WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Sarbajit Roy
Case No. D2014-2261
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, represented by Jones Day, United States of America.
The Respondent is Sarbajit Roy of New Delhi, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wikimedia.xyz> is registered with Crazy Domains FZ-LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(c) the Respondent registered the disputed domain name on September 21, 2014;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 January 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2015. The Response was filed with the Center on January 29, 2015.
On January 30, 2015, the Center received a supplemental filing from the Complainant. On February 1, 2015, the Center received a supplemental filing from the Respondent. The Center acknowledged its receipt, and informed the parties that it would be forward to the Panel, once appointed, who would have the discretion to accept or reject it.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 13, 2015. 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.
The Respondent filed further supplemental filings with the Center by emails on February 16, 17, 18, 19, 20, 22, and 23 2015. On February 19, 2015, the Complainant’s representative also emailed the Center requesting omission of some persons from the addressees of communications in the proceeding.
4. Factual Background
The Complainant describes itself in the Complaint as a nonprofit charitable organization encouraging the growth, development and distribution of free, multilingual, educational content. It says it was founded in 2003 and manages 13 free knowledge projects, the most well-known of which is the Wikipedia website.
The Complainant says it primarily fulfills its administrative and supportive roles through a network of chapters, which are said to be independent organizations that collect donations, organize local events and projects, promote and support current projects and provide points of contact for potential partners and supporters. According to the Complainant, there are 41 chapters in 40 countries across 5 continents. A Wikimedia India Chapter was founded in 2011.
The Complaint includes evidence of the certificates of registration, or printouts from the ROMARIN database, by the Complainant of a number of trademarks:
- United States of America (“US”) Trademark No. 3,324,924 for WIKIMEDIA in respect of a range of services in International Classes 35, 38, 41 and 42, which was registered on October 30, 2007;
- US Trademark No. 4,586,703 for WIKIMEDIA COMMONS in respect of providing an on-line publication in the nature of an interactive encyclopedia in the field of general knowledge containing images, moving images and audiovisual images for educational and entertainment purposes in International Class 41, which was registered on August 19, 2014;
- US Trademark No. 4,473,374 for WIKIMEDIA COMMONS in respect of providing an online searchable database featuring images, moving images, audiovisual images and text in the field of scientific research; providing a website featuring technology that enables Internet users to publicly share images, moving images and audiovisual images in International Class 42, which was registered on January 28, 2014;
- US Trademark No. 4,323,357 for WIKIMEDIA LABS for providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely acting as an application services provider for third parties featuring remote hosting of operating systems and computer applications; computer services, namely providing a virtual computing environment accessible via the Internet for registered users for access to databases and software development tools in International Class 42, which was registered on April 23, 2013;
- US Trademark No. 4,473,403 for WIKIMEDIA INCUBATOR in respect of providing a website featuring information and links relating to development of on-line resources for information services in the field of encyclopedic knowledge, quotations, definitions, current event news, textbooks, manuals and learning resources, namely other websites and other databases and research of others in the field of education in International Class 41 and computer services, namely, design, creation, hosting, maintenance of websites and data feeds for others featuring user-defined information in International Class 42, which was registered on January 28, 2014;
Apart from the WIKIMEDIA trademark, each of the other registrations includes an express disclaimer of the word, as applicable, “commons”, “labs” or “incubator”. There is no disclaimer for the word “Wikimedia”.
- International Registration No. 902694 for WIKIMEDIA in respect of a range of services in International Classes 35, 38, 41 and 42, which was registered on September 20, 2006 – India is not one of the countries designated in this registration;
- International Registration No. 1 218 909 for WIKIMEDIA COMMONS in respect of a range of goods and services in International Classes 9, 41 and 42, which was registered on March 25, 2014 – India is one of the countries designated under the Madrid Protocol for this registration;
- International Registration No. 1147496 for WIKIMEDIA INCUBATOR in respect of a range of goods and services in International Classes 35, 38 and 42, which was registered on August 7, 2012 – India is not one of the countries designated in this registration;
- International Registration No. 1 210 468 for WIKIMEDIA INCUBATOR in respect of a range of services in International Classes 41 and 42, which was registered on March 25, 2014 – India is one of the countries designated in this registration;
- International Registration No. 1132363 in respect of WIKIMEDIA LABS in respect of the same services as the corresponding US registration, which was registered on August 7, 2012 – India is not one of the countries designated under this registration.
