WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Shaista Asad, Threads Trading Inc / Domain Admin, Domains By Proxy LLC
Case No. D2016-2599
1. The Parties
Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, represented by Charles M. Roslof, United States of America.
Respondent is Shaista Asad, Threads Trading Inc of New Brunswick, New Jersey, United States of America / Domain Admin, Domains By Proxy LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wikipedia-backlinks.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2016, 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 December 29, 2016 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 January 3, 2017 and a second amendment to the Complaint on January 6, 2017.
The Center verified that the Complaint (together with the first and second amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 27, 2017.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 8, 2017. 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 a nonprofit based in San Francisco, California, that provides "knowledge projects" including Wikipedia, a free, on-line encyclopedia launched in 2001. Wikipedia is edited and maintained by over 60,000 active contributors, with over 40 million articles in over 290 languages, and receiving over 500 million independent visitors per month. Complainant owns trademark registrations for the mark WIKIPEDIA globally, including, in the United States where Respondent lists its address of record. Examples are U.S. Registration No. 3,040,722 (Registered January 10, 2006); U.S. Registration No. 3,505,429 (Registered September 23, 2008); and U.S. Registration No. 3,773,952 (Registered April 13, 2010); as well as International Registration No. 839132 (Registered December 16, 2004); and International Registration No. 907474 (Registered September 20, 2006).
Complainant owns the registration for the domain name <wikipedia.org> (registered January 13, 2001) which it uses to connect to a URL from which it refers users to its services. Complainant also owns several other domain name registrations incorporating the WIKIPEDIA mark including <wikipedia.us> (registered May 24, 2005).
The disputed domain name <wikipedia-backlinks.com> was registered on May 28, 2015. Respondent uses the disputed domain name to offer "backlinks" to articles posted on Complainant's "wikipedia.org" website. Respondent has no affiliation with Complainant, nor any license to use its marks.
5. Parties' Contentions
Complainant contends that: (i) the disputed domain name <wikipedia-backlinks.com> is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the recognized WIKIPEDIA mark. Complainant contends that Respondent has incorporated this mark in the disputed domain name and merely added the descriptive terms "backlinks," which refers to a service of linking to articles on Complainant's "wikipedia.org" website. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith, by offering a commercial website that trades on the good will of Complainant's trade marks.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name <wikipedia-backlinks.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark, WIKIPEDIA, and combines it with the term "-backlinks" which is descriptive of a common Internet strategy of linking one website to another, in this case, via a Wikipedia article. The Panel finds that consumers will likely assume that "wikipedia-backlinks" refers to a service of backlinks provided by Complainant.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>). In accordance with these cases, the Panel notes that the hyphen has no source identifying significance.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests" as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that respondent has been "commonly known by the domain name"; or (iii) "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".
No evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on [the] web site or location". As noted in Section 4 of this Panel's decision, Respondent is using a URL associated with the disputed domain name to offer backlinks to articles on Complainant's "wikipedia.org" website in such a way so as to misrepresent the relationship between the Respondent and the Complainant through the use of the WIKIPEDIA marks without disclosure. Respondent is thus trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain. This evidences bad faith by Respondent.
Given the level of exposure of Complainant's marks in the U.S. and around the world, and the manner of use by Respondent, the Panel finds that Respondent must have been aware of Complainant's rights at the time of registration and continuing use of the disputed domain name. See also Wikimedia Foundation, Inc. v. Domain Administrator, Whois Privacy Services Pty Ltd./Yeongju Hong and Mike Kerry, Dzone Inc., WIPO Case No. D2015-1148 (transferring <wicipedia.com>, <wikipediafoundation.com>, <wikipediia.net>, <wikipidiea.org>, and <wikipsdia.com>).
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) 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, <wikipedia-backlinks.com>, be cancelled.
Date: February 11, 2017