WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Ryan G Foo / Domain Administrator, Fundacion Private Whois, Att: wikipedica.org, wikipediya.org, wikipeia.org, wikipidia.org, and wikipipedia.org
Case No. D2015-0882
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally represented
The Respondent is Ryan G Foo of Belize City, Belize / Domain Administrator, Fundacion Private Whois, Att: wikipedica.org, wikipediya.org, wikipeia.org, wikipidia.org, and wikipipedia.org of Panama.
2. The Domain Names and Registrar
The disputed domain names <wikipedica.org>, <wikipediya.org>, <wikipeia.org>, <wikipidia.org> and <wikipipedia.org> are registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that Ryan G Foo is the registrant.
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 June 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2015.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 17, 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, Wikimedia Foundation, Inc. is a non-profit organization dedicated to encouraging the growth, development and distribution of free, multilingual and educational content, which was founded in 2003 and now manages eleven free projects built and maintained by a large community of volunteers. The first and foremost project is Wikipedia, a free, online encyclopedia compiled, edited and maintained by over 70,000 active contributors. It is one of the most comprehensive and widely used reference ever compiled.
The Complainant owns a trademark Registration No. 3,040,722 WIKIPEDIA granted by the United States Patent and Trademark Office on January 10, 2006 for “Providing information in the field of general encyclopedic knowledge via the Internet” in class 41. The registration certificate indicates first use of the mark in January 2001. In subsequent years the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark. In addition, the Complainant owns several International Registrations for the trademark WIKIPEDIA.
The Complainant owns the domain name <wikipedia.org> registered on January 13, 2001.
The disputed domain names are the following:
<wikipeia.org> registered July 28, 2004
<wikipediya.org> registered January 3, 2005
<wikipidia.org> registered October 8, 2005
<wikipedica.org> registered May 29, 2006
<wikipipedia.org> registered July 20, 2006
5. Parties’ Contentions
The Complainant contends, basically, the following:
That the WIKIPEDIA marks in which the Complainant has rights are extremely well known in the United States and throughout the world.
The disputed domain names are nearly identical or confusingly similar to the trademarks in which the Complainant has rights.
The Respondent has no rights or legitimate interests in the disputed domain names, which have been both registered and used in bad faith by the Respondent.
Therefore, the Complainant requests the Panel to order the transfer of the disputed domain names to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed in this proceeding, under paragraph 4 (a) of the Policy, it must prove that;
(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.
A. Identical or Confusingly Similar
The disputed domain names <wikipedica.org>, <wikipediya.org> and <wikipipedia.org> contain the Complainant’s trademark WIKIPEDIA with the mere addition of the letters “c”, “y” and “pi”, respectively. In turn, the disputed domain names <wikipeia.org> and <wikipidia.org> are the result of deleting the letter “d” and replacing the middle letter “e” for an “i” in the WIKIPEDIA mark.
The Panel considers that above-mentioned differences are totally insufficient to effectively distinguish the disputed domain names from the Complainant’s famous trademark WIKIPEDIA and avoid confusion for Internet users.
Furthermore, the Panel considers that this is a case of “typo-squatting” (i.e.,: of purposely misspelling the Complainant’s trademark to create confusion for the users of Internet).
Therefore, the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then produce evidence to demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
None of the circumstances provided in article 4(c) of the Policy, nor any other to demonstrate rights or legitimate interests in the disputed domain name have been proved by the Respondent who carries this burden.
Therefore, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain names, and therefore the Complainant has made the second prong.
C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has acquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001. Since then it has grown to become well-known in the United States and worldwide.
Argentine daily newspaper “La Nación” (July 22, 2015) quotes newly elected President of the Complainant Patricio Lorente saying (in translation) “Wikipedia not only is the most consulted encyclopedia online, it is also the most important consultation work in history, both in content and reach, with versions in nearly 300 languages and more than 500 million people consulting each month.”
In the light of the information and evidence produced by the Complainant, when the Respondent registered the disputed domain names, beginning with <wikipeia.org> on July 28, 2004, the Respondent knew or should have known the existence of the Complainant’s online encyclopedia and WIKIPEDIA mark which evidences bad faith registration.
Furthermore, as stated by the Complainant and on the basis of printouts of the websites to which the disputed domain names resolve, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Even in the event of absence of active use of the disputed domain names by the Respondent, there are circumstances in the case such as the Complainant having a well-known trademark, no response to the Complaint having been filed and the registrant’s concealment of its identity, which allow the Panel to infer that the disputed domain names were also used in bad faith (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2).
For such reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of its case.
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 <wikipedica.org>, <wikipediya.org>, <wikipeia.org>, <wikipidia.org> and <wikipipedia.org> be transferred to the Complainant.
Miguel B. O'Farrell
Date: July 23, 2015