WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services
Case No. D2015-1098
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("USA"), represented internally.
The Respondent is Whois Privacy Corp. of Nassau, New Providence, the Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain names, <wikipeda.com>, <wikipediea.com>, <wikipidiea.com>, <wikipiedia.com> and <wikipoedia.com> (together the "Domain Names"), 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 June 26, 2015. On June 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 30, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 2015. The Complainant filed a further amended Complaint on July 13, 2015.
The Center verified that the Complaint (taken together with the amended Complaints) 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 July 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 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.
4. Factual Background
The Complainant is a non-profit charitable organization based in California, USA. One of the best known projects managed by the Complainant is Wikipedia, a free, online encyclopedia compiled, edited and maintained by many thousands of active contributors.
The Complainant's Wikipedia project started out in January 2001 and it was on January 13, 2001 that the Complainant registered the domain name <wikipedia.org>.
The Complainant is the registered proprietor of numerous trade mark registrations for the name "Wikipedia", the earliest of which are (i) International Registration No. 839132 registered December 16, 2004 WIKIPEDIA (word) in class 41 for the provision of information in the field of general encyclopedic knowledge via the Internet and (ii) United States Registration No. 3,040,722 registered January 10, 2006 (filed September 14, 2004) WIKIPEDIA (standard characters) in class 41 also for the provision of information in the field of general encyclopedic knowledge via the Internet. The record for this registration features a first use claim in commerce of January 13, 2001.
As indicated in section 6 below the Domain Names are held in the names of one or other of a privacy service and Ryan G Foo. Those held in the name of the privacy service are <wikipediea.com> registered on May 20, 2004 and <wikipeda.com> registered on May 26, 2004. Those registered in the name of Ryan G Foo are <wikipiedia.com> registered on June 4, 2004, <wikipoedia.com> registered on December 22, 2004 and <wikipidiea.com> registered on September 7, 2005.
The Panel has attempted to access the sites to which the Domain Names are connected with mixed results.
The visit to the "www.wikipediea.com" website finally ended up after several re-directions to a website at <officialsurveyrewards.com> inviting the Panel to participate in a test of "the new iPhone 7" and receive a free iPhone 6. It was necessary for the Panel to quit the Internet browser to remove the invitation to participate.
The visit to the "www.wikipeda.com" website resulted in a warning that the visit to the site had allowed a virus to infiltrate the computer and an invitation from "Apple Security" to commence a scan and participate in a repair. An ensuing call to Apple verified that that the invitation did not emanate from Apple.
The visit to the "www.wikipiedia.com" website resulted in a malware warning: "Visiting this site may harm your computer".
The visit to the "www.wikipoedia.com" website ended up at a site connected to "www.mdlinx.com", a medical website.
The visit to the "www.wikipidiea.com" website led to a parking page featuring various links including a link to the Complainant's Wikipedia website.
5. Parties' Contentions
The Complainant contends that this is a typical case of typosquatting. The Complainant contends that the Domain Names are all confusingly similar to the Complainant's WIKIPEDIA trade mark, which it first used in January 2001 and in which it had acquired common law trade mark rights prior to its first registered rights. The registered rights first came into existence in the USA on September 14, 2004.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were all registered and are being used in bad faith.
The Complainant contends that the Respondent intentionally targeted the Complainant's WIKIPEDIA trade mark for the purpose variously of commercial gain and spreading malware, some of the websites leading to standard pay-per-click parking pages and others leading to sites "inviting users to download software or disclose their personal information".
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
First, however, it is necessary to address the Complainant's request for consolidation.
The filing of the amended Complaints followed from the fact that the Respondent named in the original Complaint, Whois Privacy Corp., was a privacy service employed by the underlying registrant(s) concealing the identity of the underlying registrant(s). In response to the Center's request for registrar verification the Registrar disclosed that the underlying registrant for three of the Domain Names is Ryan G Foo, PPA Media Services, while the other two Domain Names are still held in the name of the privacy service.
The question now arises as to whether it is appropriate for the Panel to decide this case where there are, on the face of the record, two different registrants.
