WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation Inc. v. Whois Privacy Services Pty Ltd / Counter Balance / Yorkshire Enterprises
Case No. D2011-1592
1. The Parties
Complainant is Wikimedia Foundation Inc of San Francisco, California, United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / Counter Balance of Bangkok, Thailand / Yorkshire Enterprises of St. Johns, Antigua and Barbuda.
2. The Domain Names and Registrar
The disputed domain names <wikipeddia.org>, <wikipeedia.com>, <wikipeedia.org>, <wkipedia.org>, and <wwikipedia.org> (the “Domain Names”) are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) against Whois Privacy Services Pty Ltd on September 21, 2011. On September 21, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Domain Names. On September 23, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 27, 2011 providing the registrants and contact information disclosed by Fabulous.com, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 28, 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 Respondent of the Complaint, and the proceedings commenced on October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on November 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
According to the publicly available WhoIs database, the Domain Names were created as follows:
a) <wkipedia.org> July 28, 2004
b) <wikipeddia.org> December 13, 2004
c) <wwikipedia.org> January 3, 2005
d) <wikipeedia.org> January 3, 2005
e) <wikipeedia.com> January 15, 2005
5. Parties’ Contentions
Complainant states that it is a non-profit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual content, and to providing the full content of these projects to the public free of charge. Complainant advises that it was established by Jimmy Wales in 2003, two years after creating the Wikipedia website, “www.wikipedia.org” in 2001, and that it operates some of the largest collaboratively edited reference projects in the world. Complainant asserts that is the fourth most visited website in the world and that its website has had more than 10 million articles in 273 languages published on it.
Complainant states that it is the exclusive owner of numerous trademark registrations worldwide for the marks that consist of or include WIKIPEDIA. It also states that it has rights in the WIKIPEDIA trademark as a result of these trademark registrations, as well as from the use of the WIKIPEDIA trademark since at least January 11, 2001. It further states that previous panels under the Policy have recognized its rights in the WIKIPEDIA trademark in at least seven favorable decisions. Complainant alleges that Respondent registered the Domain Names between July 28, 2004 and January 15, 2005, some 4 years after Complainant had registered the Wikipedia website.
Complainant asserts that each of the Domain Names is confusingly similar to its WIKIPEDIA trademark in that each of the Domain Names consists of slight variations of the WIKIPEDIA trademark. Complainant notes that comparison is made only with the second-level portion of each of the Domain Names and that it has been well established that the top-level domain names (i.e. “.com” and “.org”) should be disregarded for comparison purposes. Complainant contends that that slight variations of its WIKIPEDIA trademark in the Domain Names take advantage of typographical errors made by Internet users seeking Complainant’s website. Complainant also contends that the overall impression is that each of the Domain Names is connected to the Complainant’s trademark.
Complainant asserts that Respondent has no rights or legitimate interests in any of the Domain Names, as it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the WIKIPEDIA trademark in any manner. Complainant submits that upon information and belief, Respondent has never used, or made preparations to use any of the Domain Names or any name corresponding to any of the Domain Names in connection with a bona fide offering of goods or services. Instead, Respondent is using each of the Domain Names in connection with a website that redirects visitors to a “survey” website using the domain name <inforewardsurvey.com> or <quizstope.com>. Complainant advises that five of the websites greet visitors with the message “Dear Visitor” and also includes a puzzle globe logo that is confusingly similar to Complainant’s own logo, while one of the websites invites visitors to “Select your gift”. Complainant suggests that these websites collect personal information from visitors with the lure of prizes. Complainant also suggests that the use of such promotions unassociated with a trademark owner has been repeatedly found by previous panels to constitute a lack of rights or legitimate interests by the domain name registrant, including in at least two previous decisions brought by Complainant also involving a survey website offering prizes.
