WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Privacy Protect, Privacy Protection / Email Marketing Systems Inc
Case No. D2015-1810
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, internally represented.
The Respondent is Privacy Protect, Privacy Protection of United States of America / Email Marketing Systems Inc of St. Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <wikipidia.com> 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 October 10, 2015. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 October 13, 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 October 17, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2015.
The Center appointed Alistair Payne as the sole panelist in this matter on November 27, 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 that fosters the growth, development, and distribution of free, multilingual, educational content. The Wikipedia free, on-line encyclopaedia compiled, edited, and maintained by over 70,000 active contributors was founded in 2001 and is operated by the Complainant.
Wikipedia is the oldest and largest WMF project. Since its commencement Wikipedia offers over 33.5 million articles in 288 languages, has over 500 million unique visitors each month, and is consistently ranked as one of the top ten most popular web properties in the world.
The Complainant owns numerous registered trade mark rights worldwide including United States registration number 3,040,722 registered on October 1, 2006 for the WIKIPEDIA word mark. Since 2001 the Complainant has owned the domain name <wikipedia.org> from which it operates its website for its well reputed on-line encyclopaedia. It also owns numerous other domain names incorporating variants of its WIKIPEDIA word mark.
The Respondent registered the disputed domain name on April 7, 2004.
5. Parties' Contentions
The Complainant submits that it owns registered trade mark rights for its WIKIPEDIA mark as noted above and that the first use of its mark was in 2001. It says further that it owns various domain names incorporating the WIKIPEDIA mark such as <wikipedia.org>, <wikipedia.us>, <wikipeddia.org> and <wikipediia.org>, and that the WIKIPEDIA family of marks is unique and proprietary to the Complainant.
It says that the disputed domain name wholly incorporates this word mark except for substituting a single letter, namely an "e" for an "i". The Complainant submits that this difference makes the disputed domain name virtually indistinguishable in sound and appearance from the Complainant's mark and amounts to a classic example of typo-squatting. Accordingly, says the Complainant, the disputed domain name is confusingly similar to its mark.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent is not a licensee of or otherwise affiliated with the Complainant and that the Complainant has never authorised or consented to the Respondent's registration of the disputed domain name. The Complainant says further that the Respondent is not commonly known by the disputed domain name and that it has sought to shield its real identity behind a privacy screen. The Respondent also submits that the degree of similarity between the disputed domain name and its mark and the way that only one letter has been changed points to typo squatting which previous UDRP panels have found not to amount to a legitimate interest.
The Complainant also says that the Respondent has neither made preparations to use the disputed domain name or any name corresponding with it in connection with a bona fide offering of goods or services or for legitimate noncommercial purposes. The bottom line, says the Complainant, is that the Respondent is using the disputed domain name to spread malicious computer software ("malware"). A visit to the website at the disputed domain name according to the Complainant displays a blue "error" screen with a message indicating that a "Trojan Virus" was found on the user's system, offering a "TOLL-FREE" phone number for users to call to resolve the problem. The Complainant says that based on past UDRP decisions the use of a well known mark to deceive Internet users and maliciously infect their computer systems or promote advertising is not a bona fide or fair use.
By using the disputed domain name says the Complainant, 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 marks in terms of paragraph 4(b)(iv) of the Policy. It submits that using a well-known mark to maliciously divert Internet users is not a bona fide use and constitutes bad faith and that malware is often used to steal consumer information or to disrupt their devices for commercial gain. In any event, submits the Complainant, the Respondent's conduct in diverting Internet users in this manner amounts to bad faith whether it is for strictly commercial purposes or not.
The Complainant submits that the Respondent cannot in any event claim that it was unfamiliar with Wikipedia when it registered the disputed domain name in 2004. By that time, Wikipedia had existed for three years and according to the Complainant was well-known online. It was mentioned in high-profile news publications such as USA Today and was considered one of the best reference resources on the web and by that time had already gained a reputation as a trustworthy reference source. Therefore says the Complainant, the very strong inference is that the Respondent was well aware of the Complainant's mark and website when it registered the disputed domain name and that it acted in opportunistic bad faith in registering the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for the WIKIPEDIA word mark under United States registration number 3,040,722 registered on October 1, 2006. The Panel finds that the WIKIPEDIA mark is an unusual coined term with a reasonably high degree of distinctiveness. The disputed domain name differs from the Complainant's mark only by the substitution of a single letter, namely an "e" for an "i" which alteration does not distinguish the disputed domain name from the Complainant's mark. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's registered trade mark and that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent is not a licensee of or otherwise affiliated with the Complainant, that it has never authorised or consented to the Respondent's registration of the disputed domain name, that the Respondent is not commonly known by the disputed domain name and that it has sought to shield its real identity behind a privacy screen. In addition the Complainant submits that the disputed domain name only differs from the Complainant's mark by one letter and resolves to a website from which the Respondent is spreading malware. In summary, the Complainant says that the Respondent is "typosquatting" and is using the disputed domain name for fraudulent purposes and this is not bona fide conduct.
These are serious allegations and the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of any other evidence to the contrary, it is up to the Respondent to rebut these assertions but it has failed to do so. In these circumstances and in addition for the reasons set out under Part C below, the Panel finds that the Complainant has made out its case under this element of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant's United States registered trade mark for WIKIPEDIA was registered in 2006 but according to the registration certificate was first used in 2001. This was three years before the Respondent registered the disputed domain name. Considering the Complainant's use of its mark for its Internet based free, on-line encyclopaedia, the coined and distinctive nature of the mark and the evidence that even early on in its development the Complainant's WIKIPEDIA website at "www.wikipedia.org" and associated domain names had developed a considerable following, the Panel infers that the Respondent must have been aware of the Complainant's mark when it registered the disputed domain name in 2004.
It is apparent to the Panel that this is a case of typo-squatting. Internet users seeking to type in the Complainant's domain name could easily be confused and end up typing the disputed domain name which wholly incorporates but misspells the Complainant's mark by one letter. As a result they could be unwittingly diverted to the Respondent's website.
According to the Complainant, at the date of the Complaint the Respondent's website featured a blue "error" screen with a message indicating that a "Trojan Virus" was found on the user's system, offering a "TOLL-FREE" phone number for users to call to resolve the problem. The Panel notes that the website currently features free software download offers. Based on the Complainant's submission, the original form of the Respondent's website and the current offer to download software, it seems most likely on the balance of probabilities that through the site the Respondent is either seeking to invade the Internet user's system or somehow to inveigle fraudulently a commercial gain from the Internet user who is unwittingly diverted to the website. Diverting Internet users and using the disputed domain name for a fraudulent purpose is clearly use in bad faith and this is so whether the use amounts to a commercial use, or not, in terms of paragraph 4(b) of the Policy.
As a result, the Panel finds that the Respondent has both registered and is using the disputed domain name in bad faith and the Complaint succeeds under this element 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 name <wikipidia.com> be transferred to the Complainant.
Date: December 8, 2015