is affiliated with or has endorsed the website - a result that constitutes bad faith under paragraph 4(b)(iv) of the Policy”.
The Respondent has not denied the representations of the Complainant that said Respondent was in all likelihood aware of the Trademark WIKIPEDIA. How could it be otherwise when the term “wikipedia” is new, coined and fanciful and furthermore is a term which is registered as a trademark in 96 countries including the United Kingdom where the Respondent resides and is applied for and already the application is pending, if not published, in 22 other countries (Annex 7 of the Complaint).
While these registrations are government records and publications, not so readily available for the general public to observe or note, the worldwide and extensive use of the Trademark WIKIPEDIA which is already ten years long and particularly within the WIKIPEDIA website at “www.wikipedia.org”, one of the ten most visited websites in the world on which more than 18 million articles in 268 languages have been published, it is inconceivable that the Respondent was not aware of the Trademark WIKIPEDIA and the domain name <wikipedia.org> when the Respondent registered the disputed domain name in 2009. Many UDRP panels, upon considering similar situations in earlier UDRP decisions have considered that in such circumstances, the disputed domain name had been registered in bad faith and this Panel has no hesitation in coming to the same conclusion and finds that the disputed domain name was registered in bad faith.
By using the disputed domain name in connection with a website that offers sponsored links and other advertisements, the “Respondent is clearly making a commercial use of the domain name, with intent for commercial gain,” as held by the panel in ALK-Abelló A/S v. Manila Industries Inc., WIPO Case No. D2006-1033, which statement the Panel considers fully applicable herein and so adopts.
As already noted, the disputed domain name is exclusively used to offer information and advertisement for web hosting services, most likely to Internet visitors that would have been confused by the presence of this highly distinctive Trademark WIKIPEDIA in said disputed domain name and would have thought that this website is associated with, sponsored or endorsed by the Complainant. The Complainant sent a cease and desist letter to the Respondent informing the later in its rights in its Trademark WIKIPEDIA and requesting the transfer of the disputed domain name on May 5, 2010 and a further email on March 2, 2011 to which the Respondent has never responded. Such failure provides “strong support for a determination of ‘bad faith’ registration and use” as held by the panel in Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, supra, a statement with which this Panel agrees, adopts and reiterates herein.
The Panel finds that the disputed domain name was registered in bad faith and subsequently used in bad faith by the Respondent.
This Panel finds that the third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <webhostingwikipedia.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <webhostingwikipedia.com> be transferred to the Complainant.
J. Nelson Landry
Dated: July 27, 2011