WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Host Master, Above.com Domain Privacy
Case No. D2015-0132
1. The Parties
The Complainant is Wikimedia Foundation, Inc., of San Francisco, California, United States of America, internally represented.
The Respondent is Host Master, Above.com Domain Privacy of Australia.
2. The Domain Name and Registrar
The disputed domain name <wikipedias.org> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2015. On January 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.
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, and the proceedings commenced on February 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 16, 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
Background information about the Complainant is taken from the Complaint.
The Complainant is a not-for-profit charitable organization that manages Wikipedia, and other projects including Wikimedia Commons, Wiktionary and Wikivoyage. Wikipedia is a freely accessible online encyclopaedia covering a wide variety of topics and holding some 33.5 million articles, contributed to by volunteers. Anyone can submit entries, corrections, updates, references and cross-links. The project receives nearly 500 million unique visitors each month.
Wikipedia exists in many languages. The primary website for entry to the Wikipedia in English and other languages, and to other of the Complainant's related projects, is "www.wikipedia.org", the domain name for which was registered on January 13, 2001.
The trademark WIKIPEDIA has been registered extensively at the United States Patent and Trademark Office (USPTO) and internationally in numerous countries. The Complainant has approximately 148 trademark or service mark registrations for WIKIPEDIA or foreign equivalents, of which the Panel will treat the following as representative for present purposes:
WIKIPEDIA, USPTO, principal register, registered January 10, 2006, stated first use in commerce January 13, 2001, registration number 3040722, international class 41;
WIKIPEDIA, USPTO, principal register, registered September 23, 2008, registration number 3505429, international classes 9, 35, 38, 41, 42;
WIKIPEDIA, international registration (including Belarus), WIPO ROMARIN database, registered September 20, 2006, registration number 907474, international classes 9, 35, 38, 41, 42.
Nothing is known about the Respondent or its business except for the registrant details supplied to the Registrar for registration of the disputed domain name <wikipedias.org>, which was apparently registered on June 6, 2006.
5. Parties' Contentions
The Complainant contends that it has rights in the trademark WIKIPEDIA and has tendered copies of registration certificates or online documentation in respect of 12 trademarks including those listed in Section 4 above. The Complainant says its trademark is well known and its website is one of the 10 most-visited in the world. The Complainant also says its trademark WIKIPEDIA was registered on January 10, 2006, predating the registration of the disputed domain name on June 6, 2006, and additionally that the Complainant has extensive common law rights in its trademark, which was first used in 2001.
The Complainant contends that the disputed domain name <wikipedias.org> is identical or confusingly similar to the Complainant's trademark WIKIPEDIA. The disputed domain name, containing merely the trademark WIKIPEDIA with the addition of a letter "s" making it plural, constitutes typo-squatting by the Respondent.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never in any way authorised or permitted the Respondent to use the Complainant's trademark in the disputed domain name. The Respondent is not commonly known by the disputed domain name and must have been aware of the Complainant's trademark at the time of registration of the disputed domain name. The Respondent's use of a privacy shield to hide its identity also suggests that it is not commonly known by the disputed domain name. The Respondent's use of typo-squatting, or the spelling of the Complainant's trademark with an error, is indicative of the Respondent not having a legitimate interest in the disputed domain name. The Complainant says the disputed domain name is not being used for a bona fide offering of goods or services but is used in order to spread malicious computer software to visitors or to induce the disclosure of personal information by visitors.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name resolves to a website that carries advertising, and that attempts to collect personal information from visitors. The Respondent has intentionally attempted to attract Internet users, for commercial gain, to a website by creating a likelihood of confusion with the Complainant's trademark. The consequences are damaging to the reputation and goodwill of the WIKIPEDIA brand.
The Complainant has cited a number of previous decisions under the UDRP, many of them concerning the Complainant's own previous complaints, that it believes may be of assistance to the Panel.
The Complainant requests the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identity of the Respondent
Paragraph 1 of the Rules defines a respondent as "the holder of a domain-name registration against which a complaint is initiated". The Respondent in this case may therefore be identified as the entity detailed in the WhoIs, in which the registrant is named "Host Master" and the registrant organization is named "Above.com Domain Privacy".
The alternative courses of action that may be taken where the registrant is a privacy service and the identity provided by the underlying registrant has been disclosed by a registrar, have been reviewed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 4.9, which contains a number of citations of previous decisions. Complainants have chosen variously to cite as respondent the privacy service, or the underlying registrant, or both, with enforcement of the decision being one consideration.
