WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Mildred Valentine / Domain Hostmaster
Case No. D2014-2283
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 Mildred Valentine of Enfield, United Kingdom of Great Britain and Northern Ireland / Domain Hostmaster of Fortitude Valley, Queensland, Australia.
2. The Domain Names and Registrars
The disputed domain names <dewikipedia.org>, <frwikipedia.org>, <wikiperia.org> and <wikipipedia.com> (altogether the "Disputed Domain Names") are registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2014. On December 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name <dewikipedia.org> and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint (initially a privacy service). The Center sent an email communication to the Complainant on January 7, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant noted that the Registrar’s disclosure of the Respondent’s contact information revealed that it was the registrant of three other infringing domain names, and so it filed an amended Complaint on January 12, 2015. On January 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is also listed as the registrant for the disputed domain names <frwikipedia.org>, <wikiperia.org> and <wikipipedia.com>.
The Center verified that the Complaint together with the amended 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 January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2015.
The Center sent an email communications to the Registrar on February 17, 2015 to highlight that the Disputed Domain Name <wikipipedia.com> was due to expire on March 5, 2015, and to seek confirmation from the Registrar that the lock placed on the Disputed Domain Name will be maintained should the Disputed Domain Name expire prior to the conclusion of the case. The Registrar eventually confirmed that the aforementioned lock is in place and that (in accordance with ICANN's Expired Domain Deletion Policy), the domain name registration has been renewed (the WHOIS no longer provides the Respondent's contact information, but indicates that the name is subject to a UDRP dispute).
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 24, 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.
4. Factual Background
The Complainant is a nonprofit charitable organization founded in 2003. The Complainant's most well-known service is a free online encyclopedia called Wikipedia. Wikipedia is found at the domain name <wikipedia.org>, consistently ranked sixth most popular web property in the world. The Complainant registered the trademark WIKIPEDIA in the United States of America on January 10, 2006. The registration first indicates use in 2001. In subsequent years, the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark.
The Respondent (Mildred Valentine) is based in the United Kingdom of Great Britain and Northern Ireland. The Respondent registered the Disputed Domain Names <dewikipedia.org> on January 30, 2005, <frwikipedia.org> on January 30, 2005, <wikiperia.org> on January 1, 2006, and <wikipipedia.com> on March 5, 2006, through the proxy service provider Domain Hostmaster.
5. Parties’ Contentions
The Complainant's contentions can be summarised as follows:
(a) The Complainant is the registered owner of the United States of America, United Kingdom of Great Britain and Northern Ireland, European Community and International WIKIPEDIA trade marks. The Complainant also registered the domain name <wikipedia.org> on January 13, 2001, and holds various other domain names that incorporate its WIKIPEDIA marks.
(b) The WIKIPEDIA marks are unique and proprietary to the Complainant and have become extremely well known around the world as a direct result of the Complainant's efforts. The WIKIPEDIA marks serve to identity the Complainant alone.
(c) The Disputed Domain Names are confusingly similar to the Complainant's WIKIPEDIA trade marks. The <dewikipedia.org> and <frwikipedia.org> incorporate the WIKIPEDIA trade mark in its entirety, with the addition of the prefixes "de" and "fr", which do not mitigate the potential risk of confusion. The <wikiperia.org> and <wikipipedia.com> Disputed Domain Names simply substitute one or two letters in order to capitalize on common misspellings of the Complainant's WIKIPEDIA marks.
(d) The Complainant began using the WIKIPEDIA marks in 2001, and the Wikipedia website offers over 30 million articles in 287 languages and has over 465 million unique visitors each month. The Complainant's mark is therefore well-known worldwide and has become a valuable asset of the Complainant.
(e) The Respondent has no rights or legitimate interests in the Disputed Domain Names and has attempted to hide her identity by using privacy protection services as well as by providing a false address. The Respondent has made no attempt to use the Disputed Domain Names for a legitimate noncommercial or fair use purpose.
