WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WordPress Foundation v. duanxiangwang

Case No. D2013-2174

1. The Parties

The Complainant is WordPress Foundation of San Francisco, California, United States of America (“U.S.”), represented by FairWinds Partners, LLC, U.S.

The Respondent is duanxiangwang of Shantou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <wwwordpress.org> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On January 3, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of proceedings. On the same day, the Complainant submitted its request that English be the language of proceedings to the Center by email. The Respondent did not submit any comments 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 in English and Chinese, and the proceedings commenced on January 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2014.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 6, 2014. 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 WordPress Foundation, a non-profit corporation from San Francisco, California, U.S.

The Complainant operates a software and services business operating in numerous countries providing one of the most popular self-hosted blogging and Internet publishing tools in the world, used on millions of websites, and seen by tens of millions of people every day in hundreds of different languages.

The Complainant is the owner of numerous trademark registrations for the WORDPRESS mark around the world. For example: U.S. Registration No. 3201424 of January 23, 2007; Canada Registration No. TMA698039 of October 9, 2007; CTM No. 005101068 of November 19, 2008 and China Registration No. 5579753 of August 14, 2009.

The Complainant conducts business on the Internet using numerous domain names containing the word “wordpress” including <wordpress.com> and <wordpress.org> with its websites relating to its blogging software business resolving from these domain names.

The disputed domain name <wwwordpress.org> was created on September 14, 2009 and has subsequently resolved to a parking web page containing a variety of advertisements and links including some that relate to blogging software.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it is the owner of trademark registrations of the trademark WORDPRESS in various countries as prima facie evidence of ownership.

The Complainant submits that the mark WORDPRESS is well known and recognized worldwide. The WORDPRESS services have been published in various news articles in Linux Journal, San Francisco Chronicle, USA Today and elsewhere.

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s WORDPRESS trademark. The Complainant further argues that the disputed domain name contains the WORDPRESS trademark and additional prefix letters “ww”.

The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

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 trademark as to the 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 Complainant further argues that the Respondent is using the WORDPRESS trademark 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”, or the name “wordpress”. The Respondent does not operate a business or other organization under the WORDPRESS trademark or own any trademark registration for the same. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent registered and used the disputed domain name in bad faith. The Respondent is a known cyber squatter who engaged in a pattern of bad faith registration of domain names and there are a number of UDRP cases that have been successfully brought against the Respondent, see for example: WordPress Foundation v. duanxiangwang, WIPO Case No. D2011-0836; Automatic Inc. v. Duane Xiang Wang, NAF Claim No. 1338496; Brown Group Retail, Inc. v. duanxiangwang, NAF Claim No. 1520856.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding the language of the proceeding, the Panel takes the following into consideration:

a) the Complainant’s trademarks and the disputed domain name are composed of words which are only recognized in the English language;

b) in prior decisions against the Respondent, the panel determined that English should be the language of the proceedings;

c) the Complainant’s business is headquartered in the U.S., and it operates in the English language;

d) The website at the disputed domain name resolves to an online marketplace, which operates also in English;

e) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant also owns numerous domain names with the trademark WORDPRESS worldwide, among these: <wordpress.com> and <wordpress.org>.

Also, the Complainant’s rights in the WORDPRESS mark have been established in previous UDRP decisions, WordPress Foundation v. duanxiangwang, WIPO Case No. D2011-0836 and WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427.

The disputed domain name <wwwordpress.org> differs from the registered WORDPRESS trademark by the addition of the prefix two letters “ww” and the additional generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name integrates the Complainant’s WORDPRESS trademark in its entirety, as a dominant element.

The addition of the letters “ww” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s WORDPRESS trademark. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 and Aktiebolaget Electrolux v. cai qing, WIPO Case No. D2012-2319).

Furthermore, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See F. Hoffman-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.com” is typically without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the WORDPRESS trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules.

In this present case, the Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response.

The Panel can draw from the Respondent’s failure to reply the following two inferences:

(i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. The Panel has, however the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademarks. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the WORDPRESS trademark since the year 2007. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). This conclusion is even more valid when taking into account the vast goodwill that the Complainant had gained in its considerably known WORDPRESS trademark.

Paragraph 4(b)(iv) of the Policy provides that it shall be evidence of bad faith registration and use by the respondent, if by using the domain name the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolves.

Indeed, “when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’” (Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic for commercial purposes by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Respondent is using the Complainant’s trademark to offering of pay-per-click services website. 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) of the Policy, See WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932.

The Complainant also highlighted that the Respondent is a known cyber squatter and brought other UDRP decisions that have been successfully brought against the Respondent. The Panel finds this to be another indication of the Respondent’s bad faith registration and use of the disputed domain name.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the confusing similarity between the disputed domain name and the Complainant's trademarks, the use of the disputed domain name and the history of the Respondent, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision.

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 <wwwordpress.org> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: February 18, 2014