WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2017-0640
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), internally represented.
The Respondent is Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name, <wikmedia.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 March 29, 2017. On March 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2017, 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 the Complainant on April 19, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 20, 2017.
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 April 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 19, 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
The Complainant is non-profit charitable organization. It manages educational and knowledge service projects including the online encyclopedia "Wikipedia".
The Complainant is the owner of trademark registrations including the following:
- United States trademark number 3324924 for WIKIMEDIA registered on October 30, 2007 in Classes 38, 41 and 42
- European Union Trade Mark 6671846 for WIKIMEDIA registered on January 21, 2009 in Classes 9, 35, 38, 41 and 42
The disputed domain name, <wikmedia.org>, was registered on November 16, 2005.
According to screen shots exhibited by the Complainant, the disputed domain name has been used to resolve to a website containing links to educational and other services.
5. Parties' Contentions
The Complainant states that it was founded in 2003 and that it manages 11 free knowledge projects known as the "Wikimedia movement". As well as "Wikipedia", these projects include "Wikimedia Commons", a repository of over 35 million freely usable images; "Wiktionary", an online dictionary; and "Wikivoyage", an online worldwide travel guide. The Complainant states that it provides technological, legal, fundraising and administrative support for these and other projects. The Complainant exhibits detailed evidence concerning itself and its projects including "Wikimedia Commons", including online usage information.
The Complainant refers to its trademark registrations and provides evidence of a total of 234 registrations worldwide which comprise or incorporate the mark WIKIMEDIA. The Complainant states that its mark WIKIMEDIA was first used in commerce in 2002 and that it has used the domain names <wikimedia.org> and <wikimedia.com> since 2003.
The Complainant states that, as a result of its activities under the name and mark referred to above since 2002, including extensive activity on social media, the mark WIKIMEDIA has become distinctive of the Complainant, identifies a single source of the services provided under that mark and represents the high quality and integrity of the Complainant's free knowledge projects. The Complainant further submits that the mark is well-known throughout the world and is a valuable asset of the Complainant.
The Complainant submits that the disputed domain name <wikmedia.org> is identical or confusingly similar to a trademark in which it has rights. The Complainant states that the disputed domain name is identical to its trademark WIKIMEDIA but for the omission of one letter "i" and suggests that this is intended to take advantage of Internet users who make a predictable typographical error in trying to access the Complainant's own website.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not a licensee of the Complainant nor otherwise affiliated with it. It states that it has never authorized or licensed the Respondent to use its trademark and that the Respondent is not commonly known by the disputed domain name. The Complainant also submits that the Respondent has neither made preparations to use the disputed domain name in connection with any bona fide offering of goods or services, nor made any legitimate noncommercial or fair use of the disputed domain name. Instead, the Complainant submits that the Respondent has registered the disputed domain name in order to capitalize on the goodwill in the Complainant's well-known trademark.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant states that it has used the mark WIKIMEDIA in commerce since 2002 and the <wikimedia.org> domain since 2003 and the Respondent must therefore be presumed to have known of its trademark when it registered the disputed domain name in 2005. The Complainant submits that the Respondent is trading on the value of the Complainant's trademark to attract Internet users who misspell the Complainant's name and is using the disputed domain name to redirect to third-party websites that have no apparent relationship to the Complainant or its trademark. The Complainant invites the Panel to infer that the Respondent does so for financial reward and alleges in particular that the Respondent has created a likelihood of confusion between the disputed domain name and the Complainant's trademark within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant requests a transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, it is still incumbent on the Complainant to show that each of the above elements is present.
A. Identical or Confusingly Similar
The Complainant has established extensive and longstanding registered trademark rights in the mark WIKIMEDIA. The Panel also accepts the Complainant's evidence that its mark WIKIMEDIA has become widely known worldwide. The disputed domain name <wikmedia.com> differs from the Complainant's trademark only by the omission of a letter "i" and the Panel finds in the circumstances that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant's submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has failed to provide any reasonable explanation for its registration and use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name is inherently misleading and can conceive of no purpose to the Respondent's registration and use of the disputed domain name other than to take unfair advantage of the Complainant's goodwill by way of "typosquatting", i.e. seeking to take advantage of a predictable typing error on the part of Internet users. The Panel further finds that the Respondent has used the disputed domain name for the purposes of a website containing links to other websites and accepts the Complainant's submission that these links are likely to be revenue generating. The Panel therefore concludes that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain name has been registered and is 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 name, <wikmedia.org>, be transferred to the Complainant.
Steven A. Maier
Date: May 25, 2017