(f) The websites to which the Disputed Domain Names resolve are third party sites with no apparent relationship to the Complainant. There is evidence to suggest that this redirection to third party sites is for the purpose of infecting users' computers with malware and/or harvesting users' personal information. Further, it is inferred that the Respondent is re-directing traffic to these third party websites for a fee, i.e., the Respondent is using the Disputed Domain Names to trade on the value established by the Complainant.
(g) Given the worldwide prominence of the WIKIPEDIA marks, the Respondent knew or should have been aware of the WIKIPEDIA marks when she registered the Disputed Domain Names between January 2005 and March 2006. As of January 2005, the Complainant had already acquired an International Registration for the WIKIPEDIA marks and had developed significant common law rights through use in commerce since 2001.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the WIKIPEDIA marks, based on its numerous trade mark registrations, including its trade mark registrations in the United States of America and the United Kingdom of Great Britain and Northern Ireland.
It is a well-established rule that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or prominent element of the domain name (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971). In this case, the only difference between the Disputed Domain Names and the Complainant's WIKIPEDIA trade marks is the addition of "de" and "fr" in relation to <dewikipedia.org> and <frwikipedia.org>, the use of the letter "r" instead of the letter "d" in relation to <wikiperia.org> and the inclusion of an extra "pi" in relation to <wikipipedia.com>, which adds no distinctive element and appears to be a clear case of "typosquatting". The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainant's trade mark.
Furthermore, the domain extensions ".org" and “.com” are both extensions which the Complainant has registered with domain names featuring the WIKIPEDIA mark itself.
The Panel accordingly finds that the Disputed Domain Names are identical or confusingly similar to the WIKIPEDIA trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by any of the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) 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 trade mark or service mark at issue.
The Complainant is only required to establish a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Disputed Domain Name. The Respondent will then bear the burden of proving otherwise. Where the Respondent fails to do so, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the absence of any contrary evidence, the Panel accepts that the Respondent is not a licensee nor is there any association between the Complainant and the Respondent that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s WIKIPEDIA mark. The Panel has also seen no evidence to demonstrate that the Respondent has become commonly known by any of the Disputed Domain Names. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Names. However, since no Response was filed by the Respondent, the Panel will determine whether or not the Respondent has any rights in the Disputed Domain Names based on the reasonable inferences that can be drawn from the Complainant's evidence.
The Panel notes that there is evidence to suggest that the Respondent has used the Disputed Domain Names to redirect users to third party sites that may surreptitiously infect their computers with malware and/or harvest their personal information without consent. It is also reasonable to infer that the Respondent earns a fee for redirecting users to these third party sites, given that such arrangements are common and there is no other readily apparent reason for the redirection (Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761).
For the foregoing reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exhaustive list of circumstances as evidence that a respondent has registered and used a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It is a well-established principle that registration of a domain name that is confusingly similar to a well-known trade mark by any entity that does not have a relationship to that mark can amount to sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Given that the Complainant began using the WIKIPEDIA mark since at least 2001 and that the Complainant website is used by users from around the world, the Respondent is more likely than not to have been aware of the reputation and business activities of the Complainant. Further, WIKIPEDIA is a distinctive term, and no explanation has been provided by the Respondent as to why the Respondent has adopted the Complainant's distinctive mark in the Disputed Domain Names. The Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the Disputed Domain Names with the Complainant's mark in mind, in order to misdirect Internet traffic by users who are searching for the Complainant.
Using a domain name to intentionally attract Internet users to a website for commercial gain, in an effort to trade on the Complainant’s goodwill, is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that this is a clear case of typosquatting and that the Respondent deliberately registered the Disputed Domain Names with slight additions and/or misspellings with the intent to divert Internet users from the Complainant’s website, and that such actions amount to bad faith registration and use.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <dewikipedia.org>, <frwikipedia.org>, <wikiperia.org> and <wikipipedia.com> be transferred to the Complainant.
Date: March 9, 2015