According to the Complaint, the Complainant licenses the use of its trademarks to the chapters as appropriate.
The Respondent registered the disputed domain name on September 21, 2014.
According to the Response, the Respondent is an eminent social activist in at least India. He is the honorary national convenor of an organization known as “India Against Corruption”. According to the Response, it is a non-political socialist body of unpaid selfless volunteers convened to eradicate corruption in India. Its members include police officers, judges, journalists, activists, politicians, lawyers, accountants, doctors, engineers, and ex-servicemen.
The disputed domain name resolves to a website which the Respondent describes in the Response as being:
“for the bonafide personal / social service purpose of hosting a free and non-commercial ‘wiki-cum-media online repository’ service, exclusively for volunteers of the ‘India Against Corruption’ @IAC popular movement, to act as the central repository for IAC’s collective knowledge content and aggregated media to be used across various projects of IAC and its network of affiliate movements”.
5. Discussion and Findings
Before dealing with the substantive issues, there are some preliminary matters that need to be addressed.
First, although the Policy does not contemplate supplemental filings except at the request of the Panel, the Panel does have discretion to admit supplemental filings in the interests of fairness. As at least some of the matters addressed in the Respondent’s supplemental filings appear to arise from events that occurred after the Response was filed, the Panel admits them into the record of the proceeding.
Secondly, the Respondent denies that the Policy is applicable to him and the disputed domain name and contends that only the courts of India have any jurisdiction.
However, the disputed domain name is registered in the “.xyz” Top-Level Domain and the “.xyz” Top-Level Domain is subject to the Policy: Registry Agreement dated December 5, 2013 between ICANN and xyz.com, LLC, cl. 2.2, Specification 1 paragraph 1.2.5; .xyz Launch Policies, cl. 8.
The Respondent also denies that he entered into a registration agreement with the Registrar in the form submitted in the Complaint or that it was in English. The Respondent has not submitted any form of registration agreement that he claims he did sign. It is clear from some allegations the Respondent makes in the Response about the conduct of the Registrar that the Respondent did in fact deal with the Registrar to register the disputed domain name. As noted above, the Registrar has confirmed that the registration agreement was in fact in English and that the Policy does apply.
The Respondent does say that he was lured into registering the disputed domain name by a special, cheap offer or promotion by the Registrar. It is not clear to the Panel whether the offer related just to the disputed domain name or was something more general. Nonetheless, as discussed below, the Respondent does assert an entitlement to use the disputed domain name so it appears that he chose to register the disputed domain name of his own free will. In these circumstances, as the Policy applies to the .xyz Top Level Domain and the Respondent has entered into the Registrar’s registration agreement which incorporates the Policy as part of its terms, the Panel proceeds on the basis that the Policy does apply and, accordingly, the Respondent is required to submit to the mandatory administrative proceeding under paragraph 4 of the Policy.
The Panel notes that the Respondent does state that there are already proceedings on foot between the parties in India and further proceedings are in contemplation. He has refused, however, to disclose the nature or subject matter of those proceedings. In its Complaint, the Complainant stated that there are no proceedings on foot between the parties concerning the disputed domain name. In these circumstances and particularly in view of the Respondent’s failure to disclose the proceedings currently on foot on which he relies, the Panel considers that paragraph 4(k) of the Policy does not operate to deny the validity of the proceeding.
The Respondent also contends that he is or will be prejudiced by the conduct of the proceedings in English as his first language is Hindi. The Response, however, runs to some 46 pages and one of the supplemental filings is another 13 pages in length. The Response and all of the Respondent’s supplemental filings are in English and demonstrate a very clear understanding of English and ready facility in its use. Accordingly, the Panel sees no reason to displace the usual rule.
Because some of the trademarks relied on by the Complainant are registered with the International Bureau of the World Intellectual Property Organization, the Respondent says the Center should disqualify itself as the service provider for this proceeding on the grounds of conflict of interest. The Center, however, as one of the ICANN approved providers, provides administrative services for the resolution of the UDRP disputes and plays no role in deciding the UDRP dispute. This is not a basis for terminating the proceeding.
