WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc. / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2015-1978
1. The Parties
Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), internally represented.
Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Yeonju Hong, Dzone Inc. of Gwangju, Republic of Korea / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Names and Registrar
The Disputed Domain Names <wicipedia.org> and <wikiepedia.org> are registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 10, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on December 19, 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 Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Center received an informal communication from Respondent's agent on November 24, 2015. The Respondent did not file a formal response.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 16, 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
Complainant, Wikimedia Foundation, Inc., is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. Complainant was founded in 2003, and today manages eleven free knowledge projects built and maintained by a community of over 70,000 active volunteers.
Complainant is the holder of, inter alia, the following registered trademarks:
- WIKIPEDIA, word mark registered with the United States Patent and Trademark Office under No. 3,040,722 on January 10, 2006 in class 41, and first used on January 11, 2001;
- WIKIPEDIA, word mark registered as an International Trademark under No. 839132 on December 16, 2004 in class 41.
Complainant has used the WIKIPEDIA trademark since 2001 for an online encyclopedia, which today offers over 36.5 million articles in 288 languages, has over 500 million unique visitors each month, and is ranked as one of the top ten most popular web properties in the world.
On July 29, 2004, the Disputed Domain Name <wicipedia.com> was registered. On December 23, 2004, the Disputed Domain Name <wikiepedia.com> was registered. Both Disputed Domain Names have been registered using the same provider of privacy services, but with a different customer account. The Disputed Domain Name <wicipedia.com> has been used to refer to a pay-per-click parking page. The Disputed Domain Name <wikiepedia.org> has been used to refer to a page, indicating visitors that their computer has been infected with malware or prompting them to install software updates.
5. Parties' Contentions
Complainant considers the Disputed Domain Names to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that the registrants of both Disputed Domain Names have the same identity and that the close timing between the initial filing and immediate change after the filing in registrant information indicates that this is a case of cyberflight. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainant, Respondent has not used the Disputed Domain Names in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Names. Complainant claims that the Disputed Domain Names were registered and used in bad faith.
The only communication received from Respondent is a message in response to the Center's notification relating to the expiry of one of the Disputed Domain Names which originates from the registrant's email address associated to <wikiepedia.com>, which states: "We act for the registrant in legal matters. We have been advised by the client that they have no intention of renewing this domain name. If the Complainant desires to renew the domain name, the registrant has no objection."
6. Discussion and Findings
Paragraph 10 of the Rules provides that a Panel is to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. As the Complaint is brought against multiple domain names relating to apparently different registrant entities, the Panel will deal with the issue of consolidation first.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Preliminary Matter: Consolidation of Respondents
A complaint may be brought against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
In the instant case, the Disputed Domain Names are registered within a four-month interval, using the same Registrar and the same privacy service provider. The Disputed Domain Names are both a single letter variations of Complainant's mark. Such factors may indicate that the Disputed Domain Names may be subject to the common control of a single entity or individual. The Panel notes however that the Registrar-disclosed registrants behind the privacy shield are an entity located in the Republic of Korea for <wicipedia.org> and "Privacy Ltd. Disclosed Agent for YOLAPT" located in the United Kingdom for <wikiepedia.org>. Despite that the underlying registrant information was provided to Complainant, its sole consolidation argument is that "[g]iven the close timing between the [Complaint] filing and the immediate change after the [Complaint] filing of registrant information, Complainant assumes this is a case of cyberflight and the Registrants… have the same identity". The Panel does not agree that the Registrar's disclosure of the underlying registrant information upon the Center's usual verification request amounts to "cyberflight" and that the registrants, with no similarity in contact information, have the same identity.
However, the Panel notes that 1) Respondents were given the opportunity to respond but did not file a substantive response to Complainant's contentions or object to Complainant's request for consolidation, 2) the only communication received was made on behalf of "the registrant" by a counsel indicating that his client has no intention to retain (renew) one of the Disputed Domain Names upon expiry and 3) the counsel did not distinguish among the registrants of either Disputed Domain Name and failed to reply to the Center's request for clarification in this regard. In light of these present circumstances and on balance, the Panel is prepared to find consolidation noting that it would be equitable and procedurally efficient to proceed to a single decision in this case.
B. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a WIKIPEDIA trademark in which it has rights. The trademark has been registered and used in various countries.
The Disputed Domain Name <wicipedia.com> reproduces Complainant's trademark WIKIPEDIA, but replaces the letter "k" with a letter "c". The Disputed Domain Name <wikiepedia.com> reproduces Complainant's trademark WIKIPEDIA in its entirety with the mere addition of the letter "e". Neither does the replacement nor the addition of a single letter significantly affect the appearance or pronunciation of Complainant's trademarks in the Disputed Domain Names. This practice is commonly referred to as "typosquatting" and creates virtually identical and/or confusingly similar domain names to a complainant's trademark. Societe Anonyme des Galeries Lafayette v. Charlie Kalopungi / Moniker Privacy Services, Registrant , WIPO Case No. D2010-1236; Accor, SoLuxury HMC v. Lisa Katz, Domain Protection LLC / Whois Privacy Services Pty Ltd / Domain Hostmaster, WIPO Case No. D2015-1284.
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent's use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue". Policy, paragraph 4(c)(iii). First, Respondent has been making "commercial gain" by virtue of the pay-per click ("PPC") links on the page linked to the Disputed Domain Name <wicipedia.com>, and by virtue of prompting visitors to the Disputed Domain Name <wikiepedia.com> to install seemingly illegitimate software updates. That "commercial gain" appears to be based on the misleading diversion of some consumers, to the extent they navigate to the website linked to the Disputed Domain Names because they believe it to be associated with Complainant. Further, Respondent's use of the Disputed Domain Name <wicipedia.com> to resolve to a PPC parking page containing sponsored links, cannot be considered "fair" on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the name was being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 ("A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant […]. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.") Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652 ("Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner's goodwill."). However, it is not legitimate to register a domain name and use it for a PPC parking page where the domain name includes a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Company v. LaPorte Holdings, WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
In the instant case, there appears to be no dictionary meaning for the terms "wicipedia" and "wikiepedia". To the contrary, the Disputed Domain Names are confusingly similar to a well-known trademark. The value of the Disputed Domain Names to Respondent is, therefore, its value as a trademark referring to Complainant. By generating automated links at the website under the Disputed Domain Names or prompting Internet users to install (seemingly illegitimate) software updates, the Panel concludes that Respondent is taking advantage of Complainant's trademark, since Internet users looking for Complainant may land on a PPC parking page which has no link with Complainant or its trademarks, or may be led to install potentially harmful software.
Finally, Respondent did not reply to Complainant's arguments but rather indicated that it has no intention to renew one of the Disputed Domain Names. Respondent decided not to submit a formal response in this administrative proceeding. These are further indications of the absence of its rights or legitimate interests in the Disputed Domain Names.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Names.
D. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities that the Disputed Domain Names were both registered in bad faith and that they are being used in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of a domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the respondent's website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.
In the present case, Respondent is using the Disputed Domain Names to publish a website advertising third party websites or to incite Internet users to install potentially harmful software. In addition, Respondent has failed to respond to the Complaint. Furthermore, given the notoriety of Complainant's trademark, it is inconceivable to this Panel that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Names.
Finally, the Panel holds that the addition of the letter "e" to Complainant's mark and the replacement of the letter "k" by the letter "c" in the Disputed Domain Names are forms of typosquatting which is further evidence of bad faith. Accor, SoLuxury HMC v. Lisa Katz, Domain Protection LLC / Whois Privacy Services Pty Ltd / Domain Hostmaster, WIPO Case No. D2015-1284; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951.
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed 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 Disputed Domain Names, <wicipedia.org> and <wikiepedia.org>, be transferred to the Complainant.
Flip Jan Claude Petillion
Date: December 29, 2015