Complainant contends that to its knowledge, Respondent has never been commonly known by any of the Domain Names and has never acquired any trademark or service mark rights in any of the Domain Names. Complainant also contends that Respondent is not making a legitimate noncommercial or fair use of any of the Domain Names without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s WIKIPEDIA trademark, but rather Respondent is using each of the Domain Names in connection with websites that falsely appear to be associated with Complainant, luring visitors to provide personal information by offering expensive prizes. Complainant suggests that such activity is clearly misleading.
Complainant also asserts that the logo on Respondent’s website is nearly identical to Complainant’s logo and submits that it is likely to cause confusion to any Internet visitor to the websites under the Domain Names. Complainant suggests that a further indication of bad faith registration is that as well as Complainant’s WIKIPEDIA trademark pre-dating Respondent’s registration, and in light of the widespread use worldwide and protection of the WIKIPEDIA trademark, Respondent therefore knew or should have known of Complainant’s WIKIPEDIA trademark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that Complainant has brought sufficient evidence to conclude that the Domain Names, or the websites to which they resolve, are subject to common control and that the consolidation is fair and equitable in this case.
A. Identical or Confusingly Similar
Complainant has established that it is the exclusive owner of numerous trademark registrations worldwide for the marks that consist of or include WIKIPEDIA. Complainant relies upon rights acquired through its use of the WIKIPEDIA trademark as well as by virtue of trademark registrations relating thereto (the “WIKIPEDIA Trademark”). Such rights date back to in or about January 2001 which is well before the date of registration of the Domain Names.
It is equally clear that by virtue of its operation of one of the world’s largest and most popular websites (including in the order of 10 million articles in 273 languages) none of which is disputed, that an unrelated entity using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant contends that that slight variations of its WIKIPEDIA Trademark in the Domain Names takes advantage of typographical errors likely to be made by Internet users seeking Complainant’s website and material. Complainant also contends that the overall impression is that each of the Domain Names is necessarily connected to Complainant and/or its WIKIPEDIA Trademark. These contentions have obvious merit.
On this basis it is found that:
a) Complainant has rights in respect of the WIKIPEDIA Trademark.
b) The Domain Names are confusingly similar to the WIKIPEDIA Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that Respondent is using each of the Domain Names in connection with a website that redirects visitors to a “survey” website using the domain name <inforewardsurvey.com> or <quizstope.com> and that five of the websites greet visitors with various messages offering gifts. This permits the inference to be drawn that these websites somehow attract visitors with the lure of prizes and that this is done for commercial gain.
It is equally permissible to infer that these websites allow Respondent to generate revenue from click-through site/s by using deliberately misspelled versions of Complainant’s WIKIPEDIA Trademark and Complainant’s inherent goodwill to attract Internet traffic. As before, these assertions are not disputed by Respondent.
This Panel is of the view that the Domain Names are being employed as a means of diverting Internet customers. In those circumstances it is difficult to see how Respondent’s conduct could be characterized as legitimate. The business model of “typo-squatting” and registering well-known trademarks and names as domain names and deriving revenue from “click through” business is all too well-known.
On this basis it is found that Respondent has no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent is engaged in typo-squatting and has intentionally attempted to attract for commercial gain Internet users to its websites or other online locations not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or the WIKIPEDIA Trademark.
The Panel finds that Respondent registered and is using the Domain Names to take bad faith advantage of Internet users who may wish to access Complainant’s website or collaborative publications and that these Internet users are likely to be attracted to Respondent’s websites or portals and be misled as to their origins, sponsorship or association.
Complainant’s contention that bad faith registration is borne out by the fact that Complainant’s WIKIPEDIA Trademark pre-dates Respondent’s registration of the Domain Names and in light of the widespread use worldwide and protection of the WIKIPEDIA Trademark is accepted as is the submission that Respondent knew or should have known of Complainant’s WIKIPEDIA Trademark.
The Panel has no difficulty in concluding that the third limb 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 Domain Names, <wikipeddia.org>, <wikipeedia.com>, <wikipeedia.org>, <wkipedia.org>, and <wwikipedia.org> be transferred to Complainant.
Clive L. Elliott
Dated: November 28, 2011