As part of his denial of the validity of the Policy and the role of the dispute resolution providers appointed under the Policy, whom the Respondent contends are biased against respondents, the Respondent contends that any panelist appointed to decide the proceeding will necessarily be biased against him for fear of offending the dispute resolution service provider. As noted above, however, the Panel has submitted the Declaration of Impartiality and Independence, having no connection with either party or the Center. In the Panel’s experience, the Center has never tried to impose or suggest a particular outcome in any dispute that the Panel has been appointed to determine and, contrary to the Respondent’s suggestion, the Center has continued to invite the Panel to determine disputes regardless as to whether the Panel has found in favour of complainants or respondents. Accordingly, the Panel considers there is no basis for concluding, or a perception, that the dispute will be dealt with other than in accordance with the Policy and documents submitted by the parties comprising the record.
Therefore, paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name 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.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the WIKIMEDIA, WIKIMEDIA COMMONS, WIKIMEDIA INCUBATOR and WIKIMEDIA LABS trademarks listed in section 4 above. The Panel notes, however, that (as the Respondent contends) the specification of services in International Class 35 and some of the services in International Classes 38 and 41 of US Trademark No. 3,324,924 have been cancelled. For completeness, the Panel notes that the Trademark Electronic Search System online database maintained by the United States Patent and Trademark Office shows this registration is in fact for WIKIMEDIA and not WIKIPEDIA as apparently claimed by the Complainant’s General Counsel in a letter in 2009.
The Complainant did assert another International Registration but, after challenge by the Respondent, that claim has been withdrawn. The Complainant also says it has over 60 registered trademarks in 45 countries for WIKIMEDIA. No details of these registrations are provided. Accordingly, the Panel does not take this claim into account.
The Complainant also asserts that its trademarks are well known. The Complainant states it has over 100,000 active volunteers. The Respondent contests the claim to 100,000 active users pointing to other evidence which he says shows there are not more than 500 active users. The Complainant also states that it has 41 chapters, licensed to use its trademarks, around the world. It says there are 140 members contributing to Wikimedia projects in India. It also refers to the renown of its Wikipedia project which, it says, has 77,000 active contributors. The Complainant, however, puts its case on the basis of its WIKIMEDIA trademarks, not its WIKIPEDIA trademark. This state of the evidence falls short of what is required to establish common law rights: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
In undertaking the comparison, it is permissible in the present circumstances to disregard the “.xyz” component of the disputed domain name as a functional aspect of the domain name system: Philip Morris USA Inc. v. Sakaria Mohamoud mussafah, WIPO Case D2014-1667 <marlboro.xyz>; Petroleo Brasileiro S.A - Petrobras v. Monica Mitchell, WIPO Case No. D2014-1675 <petrobas.xyz>; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
The disputed domain name is therefore identical to the Complainant’s WIKIMEDIA trademarks.
The Complainant’s WIKIMEDIA COMMONS, WIKIMEDIA INCUBATOR and WIKIMEDIA LABS trademarks differ from the disputed domain name by the addition of a generic or descriptive term as recognized by the disclaimer of exclusive rights over those words in a number of the registrations. Plainly, the presence of WIKIMEDIA in those trademarks is the distinctive feature of those marks. If one were to ask for example what kind or source of “labs” are the goods or services denoted by that trademark, the answer would be “Wikimedia” labs as opposed to say Bell Labs or some other source’s laboratories.
The Respondent denies that the disputed domain name is confusingly similar to any of the Complainant’s trademarks.
First, he says that the Complainant is not the owner of the trademarks. One aspect of this is that the trademarks are not, or are not all, listed on the Complainant’s website as trademarks it owns. Secondly, he says that the Complainant attempted to become a “members organization” under Florida law in 2006, but that plan was never implemented. Thirdly, he says that the Complainant released the WIKIMEDIA base mark into the public domain. This is a reference to a “png” image file that is available to be downloaded by users of a WIKIMEDIA logo. This is for a device consisting of a globe surrounded by three arcs and the words “Wikimedia Meta-Wiki”. The website referenced does includes a notation that the copyright holder for the logo has released the copyright worldwide into the public domain. There are also other logos featuring devices and the words contained in the other trademarks.
