WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Domain Administrator, WhoIs Watchdog, Attn: wikopedia.com and wikpedia.com

Case No. D2015-1341

1. The Parties

1.1 The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, internally represented (the "Complainant").

1.2 The Respondent is Domain Administrator, Whois Watchdog, Attn: wikopedia.com and wikpedia.com of Shanghai, China (the "Respondent").

2. The Domain Names and Registrar

2.1 The disputed domain names <wikopedia.com> and <wikpedia.com>(the "Disputed Domain Names") are registered with Rebel.com Corp. (the "Registrar").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 30, 2015. On July 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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").

3.3 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 August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2015.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on September 11, 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

4.1 The Complainant in this administrative proceeding is Wikimedia Foundation, Inc., a non-profit charitable organisation situated in San Francisco, California, United States of America. The Complainant is said to be dedicated to encouraging the growth, development and distribution of free multilingual and educational content. The Complainant is said to have been founded in the year 2003 and to date manages eleven free knowledge projects built and maintained by a community of over 80,000 active volunteers. The many well-known projects include: (i) Wikimedia Commons - a shared media repository of almost 27 million freely usable images, sound files, and video files; (ii) Wiktionary - an online dictionary and thesaurus; (iii) Wikivoyage - a free worldwide travel guide; and (iv) Wikipedia - a free, online encylopaedia compiled, edited and maintained by over 70,000 active contributors. It is said further that the Complainant provides technological, legal, fundraising and administrative support for these projects which taken together are said to represent one of the ten most – visited web properties in the world.

4.2 The Complainant's oldest and largest project is said to be Wikipedia, established in 2001, and since then has grown to offer over 35.2 million articles in 288 languages with over 400 million unique visitors each month. It is said that visitors from around the world collectively make tens of thousands of edits and create new articles to augment the knowledge held by Wikipedia, thereby rendering Wikipedia to be the most comprehensive and widely used reference work ever compiled.

4.3 The Complainant's trademark WIKIPEDIA was registered on December 16, 2004.

4.4 The Respondent in this administrative proceeding is Domain Administrator WhoIs Watchdog, Attn: wikopedia.com and wikpedia.com located in Shanghai, China. The Respondent is recorded as having registered the Disputed Domain Names <wikopedia.com> and <wikpedia.com> on November 27, 2005.

5. Parties' Contentions

A. Complainant

5.1 The Complainant contends that it owns rights in the domain names <wikipedia.org> and <wikipedia.com>, and in the trademark WIKIPEDIA. Furthermore, the Complainant contends that it owns and has acquired approximately 148 trademark registrations both in the United States of America and worldwide for the WIKIPEDIA trademark as indicated in Annex 5 of the Complaint, the foreign equivalents thereof, extensive common law rights and distinctiveness in the WIKIPEDIA trademark since the Complainant's first use in 2001. The Complainant also states that it registered the domain name <wikipedia.org> on January 13, 2001 and also owns registrations for multiple domain names that incorporate the WIKIPEDIA marks including: <wikipeddia.org>, <wikipedia.com>, <wikipediia.org> and <wikipedia.us>. The Complainant further contends that the Complainant and its affiliated chapters have spent considerable time, effort, and money extensively promoting Wikipedia in the United States of America and throughout the world.

5.2 The Complainant therefore contends that the two Disputed Domain Names are identical and confusingly similar to the Complainant's trademarks. As one of the Disputed Domain Names namely, <wikopedia.com>, contains the full WIKIPEDIA trademark with the mere substitution of the letter "I" with the letter "O"; while the other Disputed Domain Name contains the full WIKIPEDIA trademark with the mere omission of the letter "I" after the letter "K". The Complainant submits that the mere substitution of the letter "I" with the letter "O" does not create any distinguishing feature with regards to the Complainant's trademark. Equally, the omission of the letter "I" after the letter "K" does not create any distinguishing feature with regards to the Complainant's trademark. The Complainant submits further that this is a clear case of "typo-squatting" and as found in Wikimedia Foundation Inc. v. PrivacyProtect.org/Domain Tech Enterprises, WIPO Case No. D2011-1591, typo-squatting is not sufficient to make a domain name distinguishable. The Complainant also refers to Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 amongst other previous UDRP decisions in this regard. The Complainant also asserts that the Disputed Domain Names are so similar to the Complainant's WIKIPEDIA trademark that word processing auto correct software suggests correcting "WIKOPEDIA" and "WIKPEDIA" to "WIKIPEDIA" in case the user has made a typographical error. The Complainant therefore submits that the overall impression of the designation of the Disputed Domain Names is one of being connected to the Complaint's trademark following, Wikimedia Foundation Inc.v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798. Finally, the Complainant contends that when the Complainant's trademark is compared with the Disputed Domain Names visually, they also appear confusingly similar, as a result of the common mistyping of the Complainant's mark, a practice of typo-squatting that has been described as deliberate in previous cases such as Amazon.com, Inc.v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, etc.