In the light of the additional name and location of the underlying registrant disclosed by the Registrar and notified to the Complainant by the Center, the Complainant has opted not to amend the identification of the Respondent. That is the Complainant's decision and the Panel accepts it.
B. Identical or Confusingly Similar
The disputed domain name is <wikipedias.org>. The generic Top-Level Domain (gTLD) designation of a disputed domain name may generally be disregarded in the determination of confusing similarity. What remains in this instance is "wikipedias", which corresponds to the Complainant's registered trademark WIKIPEDIA with the addition of the letter "s", which the Panel does not find to be distinguishing. The Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has not been licensed or permitted in any way to use the Complainant's trademark and does not have any rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The Respondent has not made any submissions under paragraph 4(c) of the Policy. Nevertheless, the decision is not made by default and the onus of proof remains with the Complainant. Screen shots of the website to which the disputed domain name resolves have been produced by the Complainant. These show, variously, a health-related page with a vague reference to hormonal treatment and a "newsletter signup" invitation; a token search facility; and a page headed "Congratulations!" with an unconvincing "survey" addressed to "today's lucky visitor" and an unlikely offer of an iPhone 6 for $9.99 in return for answering simplistic questions about Internet Explorer.
The Panel does not find any evidence in the Respondent's activities of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or that its use is noncommercial or fair. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Panel accepts the Complainant's assertion that WIKIPEDIA is one of the best-known trademarks on the Internet. It is apparently a novel word and it is recorded on the ROMARIN trademark database that the words contained in the WIKIPEDIA trademark have no meaning. The disputed domain name is, and evidently was constructed to be, virtually indistinguishable from the Complainant's trademark. Given the popularity and universality of the Complainant's online encyclopaedia and the immense fame of its trademark, it is implausible that the Respondent's choice of the disputed domain name was other than deliberate. In parallel with what has been repeatedly cited in cases under the Policy since at least as far back as Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (although previous decisions under the Policy are not binding precedent), the Panel finds the disputed domain name to be "so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith". On that basis alone the Panel finds the disputed domain name to have been registered and used in bad faith.
Nevertheless, examination of the content of the website to which the disputed domain name resolves leads reasonably to the conclusion that the website, whilst rudimentary and directionless, is intended to attract Internet visitors. Two purposes in attracting visitors may be discerned in this instance. One is to show or lead visitors to sales outlets for health-related things, software, employment, dating agencies and so on. The other is to collect personal information from a signup box for a newsletter or from what purports to be a survey, it being logical to a visitor thinking they might get a cheap iPhone 6 that they would need to supply their personal and contact details. Both purposes, referrals to advertisers and the collection of personal data, are potentially capable of generating a commercial return for the website operator.
It may reasonably be concluded from the evidence, on the balance of probabilities, that the Respondent's activities with the disputed domain name are designed to create revenue. A substantial industry exists in which website operators pay for the referral of visitors to them from other websites. Websites may refer visitors in this way in order to collect revenue incidentally, or may be established primarily to attract visitors, refer them on, and collect revenue as a business. Such a business may be entirely legitimate and a useful resource for Internet users, but must necessarily attract visitors in order to derive revenue. The use of another's trademark without authority in order to attract visitors must clearly negate the legitimacy of the operation.
Personal names and contact details may be traded for value. Any or all of a person's details including their name, domicile, address, email address, telephone numbers, age, occupation, income and other details can be traded in volume to entities specialising in targeted or indiscriminate mail-outs and communications.
The Respondent, by its appropriation of one of the best-known trademarks on the Internet, namely WIKIPEDIA, with the trivial addition of the letter "s", is found to have set out to confuse Internet users, at least initially, into visiting the Respondent's website and being induced there to visit the websites of advertisers, or to divulge personal information. On the evidence and on the balance of probabilities the Panel finds the Respondent's use of the disputed domain name to fulfil the provisions of paragraph 4(b)(iv) of the Policy in demonstrating an intention to attract Internet visitors for commercial gain by confusion with the Complainant's trademark, constituting use in bad faith. The Panel further finds on the balance of probabilities that the disputed domain name was registered for the bad-faith purpose for which it has been used.
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 <wikipedias.org> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 26, 2015