The short answer to this point is that the Complainant has provided the certificates of registration, or a print out from the ROMARIN database, showing that it is the registered owner of the trademarks identified above. The board resolution referenced by the Respondent relating to the “members organization” project is a resolution by the board of the corporation. It does not establish that the corporation ceased to exist or was never formed. It establishes that it was not able to become the “members organization” initiallyplanned. That does not establish that the corporation ceased to exist. The web page referenced in the Response with the downloadable images of the logos states at the beginning:
“These are the trademarks of the Wikimedia Foundation.
They may only be used on the Wikimedia Foundation projects and by approved Wikimedia Foundation partners or movement organizations.
-The Board set up a trademark policy to regulate their use.
-The visual identity guidelines also provide important rules on the use of our marks.”
It then goes on to direct requests for permission to use the trademarks to a particular addressee. Far from being a dedication of the logos in question to the public domain, therefore, the web page relied on by the Respondent makes it clear that the Complainant claims and asserts its rights over its trademarks.
Secondly, the Respondent contends that the Complainant must establish rights in a trademark actionable in India which covers the goods or services in respect of which the Respondent is using the disputed domain name. In connection with this point, the Respondent contends that the Complainant is operating illegally in India and for that reason disentitled to protection there. The Respondent says further that there is no possibility of confusion between the parties’ respective websites so that no-one arriving at the Respondent’s website would ever be confused into thinking he or she was dealing with the Complainant.
The Respondent’s arguments are misplaced. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Respondent contends that this approach is wrong and a deliberate misinterpretation of the Policy. The consistent application of this approach by UDRP panelists is one of the reasons why the Respondent contends the Center and those it appoints under the Policy are biased and should be disqualified. While a panel is not bound by the decisions of previous UDRP panels under the Policy, consistency and predictability are highly desirable. The Respondent’s arguments do not persuade the Panel that the previous approach, which has been applied consistently from the very earliest days of the Policy is wrong and should not be followed. Moreover, the arguments about the trademark’s scope and location that the Respondent wishes to rely on can fairly and adequately be taken into account under the other limbs of the Policy.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s WIKIMEDIA trademark and confusingly similar to the Complainant’s WIKIMEDIA COMMONS, WIKIMEDIA INCUBATOR and WIKIMEDIA LABS trademarks. Therefore, the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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 acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that the Respondent is not a licensee of or otherwise affiliated with the Complainant and the Complainant has never authorized, condoned or consented to the Respondent’s registration or use of the disputed domain name. The disputed domain name is not derived from the Respondent’s name or – the Panel would add – the “India Against Corruption” organization in relation to which the Respondent uses the disputed domain name. The Complainant also argues that use of the disputed domain name which makes political comment about matters other than the Complainant, or its goods or services, does not qualify as “fair use” under paragraph 4(c)(iii) of the Policy; citing PepsiCo, Inc. v. “The Holy See”, WIPO Case No. D2003-0229; Twitter, Inc. v Ahmet Ozkan, WIPO Case No. D2014-0469.
The Respondent advances numerous arguments to rebut this case.
First, the Respondent appears to contend that the Complainant has waived its rights under the Policy or is otherwise now disentitled from objecting because the Complainant did not register its trademarks in the Trademark Clearing House scheme and has not invoked the Uniform Rapid Suspension (URS) System. However, a trademark owner’s rights to invoke the dispute resolution proceedings under the Policy are not subject to registration of the trademark in the Trademark Clearing House. Nor are they precluded by the existence of the URS. While there may be many good reasons for a trademark owner to register its trademark in the Trademark Clearing House, it is neither necessary nor practical in all cases.
Related to this argument, the Respondent contends that the Complainant abandoned its claims to object to the disputed domain name by failing to register it itself. This argument must also be rejected. The Panel notes that the disputed domain name consists of the Complainant’s “base mark” as the Respondent describes it and not some variation. Nonetheless, it is simply not possible for a trademark owner to register all possible variations of its trademarks in all possible domains.