Paragraph 3(c) of the Rules provides that "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." However, the fact that the names appearing on the Registrar's database differ, does not necessarily mean that the underlying registrants are different entities. Moreover, even where they are different entities, panels have tended to treat them as one where their domain names or the websites to which they connect are (or appear to be) under common control and where it would be fair and just to do so. In assessing the position the Panel notes and endorses (a) the terms of paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and (b) the careful and detailed analysis on this topic of the learned panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 (at paragraph 6).
While it is certainly possible that the underlying registrant behind the privacy service is someone other than Ryan G Foo, the Panel has come to the conclusion on the evidence before him that it is more likely than not that the registrants are one and the same or, if not, that the Domain Names are likely to be under common control. The factors that have led the Panel to come to this conclusion are:
(a) the Domain Names are all very similar in style. Not only are they all obvious deliberate typosquatting attacks on the Complainant's WIKIPEDIA trade mark, two of them, <wikipediea.com> and <wikipidiea.com>, which are held in different names, are so close that they are likely to have emanated from the same source;
(b) the same registrar and privacy service was used for all the Domain Names;
(c) three of the Domain Names, the two held in the name of the privacy service and <wikipiedia.com> held in the name of Ryan G Foo, were all registered within fifteen days of each other in May/June, 2004;
(d) the uses to which the Domain Names have been put are not so dissimilar as to indicate independent ownership/control;
(e) the Complainant's contentions are unchallenged.
For the reasons set out above the Panel concludes on the balance of probabilities on the evidence before him that the underlying registrant on the Registrar's Whois database for the two Domain Names still held in the name of the privacy service is either Ryan G Foo, the registrant of the other three Domain Names or, if a different entity, that all the Domain Names, the subject of this dispute (and/or the websites to which they are connected) are nonetheless under common control. The Panel concludes that to consolidate in accordance with the Complainant's request for consolidation would be fair and equitable.
Henceforth all references to the "Respondent" are references to Ryan G Foo and the person or persons being the underlying registrant(s) of the two domain names remaining in the name of the privacy service.
C. Identical or Confusingly Similar
In the view of the Panel the likelihood of confusion is obvious from a mere glance at the Domain Names. The Complainant's trade mark is WIKIPEDIA, a coined, meaningless word; the Domain Names at the relevant level for this purpose (the second level) are "wikipeda", "wikipediea", "wikipidiea", "wikipiedia" and "wikipoedia".
The Panel finds that the Domain Names are confusingly similar to the Complainant's WIKIPEDIA trade mark.
While the date at which the Complainant acquired its trade mark rights is irrelevant for this element of the Policy, provided that they were acquired (as they were) at or before the date of the Complaint, the date could well be relevant for the second and third elements of the Policy. It is convenient that the issue be addressed here, it being the case that the Complainant's registered trade mark rights came into existence in late 2004 after the date of registration of the first three of the Domain Names to be registered. The Complainant contends that in the course of 2001 following its first use of the "Wikipedia" name it built up a sufficient reputation and goodwill to give rise to unregistered common law trade mark rights in respect of the name.
The Panel is satisfied on the evidence submitted that by the date of registration of the first of the Domain Names to be registered (May 20, 2004) the Complainant had indeed acquired such rights. Were there any doubt in the matter the fact that the Respondent so obviously sought to "ape" the "Wikipedia" name for his commercial purposes confirms the existence of those rights. To put it another way, it is inconceivable to the Panel that anyone would have registered any of the Domain Names were it not the case that at date of registration there was already in existence a significant reputation and goodwill in respect of the name "Wikipedia".
D. Rights or Legitimate Interests
As indicated, the Panel is of the view that the Respondent selected the Domain Names with knowledge of the Complainant's WIKIPEDIA trade mark and with the intention of taking advantage of the Complainant's rights for his own commercial purpose by adopting mis-spellings of the Complainant's trade mark.
That being the Panel's view of the matter, there is no way that the Respondent's adoption and use of the Domain Names, which has included the dissemination of malware, can be said to have given rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
By the same reasoning the Panel finds that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <wikipeda.com>, <wikipediea.com>, <wikipidiea.com>, <wikipiedia.com> and <wikipoedia.com>, be transferred to the Complainant.
Date: August 18, 2015