5.3 The Complainant argues further that the Respondent could not have possibly registered the Disputed Domain Names without being aware of the Complainant's WIKIPEDIA trademark, as the Respondent registered the Disputed Domain Names through a privacy service to hide its identity as indicated in the WhoIs printout search results. The Complainant therefore invites the Panel to presume that the Respondent is not normally known by the Disputed Domain Names following the decision in The American Automobile Association, Inc v. PrivacyProtect.org/Domain Tech Enterprises/et al., WIPO Case No. D2011-2202. The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names, as the Respondent is not a licensee of, or otherwise affiliated to, the Complainant and the Complainant has never consented to or authorized the Respondent to register any of the Disputed Domain Names. The Complainant also contends that the Respondent has neither made any preparations to use the Disputed Domain Names or names corresponding to them in connection with a bona fide offering of goods or services or legitimate noncommercial purposes. Instead, the Complainant reveals that the Respondent is using the Disputed Domain Names to direct malware to steal consumer information and or disrupt devices for commercial gain, the Complainant therefore submits that using a well known mark to deceive Internet users and to maliciously infect their computer systems is not a bona fide or fair use of the Disputed Domain Names following Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303.

5.4 On the issue of bad faith use, the Complainant's primary contention is that the Respondent reserved, used, and is holding the Disputed Domain Names willfully in bad faith and in complete disregard of the Complainant's exclusive rights. Secondly, 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 well known trademarks; as to the source, sponsorship, affiliation or endorsement of that website and or products or services on that website. Thirdly, with specific reference to the Respondent's malicious use of malware to steal consumer information or disrupt devices for commercial gain, as recounted above, the Complainant asserts that such conduct is sufficient evidence of bad faith registration of the Disputed Domain Names and bad faith use following Twitter, Inc.v. Moniker Privacy Services /accuiel des solutions inc., WIPO Case No. D2013-0062.

B. Respondent

5.5 The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to succeed, namely that:

i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii) the Respondent has registered the Disputed Domain Names and is using the Disputed Domain Names in bad faith.

A. Identical or Confusingly Similar

6.2 The Panel finds as a fact that the Complainant had well established registered and unregistered trademark rights in WIKIPEDIA both in the United States of America and abroad prior to the registration of the Disputed Domain Names. A trademark that has acquired a unique and distinctive nature proprietary to the Complainant. See in support Wikimedia Foundation Inc. v. Jamie Wells, WIPO Case No. D2010-0269. The Panel also finds without any hesitation that the Disputed Domain Names, registered on the same date, are clear typo-variants of the Complainant's registered trademark WIKIPEDIA. This is clearly a case of "typosquatting"; the Complainant's distinctive trademark is the most dominant feature of the Disputed Domain Names. The substitution of the letter "I" with the letter "O" in the first Disputed Domain Name and the omission of the letter "I" after the letter "K" in the second Disputed Domain Name does absolutely nothing to prevent a finding of confusing similarity. Morevoer, as the Complainant contends and as also held in Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, supra the overall impression of the designation of each of the Disputed Domain Names is one of being connected to the Complainant's trademark regardless of the addition or omission of letters. In the circumstances the Panel is satisfied that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.3 The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. There is clearly no evidence to demonstrate that the Respondent was licensed or authorized by the Complainant to use the Complainant's WIKIPEDIA trademark or register the Disputed Domain Names. See Wikimedia Foundation Inc. v. www.vischat.net/Rokibul Islam - (Rony), WIPO Case No. D2011-1031 where it was held that the respondent had no rights or legitimate interest in the disputed domain name <webhostingwikipedia.com> partly because the complainant did not grant a license nor authorize the respondent to make use of its WIKIPEDIA trademark. Equally, the Respondent has failed to furnish any evidence of any form of affiliation with the Complainant. Moreover, as the Complainant argues, using a well-known mark to deceive Internet users and maliciously infect their computer systems cannot be considered to be a bona fide or fair use of the Disputed Domain Names. See in this regard, Spoke Media Holdings, Inc.v. Andrey Volkov, supra where a respondent's use of a disputed domain name to perpetrate malware attack was found not to constitute rights or legitimate interest in the disputed domain name in issue. The Panel finds that the Respondent is clearly not making a legitimate noncommercial or fair use of the Disputed Domain Names and that there is no evidence that the Respondent is commonly known by the Disputed Domain Names. Accordingly, the Panel concludes that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.4 With regards to bad faith registration and use, the Panel finds that there are a number of irrefutable factors that confirm that the Respondent undoubtedly registered the Disputed Domain Names in bad faith and continued to engage in bad faith use. In the first instance, the Panel finds that the Respondent registered both Disputed Domain Names through a privacy service to hide its identity on the same date being November 27, 2005 according to the WhoIs search results at Annexes 1a and 1b of the Complaint. Secondly, the Respondent could not possibly have registered both Disputed Domain Names without being aware of the Complainant's worldwide exclusive rights in the WIKIPEDIA trademark. Thirdly the Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating confusion with the Complainant's trademark, through deliberate typo-squatting as to source, sponsorship, affiliation or endorsement of that website and or product or service on that website. Fourthly, the Respondent must have registered the Disputed Domain Names with the intention to disrupt the Complainant's business by damaging the Complainant's reputation, as Internet visitors diverted to the Respondent's website would believe that the website is related to the Complainant's business and at the same time running the risk of being infected by malware. See in this regard Twitter, Inc. v Moniker Privacy Services /accueil des solutions inc., supra. Fifthly, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the Complaint. Accordingly, the Panel is satisfied that the Complainant has established the essential requirements of paragraph 4(a)(ii) of the Policy.

7. Decision

7.1 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 <wikopedia.com> and <wikpedia.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: October 15, 2015