WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WordPress Foundation v. TradeMark Management
Case No. D2013-1409
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 TradeMark Management of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <wrdpress.com> (the “Disputed Domain Name”) is registered with Inames Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 10, 2013, the Registrar transmitted its verification response by email to the Center confirming the Respondent as the registrant and provided contact details.
On August 14, 2013, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same day, the Complainant filed its request for English to be the language of the proceeding. The Respondent failed to respond.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2013.
The Center appointed Young-Hill Liew as the sole panelist in this matter on September 20, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant WordPress Foundation, based in the U.S., is the owner of the well-known WORDPRESS trademark and its corresponding logo (the “Marks”). In particular, the Complainant holds trademark registrations in Canada, China, Europe and the U.S., registered as early as January 2007.
At least as early as March 28, 2003, the Complainant and its licensee commenced use of the Marks in connection with self-hosted blogging and Internet publishing tool. Over the years, Complainant’s business of providing blogging and Internet publishing services has grown. For instance, Complainant’s website “www.wordpress.com” ranks number 25 in Internet visitor traffic according to Quantcast.com. In 2004 and early 2005, the Complainant was mentioned in articles on “www.cnet.com” technology website as well as the New York Times. By October 2009, based on survey evidence, the Open Source CMS Market Share Report reached the conclusion that WordPress enjoys the greatest brand strength of any open source content management system. As a result of the Complainant’s long and extensive use and efforts to promote its Marks, the Marks have become widely recognized by consumers.
The Disputed Domain Name was first registered on March 12, 2011.
The Respondent has had at least five adverse UDRP decisions against it where the panel ordered transfer of the relevant disputed domain names.
5. Parties’ Contentions
The Complainant contends that the Complainant is the owner of registered and distinctive WORDPRESS marks, and the Disputed Domain Name is clearly confusingly similar to the Complainant’s registered Marks. The Complainant contends that the Respondent attracts visitors to its website by using a nearly identical copy of the Complainant’s Marks in its domain name (merely deleting the letter “o”), thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites.
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant asserts that the Respondent is using the Marks without consent from the Complainant. The Complainant argues that none of the circumstances set forth in paragraph 4(c) of the Policy, which, if proven by the Respondent, may demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name, apply to the Respondent.
The Complainant also contends that the Respondent registered the Disputed Domain Name in bad faith. First, the Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks. The Respondent was on both actual and constructive notice of Complainant’s rights in its Marks through the Complainant’s extensive, global use of the Marks and through its trademark registrations. Second, the Respondent is obtaining commercial gain from its use of the Disputed Domain Name. When a visitor types “wrdpress.com” into its browser, it is automatically redirected to a variety of other websites. Presumably, the Respondent receives compensation from these various website owners when the Respondent’s visitors are redirected to their websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceedings
In accordance with paragraph 11 of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement”.
In this case, the language of the registration agreement for the Disputed Domain Name is Korean. However, the Complainant has requested to proceed in English on the following grounds:
- the Complainant’s Marks and the Disputed Domain Name are composed of words which are only recognized in the English language;
- in prior decisions against the Respondent, the panel determined that English should be the language of the proceedings; and
- Complainant’s business is headquartered in the U.S., and it operates in the English language.
Given that the Respondent has not submitted an objection to the Complainant’s request that English be the language of the proceeding and has not filed a Response and the reasons put forth by the Complainant, the Panel decides English shall be the language of the present administrative proceedings.
6.2. Elements Under the Policy
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name be transferred:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark to which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Disputed Domain Name differs from the Complainant’s registered Marks in that the letter “o” is omitted in the Disputed Domain Name.
The Panel is prepared to find that the Disputed Domain Name is confusingly similar to the Complainant’s WORDPRESS Marks.
It is a long-established precedent that a minor misspelling of a complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. 1281960; DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. 914942; and Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211.
Just as it was held that GRAINGER trademark was held to be confusingly similar to <gainger.com> in W.W. Grainger, Inc. v. Private Registration where letter “r” was deleted from the GRAINGER trademark, the Panel finds that the deletion of the letter “o” is a minor misspelling of the Complainant’s trademark, and does not eliminate confusing similarity between the Complainant’s Marks and the Disputed Domain Name. See also Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299, which held that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”.
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name and is therefore irrelevant to determine the confusing similarity between the trademark and the Disputed Domain Name.
Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights, and paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As to each of the circumstances listed in Section 4(c) of the Policy, the Complainant contends that (i) there is no bona fide offering of goods of services as the Disputed Domain Name simply redirects visitors to other websites; (ii) the Respondent is not known by the Disputed Domain Name as there is no evidence that the Respondent’s business has been known by the Disputed Domain Name; and (iii) there is no legitimate noncommercial or fair use of the Disputed Domain Name as the Respondent is “using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks by redirecting the visitors to websites offering services different and unrelated from those of the Complainant, over which the Complainant has no quality control”.
The Complainant has established reputation in many jurisdictions throughout the world in its Marks, and the Respondent failed to refute Complainant’s claim that the Respondent is using the Marks without consent.
The Panel agrees that “where a complainant has asserted that the respondent has no rights or legitimate interest in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Thus, in the absence of a response or any communication from the Respondent, the Panel believes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the Disputed Domain Name, which the Respondent has not rebutted and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is prepared to find that the Complainant’s Marks in respect of self-hosted blogging and Internet publishing tool has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The Panel finds that the extensive prior use of the Marks by the Complainant prior to the date on which the Respondent acquired the Disputed Domain Name, provided constructive knowledge of the Complainant’s Marks. Therefore, it is highly unlikely that the Respondent did not know of the Complainant's Marks at the time of the registration of the Disputed Domain Name. In Juris A/S v. Raheel Ra and Protected Domain Services, WIPO Case No. D2011-0835, the panel held that where the trademark at issue (LEGO) was a well-known mark, the “Respondent’s knowledge of Complainant and Complainant’s LEGO Marks is strong evidence of bad faith.” Similarly, the Panel finds that the Respondent’s knowledge of Complainant’s Marks amounts to strong evidence of bad faith.
Further, paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. The Panel finds that the website connected to the Disputed Domain Name is used for commercial gain as it is automatically redirected to a variety of other websites, through which the Respondent presumably receives compensation.
The Respondent has failed to submit any evidence or arguments to rebut the above contentions of the Complainant.
Therefore, the Panel concludes that Disputed Domain Name was registered and is being used in bad faith, and paragraph 4(a)(iii) of the Policy to be satisfied.
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, <wrdpress.com>, be transferred to the Complainant.
Date: October 4, 2013