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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Walter Gerbert

Case No. D2016-1346

1. The Parties

The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), represented internally.

The Respondent is Walter Gerbert of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <nlwikipedia.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2016, 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.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2016.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 11, 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, Wikimedia Foundation, Inc. is a nonprofit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual educational content. The Complainant was founded in 2003 and today manages 11 free knowledge projects, built and maintained by a community of over 77,000 active volunteers. The many well-known projects managed by the Complainant include Wikimedia Commons, a shared media repository of almost 30 million freely usable images, sound files and video files; Wiktionary which is an online dictionary and thesaurus; Wikivoyage which is a free worldwide travel guide and most importantly Wikipedia, a free online encyclopedia 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 one of the most-visited web properties in the world.

The Complainant owns numerous WIKIPEDIA trademark registrations in the world. The Complainant owns in particular the following United States trademark registrations for the mark WIKIPEDIA, registered with the United States Patent and Trademark Office:

- WIKIPEDIA, registered under No. 3,040,722 on January 10, 2006 in class 41 and first used on January 11, 2001.

- WIKIPEDIA, registered under No. 3,505,429 on September 23, 2008 in classes 35, 38 and 41.

- WIKIPEDIA, registered under No. 4,853,585 on November 17, 2015 in classes 9, 16, 18, 25, 35, 38, 41 and 42.

In addition, the Complainant also owns in particular the following International Registrations for the mark WIKIPEDIA:

- WIKIPEDIA, designating the European Union and Japan, registered under No. 839,132 on December 16, 2004 in class 41.

- WIKIPEDIA, designating 80 countries, registered under No. 907,474 on September 20, 2006 in classes 9, 35, 38, 41 and 42.

Moreover, copies of the registration certificates highlighting ownership of the marks referred to by the Complaint, are set out in the annexes to the Complaint. In addition to the above, the Complainant owns approximately 292 trademark registrations worldwide for the WIKIPEDIA trademark, the foreign equivalents thereof, has extensive common law rights and has aquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001.

The Complainant registered the domain name <wikipedia.org> on January 13, 2001, and also owns various registrations for domain names that incorporate its registered trademark WIKIPEDIA, including <dewikipedia.org>, <eswikipedia.org> and <frwikipedia.org>.

The disputed domain name <nlwikipedia.org> was registered by the Respondent on April 2, 2016, long after the Complainant’s first use and registration of the trademark WIKIPEDIA.

5. Parties’ Contentions

A. Complainant

The Complainant maintains the following:

1. The disputed domain name is confusingly similar to the WIKIPEDIA marks in which the Complainant has exclusive trademark rights. The Wikipedia marks identify a single source – the Complainant Wikimedia Foundation, Inc. – and its services.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is not a licensee nor is it otherwise affiliated with the Complainant. The Complainant has never authorised or otherwise condoned nor 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 purposes of the Respondent to intentionally attempt to redirect Internet users to pages with malware or spyware.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has worldwide trademark rights in the mark WIKIPEDIA.

As indicated in several other UDRP decisions, the Complainant’s trademark can be considered as a well‑known mark. (See Wikimedia Foundation, Inc. v. Michael Goldstein, WIPO Case No. D2014-0921). The WIKIPEDIA trademarks have come to serve as unique identifiers of goods and services emanating from the Complainant.

The Complainant submits that the disputed domain name <nlwikipedia.org> is confusingly similar to the Complainant’s WIKIPEDIA mark.

The disputed domain name is confusingly similar to the Complainant’s prior rights because the disputed domain name incorporates the entirety of the Complainant’s WIKIPEDIA trademark and merely adds a geographical indication (i.e., “nl”) and the generic Top-Level-Domain (“gTLD”) “.org”.

Furthermore, the addition of two letters “nl” at the beginning of the disputed domain name, which is a common abbreviation for the Netherlands (the ISO country code for the Netherlands), is insufficient to distinguish the disputed domain name from the Complainant’s trademark.

The Panel accordingly finds that the disputed domain name is confusingly similar to the WIKIPEDIA trademark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie under paragraph 4(a)(ii), the burden of production to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation shifts to the Respondent under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the WIKIPEDIA trademark or register the disputed domain name. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “nlwikipedia”.

Furthermore, the Respondent has failed to file a formal response, which may suggest that the Respondent lacks rights or legitimates interests in the disputed domain name. Actually, the Respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name. (See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221).

Furthermore, the Panel finds that there is no evidence that the Respondent has neither registered the disputed domain name in connection with a bona fide offering of goods or services nor used the disputed domain name for legitimate noncommercial or fair use purposes. Rather, the Complainant points out the Respondent is using <nlwikipedia.org> to disseminate malicious computer software or malware. Use of a well-known mark to deceive Internet users and maliciously infect their computer system is not a bona fide use of the mark. (See Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., WIPO Case No. D2015-2140).

In taking into account the above circumstances, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy and 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 states that by using the disputed domain name, the Respondent has intentionally attempted to redirect Internet users to pages with malware or spyware by creating a likelihood of confusion with the Complainant’s well-known mark. The Complainant points out that the use of the mark to maliciously redirect users is not a bona fide use.

The Panel finds that the Respondent likely chose the disputed domain name with full knowledge of the Complainant’s rights in the WIKIPEDIA trademark. Registration of a domain name that is a confusingly similar variant of the Complainant’s trademark suggests opportunistic bad faith.

Furthermore, the dissemination of malware through a predictable typo-variant is often used to steal consumer information for commercial gain and this is evidence of bad faith. (See Wikimedia Foundation, Inc. v. Yangmin Fang, Jing Internet Holdings Ltd.,supra).

The Complainant explains that though the Respondent was given a full business week to comply, the Respondent failed to cease the infringing use of the Complainant’s registered marks. The Complainant finds that the failure to respond to a cease and desist letter further highlights bad faith. The Panel agrees.

The Panel therefore concludes that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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, <nlwikipedia.org> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: August 23, 2016

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