The Respondent also claims that he was “deceitfully induced” to register the disputed domain name by “a special ‘crazy’ promo code offer for 10% of its normal price”. He then makes a number of allegations about the Registrar which he calls “a ‘pirate’ internet domain seller”. As already noted, it is not clear whether the offer related specifically to the disputed domain name, other domain names or domain names generally. This point appears to the Panel to relate to a possible dispute between the Registrar and the Respondent and is not relevant to the present dispute between the Complainant and the Respondent. The Panel further notes that, in registering the disputed domain name, the Respondent warranted that he has the right to use it. Moreover, this allegedly deceitful inducement sits very uncomfortably with the Respondent’s main position which is that he is perfectly entitled to use the disputed domain name in the way he does.
The Respondent’s central argument is that the Complainant’s trademark rights in India are very limited, or non-existent, and do not cover what the Respondent is doing. Therefore, the Respondent contends his activities are perfectly legitimate under Indian trademark law. The Respondent says further that the term “Wikimedia” is just a descriptive or generic term for what the website to which the disputed domain name is: a free and noncommercial “wiki-cum-media online repository” service, exclusively for volunteers of India Against Corruption. The Respondent says that under Indian law Apollo Tyres can quite fairly and legitimately exist alongside Apollo Hospitals without infringing any rights of the latter. The Respondent points out that the High Court in Ontario overturned a panelist’s decision ordering transfer of the domain name <canadian.biz> in application of the reasoning relied on by the Complainant: citing Black v Molson Canada.
The Panel notes first that the Policy is not necessarily constrained by the requirements of individual national laws. The Policy is intended to operate internationally and, given the differences between the legal approaches of different countries, has sought to develop international norms. So, for example, a person who sets up in one country but uses another’s trademark in a domain name used to target people in another country cannot rely on the legitimacy of the conduct in the first country to evade the Policy.
Secondly, the Panel does not accept the Respondent’s claim that “Wikimedia” is a descriptive or generic term. It is a coined term which, so far as the Panel is aware or can ascertain, does not have a dictionary meaning. The Panel notes that the Respondent does point to another “logo” of the Complainant – for a device and the term “mediawiki”. The latter term may well be understood as indicating a “wiki” for or relating to media. That is not the term in question here. The reversal of the word order in this case does matter. That is reinforced by the need for the Respondent to describe his website as a “wiki-cum-media online repository”.
That is one key point of difference with Apollo Tyres and Apollo Hospitals example invoked by the Respondent: Apollo is of course a god from Greco-Roman mythology, part of the stock of common knowledge and ordinary usage. Similarly, as quoted by the Respondent, the case of Black v Molson Canada involved an attempt by the latter to wrest control of <canadian.biz>. The term “Wikimedia”, however, is not a descriptive, dictionary or geographic term.
Further, the supply of tyres and hospitals in the Respondent’s Apollo example are also quite unrelated fields of activity. It is highly unlikely that someone who was aware of Apollo Hospitals would wonder if, or be misled into thinking that, it was the source of Apollo brand tyres.
In contrast, at least two of the Complainant’s trademarks, IR No 1218909 (WIKIMEDIA COMMONS) and IR No 1210468 (WIKIMEDIA INCUBATOR) extend to India and cover services which appear apt descriptions of what the Respondent’s website does and provides:
IR No. 1218909 (WIKIMEDIA COMMONS)
In International class 41: “…providing a collaboratively created and maintained online repository of images, sound, text, and other media files; providing an online publication in the nature of an interactive index of general knowledge containing images, sound, text, and other media files for educational and entertainment purposes.”
and in International class 42: “Hosting a website featuring open source technology that enables users to view, discuss, edit, and contribute to an online repository of images, sound, text, and other media files; computer services, namely, maintaining an online repository of images, sound, text and other media files.”
IR No. 1210468 (WIKIMEDIA INCUBATOR)
In International class 41: “Providing online publications on the use of and contribution to a website featuring information related to the development of online websites and databases of encyclopedic knowledge, books, news, media files, and other educational content.”
and in International class 42: “Hosting a website featuring an open source technology that enables users to create and discuss the development of online websites and databases of encyclopedic knowledge, books, news, media files, and other educational content; computer services, namely, design, creation, hosting, and maintenance of databases featuring user-defined information; providing information on the development of online websites and databases of encyclopedic knowledge, books, news, media files, and other educational content via a website.”
