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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation Inc. v. PrivacyProtect.org / Domain Tech Enterprises

Case No. D2011-1591

1. The Parties

The 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.

The Respondent is PrivacyProtect.org of Queensland, Australia / Domain Tech Enterprises of Santiago, Chile.

2. The disputed domain names and Registrar

The disputed domain names <wiikipedia.com>, <wikiepdia.com>, <wikiepdia.org>, <wikipdia.org>, and <wikypedia.org> are registered with Power Brand Center Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 21, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain names. On September 27, 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 September 28, 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 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 the Respondent of the Complaint, and the proceedings commenced on October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.

The Center appointed Andrew Brown QC as the sole panelist in this matter on November 8, 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 Respondent registered <wikiepdia.org> and <wikipdia.org> on July 1, 2004, <wikypedia.org> on July 28, 2004, <wikiepdia.com> on December 20, 2004, and <wiikipedia.com> on February 8, 2005.

The Complainant is a non-profit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual Internet content. It operates some of the largest collaboratively edited reference projects in the world, including the Wikipedia website (hosted at “www.wikipedia.org”), which is at present the fourth most visited website in the world. More than 10 million articles in 273 languages have been published to date on the Wikipedia website.

The Complainant asserts that it has unregistered rights in the mark WIKIPEDIA dating from January 13, 2001, and that commercial use of the mark commenced on that date. The domain names <wikipedia.org> and <wikipedia.com> were both registered in January 2001.

The Complainant itself was established in 2003, and it assumed ownership of the Wikipedia domain names and related assets from its predecessor at that time.

The Complainant is the registered proprietor of numerous trademark registrations for the word mark WIKIPEDIA and for logo marks containing that word. Those registrations include a United States registration for the word mark WIKIPEDIA in class 41 with a priority date of September 14, 2004 and a CTM registration for the word mark WIKIPEDIA in class 41 with a priority date of December 16, 2004.

The Complainant notes that at least seven previous panels under the Policy have recognized the Complainant’s rights in the WIKIPEDIA trademark.

The Complainant states that as at the date of the Complaint, the Respondent was using each of the disputed domain names in connection with websites that redirected visitors to a further website using the domain name <inforewardsurvey.com> and that each of those websites included a puzzle globe logo that, the Complainant says, is confusingly similar to a logo for which the Complainant has registered trademark rights. The websites advised visitors that they had “been selected” to take part in [an] anonymous survey”, and sought to collect personal information from visitors in exchange for a chance to win “prizes” including an iPad 2 and iPhone 4.

This use by the Respondent of the disputed domain names is nearly identical to activity described in two previous WIPO disputes filed by the Complainant against different respondents (namely Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911 and Wikimedia Foundation Inc. v. Moniker Privacy Services / Domain Admin, Frontline Media LLC, WIPO Case No. D2011-0106).

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it has satisfied the three elements of paragraph 4(a) of the Policy and requests that the disputed domain names be transferred to it.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel considers that the Complainant had registered and/or unregistered rights in the trademark WIKIPEDIA as the date of registration of all of the disputed domain names.

Three of the five disputed domain names were registered prior to the filing date of the Complainant’s first registration for the trademark WIKIPEDIA on September 14, 2004 (namely <wikiepdia.org> and <wikipdia.org>, both registered on July 1, 2004, and <wikypedia.org>, registered on July 28, 2004). The Panel is satisfied that the Complainant had unregistered rights in the trademark WIKIPEDIA prior to the registration of those disputed domain names, in particular by way of commercial use of the trademark by the Complainant’s predecessor, and the domain name registrations incorporating the WIKIPEDIA trademark, all dating from 2001.

Two of the five disputed domain names were registered subsequent to the date of the Complainant’s filing for the registration of the trademark WIKIPEDIA on September 14, 2004 (namely <wikiepdia.com> registered on December 20, 2004, and <wiikipedia.com> registered on February 8, 2005). The Panel is satisfied that the Complainant had both registered and unregistered rights in the trademark WIKIPEDIA as the date of registration of those disputed domain names.

The Panel considers that the disputed domain names <wiikipedia.com>, <wikiepdia.com>, <wikiepdia.org>, <wikipdia.org>, and <wikypedia.org> are clear typo-variants of the Complainant’s registered trademark WIKIPEDIA. The Complainant’s substantially inherently distinctive trademark is the dominant component of the disputed domain names. The conclusion that the disputed domain names are typo-variants, and not simply similar but independently derived marks, is supported by the fact that the Respondent registered five disputed domain names within a seven month period, and two on the same day.

The Panel accordingly finds that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:

(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.

However the Complainant is required only to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once a prima facie case is made out, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain names.

The Complainant states and the Panel accepts that it has never given the Respondent any license or authority to use the trademark WIKIPEDIA. The disputed domain names were at the time of the Complaint being used to host a website which collected personal information in exchange for the apparent chance to win prizes and which was not related to the activities of the Complainant.

In the present circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations 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 its documented out-of-pocket costs directly related to the disputed domain names; or

(ii) that the Respondent has registered the disputed domain names 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 has engaged in a pattern of such conduct; or

(iii) that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain names, the Respondent has 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 mark 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.

The disputed domain names are all clear typo-variants of <wikipedia.com>. The Respondent’s conduct is a classic case of typo-squatting. It is well established in panel decisions that “typo squatting” is inherently parasitic and of itself evidence of bad faith (Thomson Broadcast and Media Solution Inc., Thomson v Alvaro Collazo, WIPO Case No. D2004-0746). The fact that the Respondent registered five domain names that are typo-variants of the Complainant’s distinctive trademark WIKIPEDIA on four separate dates over a seven month period is a very clear indication of bad faith.

The Respondent’s websites at the disputed domain names operate as websites collecting personal information in exchange for a chance to win prizes. The Panel considers that this amounts to commercial conduct so that there is an intent to attract Internet users for commercial gain. The Panel is accordingly also satisfied on this basis that the disputed domain names were registered and are being used in bad faith, in particular for attracting Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark WIKIPEDIA by way of typo-squatting. Internet users searching for the Complainant’s websites are likely to come across the Respondent’s websites and could then be diverted away from the Complainant’s business.

Finally, the use by the Respondent on its websites of a logo closely similar to the Complainant’s registered globe logo mark is further evidence of an intent to use in bad faith.

The Panel is accordingly satisfied that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(b) 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 names, <wiikipedia.com>, <wikiepdia.com>, <wikiepdia.org>, <wikipdia.org>, and <wikypedia.org> be transferred to the Complainant.

Andrew Brown QC
Sole Panelist
Dated: November 21, 2011

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