WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikia, Inc. v. PrivacyGuardian.org / Chris Goodwin
Case No. D2015-2100
1. The Parties
Complainant is Wikia, Inc. of San Francisco, California, United States of America ("United States"), internally represented.
Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States / Chris Goodwin of Sacramento, California, United States.
2. The Domain Name and Registrar
The disputed domain name <wikiaglobal.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2015. On November 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 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 Complainant on November 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 24, 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 proceeding commenced on November 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 18, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 30, 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 is the owner of registration for the word service mark WIKIA on the principal register of the United States Patent and Trademark Office (USPTO), registration number 3246539, registration dated May 29, 2007, in international class 42, covering "Internet services, namely, hosting of digital content on the Internet which may be created and edited by online community users."
Complainant owns and operates a website at "www.wikia.com" which, according to Complainant, is ranked by Quantcast as one of the 20 most visited websites in the United States, attracting over 2 billion global monthly page views. The Wikia website makes collaborative content available online.
According to the Registrar's verification, Respondent is registrant of the disputed domain name.
Respondent has used the disputed domain name to redirect Internet users to a substantially similar reproduction of the content of Complainant's website. According to Complainant, in addition to diverting Internet traffic, Respondent's website is "replete with malware".
By email and courier express mail dated August 26, 2015, Complainant through its counsel sent a cease and desist demand to Respondent. According to Complainant, it did not receive any response.
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it owns rights in the trademark WIKIA as evidenced by registration at the USPTO and by use in commerce on the Internet.
Complainant contends that the disputed domain name is confusingly similar to its trademark. Complainant argues that addition of the term "global" to its trademark does not serve to distinguish the disputed domain name from the standpoint of the Policy.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (a) there is no evidence of Respondent's use of the disputed domain name in connection with a bona fide offering of goods or services; (b) Respondent has simply copied Complainant's content onto Respondent's website, and is tarnishing the trademark of Complainant as, inter alia, Respondent's website is replete with malware; (c) Respondent is violating Complainant's rights under the United States Lanham Act, the United States Copyright Act and similar international laws by its actions, and; (d) Respondent does not have registered trademark rights in WIKIA or "Wikiaglobal".
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (a) Respondent is intentionally, for commercial gain, attempting to attract Internet users to Respondent's website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation or endorsement; (b) Respondent is violating the terms and conditions of its Registration Agreement that require it to represent and warrant that it will not use the disputed domain name to infringe upon the legal rights of third parties.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent by email and express courier. According to the records of the express courier, the information provided in Respondent's registration did not correspond to a valid address or telephone number. However, the Complaint was successfully delivered by the express courier to the privacy service used by Respondent. The Center followed the procedures for notification established by the Rules. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the service mark WIKIA, including by registration at the USPTO and by use in commerce on the Internet (see Factual Background, supra). Respondent has not challenged Complainant's evidence of ownership. The Panel determines that Complainant owns rights in the service mark WIKIA in the United States.
The disputed domain name directly incorporates Complainant's service mark, and adds the term "global". Addition of the common geographic description "global" does not serve to differentiate or distinguish the disputed domain name from Complainant's service mark from the standpoint of the Policy.1
The Panel determines that Complainant owns rights in the service mark WIKIA and that the disputed domain name is confusingly similar to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not presented evidence that might rebut the prima facie showing by Complainant.
The evidence before the Panel does not otherwise suggest rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These include that: "(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
Respondent has used the disputed domain name, which is confusingly similar to Complainant's service mark, to direct Internet users to Respondent's website, which appears to substantially replicate Complainant's website content. Complainant has indicated that the content on Respondent's website includes malware. The manner in which Respondent commercially gains from the incorporation of such malicious content on a replica website is not clear. The Panel is satisfied that such activity provides some commercial advantage to Respondent and/or is otherwise in bad faith, bearing in mind that the list of bad faith elements in paragraph 4(b) of the Policy is illustrative, not exhaustive. By the unauthorized copying of the content, including the service mark and copyrighted elements of Complainant's website, Respondent is taking unfair advantage of Complainant and is acting in manifest bad faith.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 <wikiaglobal.com> be transferred to Complainant.
Frederick M. Abbott
Date: January 6, 2016
1 In the present circumstances, it is not necessary to assess the generic Top-Level Domain ".com".