As these descriptions appear apt to describe the website operated by the Respondent and, as already discussed, the disputed domain name is confusingly similar to the trademarks in question, it appears to the Panel that it would infringe the Complainant’s trademarks. Infringing use does not qualify as a bona fide offering of goods or services under the Policy. The purpose and objects of the Respondent’s website appear to be laudable; there is nothing in the record to suggest that the organization India Against Corruption is anything other than bona fide. The fact that it is, or at least appears to be, bona fide and serving laudable purposes, however, is not the issue under the Policy. The issue under the Policy is a right or legitimate interest in a domain name which is confusingly similar to another’s trademarks. As the Complainant contends, use of the website in connection with political action unrelated to the Complainant does not constitute fair use of the Complainant’s trademark under the Policy.
The Respondent also invokes the existence of another domain name, <wikimedia.net>, which is being offered for sale to support his claim that the term “Wikimedia” is generic. There is no evidence before the Panel that the Complainant has acquiesced in the existence of the “.net” domain name, whether the Complainant even knew of its existence or what steps, if any, have been taken in respect of it. In any event, the record in this case falls far short of demonstrating that the Complainant’s trademark has fallen into the public domain or otherwise become the accepted description of some activity or functionality.
The Respondent claims that the disputed domain name is a parody on the pornographic materials available in the “.xxx” generic Top-Level Domain (gTLD). This appears to relate to the use of the “.xyz” gTLD as a domain name space unaffected by the sort of content which may be found in the “.xxx” gTLD. Despite the Respondent’s claims, the Panel cannot perceive anything in the use of “Wikimedia” in conjunction with “.xyz” that in any way conveys a parody on whatever content may be found at websites in the “.xxx” domain space.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which the Respondent has failed to rebut. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
For the reasons discussed in section 5.B above, the Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
There is no suggestion in the Response or the many supplemental filings made by the Respondent that he registered the disputed domain name for any purpose other than the purpose to which he has in fact put it. Put positively, it appears that the Respondent registered the disputed domain name expressly to use it in the way he has done.
The Respondent contends that he registered the disputed domain name and began using it before he had any notice of the Complaint. The Respondent also positively asserts that he did not know of the Complainant’s trademark when he registered the disputed domain name. However, the Respondent’s filings make it very clear that he was well aware of the Complainant for many years before he registered the disputed domain name. For example, the Respondent says he and/or his friends attempted to become members of the Complainant in 2006 when it was attempting to convert itself into a “members organization”. The Respondent also states that he spent more than an hour on the telephone with one of the then Trustees and Board members of the Complainant on issues relating to rogue editors or administrators as a result of which “certain actions were initiated by Respondent … to protect the WIKIMEDIA name in India and also Respondent’s name”. Although it scarcely bares stating at this point, the essential or distinctive part of the Complainant’s name is essentially (as the Respondent himself describes it) the Complainant’s base trademark – WIKIMEDIA.
It appears therefore that the Respondent was very well aware of the Complainant’s name, WIKIMEDIA, when he registered the disputed domain name. The name itself has no connection with the Respondent or the organization India Against Corruption. He was prepared to warrant that he was entitled to use the disputed domain name and it would not infringe anyone else’s rights. Whether he was aware of the Complainant’s registrations or not, he was certainly well on notice that it was the Complainant’s name. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith in terms of the Policy: he registered it for use in a way which apparently infringes the Complainant’s rights, well and truly on notice that he was registering what is in effect the Complainant’s name without the Complainant’s consent.
The Complainant has therefore established the third requirement under the Policy.
D. Reverse Domain Name Hijacking
The Respondent has submitted a very substantial amount of material in support of his allegations of bad faith conduct by the Complainant or people purporting to act on its behalf in support of his allegation that the Complainant has brought this Complaint in bad faith sufficient to warrant a finding of Reverse Domain Name Hijacking against the Complainant. Whatever may be the merits of the Respondent’s grievances, they do not go to the substantive issues arising under paragraph 4(a) of the Policy. The Complainant’s successful demonstration of the three cumulative requirements under paragraph 4(a) of the Policy, therefore, renders the Respondent’s claim for a finding of Reverse Domain Name Hijacking moot.
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 <wikimedia.xyz> be transferred to the Complainant.
Warwick A. Rothnie
Date: February 26, 2015