WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. RespectedResponse.org / Email Marketing Systems Inc
Case No. D2015-1820
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), represented internally.
The Respondent is RespectedResponse.org of Cheyenne, Wyoming, United States / Email Marketing Systems Inc of St Johns, Antigua and Barbuda.
2. The Domain Name and Registrar
The disputed domain name <wikepedia.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 October 13, 2015. On October 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 requested and received from the Registrar on November 20, 2015 further clarification regarding the registrant’s contact information. The Center sent an email communication to the Complainant on November 25, 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 November 30, 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 proceedings commenced on December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2015.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 8, 2016. 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
According to the Complainant it is a non-profit charitable organization dedicated to encouraging the growth, development and distribution of free multi-lingual educational content. The Complainant was founded in 2003 and today manages 16 free knowledge projects built and maintained by a community of over 70,000 active volunteers. The many well-known projects managed by the Complainant include Wikimedia Commons, a shared media repository of almost 25 million freely usable images, sound files and video files, Wiktionary which is an online dictionary and thesaurus, Wikivoyage which is free worldwide travel guide, and most importantly Wikipedia, a free online encyclopaedia compiled, edited and maintained by over 70,000 active contributors. The Complainant provides technological, legal, fundraising and administrative support for these projects which together represent the 10th most visited web property in the world.
The Complainant primarily fulfils its administrative and supportive role through a network of chapters – independent organisations that share the Complainant’s mission and support its activities within a specified geographical region. These chapters collect donations, organise local events and projects, promote and support current projects and initiatives of the Complainant and provide points of contact for potential partners and supporters. They adopt names that clearly link them to the Complainant and they are granted the right to use the Complainant’s trademarks for work, publicity and fundraising purposes. Currently there are 41 chapters that exist on each habitable continent of the world and an additional 28 chapters are under discussion. Extracts from the Complainant’s official or chapter websites are set out at Annex 4 to the Complaint.
Wikipedia is the oldest and largest project of the Complainant. Since it’s founding in 2001 it has grown to become a trusted well-regarded cultural institution and today offers over 35,000,000 articles in 228 languages, has over 500,000,000 unique visitors each month and is consistently ranked as one of the top 10 most popular web properties in the world. Every day visitors from around the world collectively make tens of thousands of edits and create thousands of new articles to augment the knowledge held by Wikipedia. Their efforts make Wikipedia one of the most comprehensive and widely used reference works ever compiled. Sample pages from Wikipedia including statistics regarding its usage are set out at Annex 5 to the Complaint.
The Complainant has obtained registration of the mark WIKIPEDIA from inter alia the United States Patent and Trademark Office and has used the mark since January 2001. Details of some of the Complainant’s registrations in the United States and internationally are set out in detail in the Complaint. Moreover, copies of the registration certificates evidencing ownership of the marks referred to in the Complaint are set out at Annex 6 to the Complaint. In summary the Complainant owns approximately 148 trademark registrations worldwide for the mark WIKIPEDIA. It also has extensive common law rights and has acquired distinctness in the mark WIKIPEDIA since first use in 2001.
The Complainant registered the domain name <wikipedia.org> on January 13, 2001. It also owns registrations for multiple domain names that incorporate the WIKIPEDIA marks. Copies of these domain name registrations are set out at Annex 7 to the Complaint.
In the absence of a Response there is no evidence from the Respondent. The Panel therefore proceeds to determine the Complaint upon the basis of the evidence submitted by the Complainant only and which it accepts to be true.
5. Parties Contentions
The Complainant submits:
1. The disputed domain name <wikepedia.org> is confusingly similar to the trademark WIKIPEDIA in which the Complainant has exclusive rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name. It is not a licensee or otherwise affiliated with the Complainant. The Complainant has never authorised or otherwise condoned or consented to the registration of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith for the purpose of the Respondent intentionally attempting to attract, for commercial gain, Internet users to its website under the disputed domain name by creating a likelihood of confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s submissions.
6. Discussion and findings
A. Identical or Confusingly Similar
The Panel, based upon the evidence referred to above, is satisfied that the Complainant has worldwide trademark rights in the mark WIKIPEDIA.
The Complainant submits that the disputed domain name <wikepedia.org> is both visually and phonetically similar to the mark WIKIPEDIA so that it causes confusion. It differs only by the replacement of a single letter; an “e” has been inserted in place of the second “i”.
The Complainant relies upon the fact that several previous UDRP panels have found that disputed domain names based on slight variations of the mark WIKIPEDIA are confusingly similar. It relies for example upon Wikimedia Foundation Inc v. Moniker Privacy Services / Domain Admin, Frontline Media LLC, WIPO Case No. D2011-0106 where the panel found that the addition of the second “k” in the disputed domain name <wikkipedia.org> did not “diminish the confusing similarity of the disputed domain names to the Complainant’s mark in terms of sight, sound and overall impression”. In the present case such an error is especially likely because of the aural similarity between the two.
The Panel accepts this argument and in the absence of a Response the Panel agrees with the Complainant’s submissions on this element and finds that the disputed domain name is confusingly similar to the mark WIKIPEDIA.
B. Rights or Legitimate Interests
The Complainant explains that the Respondent has no rights or legitimate interests in the disputed domain name. It is not a licensee of or otherwise affiliated with the Complainant. Moreover the Complainant has never authorised, condoned or consented to the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name and could have registered it without prior awareness of the mark WIKIPEDIA.
The Respondent has not used or made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services or legitimate noncommercial purposes. To the contrary the Respondent, according to the Complainant’s unrebutted contentions, is using the disputed domain name in connection with malicious computer software or “malware”. As of October 6, 2015 the Complainant found upon attempting to visit the site to which the disputed domain name resolves that it redirected to <dollarstock.net>. Visitors are greeted by a pop-up message warning them that their computer has crashed or been infected by a virus and advising them to seek help by calling a specified toll-free number. Screenshots of these messages are set out at Annex 8 to the Complaint. If these pop-up advertisements are accurate, then the website to which the disputed domain name resolves infects visitors’ computers with malware. If they are not, then the website to which the disputed domain name resolves contains deceptive pop-up advertising. Neither alternative gives rise to a right or legitimate interest in the disputed domain name.
In these circumstances the Panel finds that the Complainant, in the absence of evidence to the contrary, has shown that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant alleges that the disputed domain name is an example of “typo squatting” which “ensnares users” who type an “e” instead of the second “i” while attempting to visit the Wikipedia site. This in itself is evidence of bad faith registration of a domain name. The Complainant relies upon an earlier UDRP Decision in Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2016-0517 as authority for this proposition.
The Complainant also relies on the fact that the Respondent is using the disputed domain name in connection with the presence of malicious computer software or “malware” as referred to in section B above. The Respondent is using the goodwill and reputation established by the Complainant in the mark WIKIPEDIA to draw Internet users into a “scam”. The Complainant submits that this is evidence of “opportunistic bad faith” which arises when a domain name is so obviously connected with a complainant that the very use of the domain name by a registrant with no connection to the complainant suggests bad faith.
In the absence of any evidence to the contrary from the Respondent the Panel accepts these submissions and finds that the Respondent has registered and is using the disputed domain name (which it registered with knowledge of the Complainant’s marks) 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 disputed domain name <wikepedia.org> be transferred to the Complainant.
Clive Duncan Thorne
Date: January 26, 2016