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. D2017-0644
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 <wikimediacommons.com> 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 amendment to the Complaint. The Complainant filed an amended Complaint on April 21, 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2017.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on June 7, 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, the Wikimedia Foundation, Inc. (“WMF”), is a nonprofit charitable organization “dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content.” WMF was founded in 2003, and today “manages 11 free knowledge projects built and maintained by a community of thousands of active volunteers, known as the ‘Wikimedia movement.’”
Projects managed by WMF include Wikimedia Commons, a shared media repository of over 35 million freely usable images, sound files, and video files.
The WIKIMEDIA mark was first used in commerce in January 2002 and first registered in September 2006, in the United States.
The Complainant registered the domain name <wikimedia.org> in March 2003. The Complainant also owns registrations for over 50 domain names that incorporate the WIKIMEDIA marks, including <wikimedia.org>, <wikimediafoundation.org>, and <commons.wikimedia.org>.
The Respondent registered the Disputed Domain Name <wikimediacommons.com> on
September 6, 2006.
5. Parties’ Contentions
As mentioned earlier, the Complainant states that the WIKIMEDIA mark was first used in commerce in January 2002, and that “On September 20, 2006, WMF obtained a registration for the mark ‘WIKIMEDIA’ from the United States Patent and Trademark Office in Classes 35, 38, 41, and 42. In subsequent years, WMF has registered a number of other marks that incorporate the WIKIMEDIA mark in its entirety.” The Complainant lists in its Amended Complaint various United States trademark registrations for WIKIMEDIA together with marks that incorporate the WIKIMEDIA mark, including WIKIMEDIA COMMONS (“Providing an online searchable database featuring images, moving images, audiovisual images, and text in the field of scientific research; Providing a website featuring technology that enables Internet users to publicly share images, moving images, and audiovisual images.”)
The Complainant states that it owns approximately 234 trademark registrations worldwide for the WIKIMEDIA trademark together with marks that incorporate the WIKIMEDIA trademark in its entirety, “including WIKIMEDIA FOUNDATION, WIKIMEDIA COMMONS, WIKIMEDIA LABS, and WIKIMEDIA INCUBATOR. Complainant owns national and International Registrations for these marks in over 80 jurisdictions around the world…”
The Complainant says that italso has extensive common law rights in the WIKIMEDIA trademark “and has acquired distinctiveness in the WIKIMEDIA trademark since its first use in 2002.”
The Complainant registered the domain name <wikimedia.org> in March 2003 and says that it also owns registrations for over 50 domain names that incorporate the WIKIMEDIA marks, including <wikimedia.org>, <wikimediafoundation.org>, and <commons.wikimedia.org>.
The Complainant states that many well-known projects managed by it include Wikimedia Commons, a shared media repository of over 35 million freely usable images, sound files, and video files; Wiktionary, an online dictionary and thesaurus; Wikivoyage, a free worldwide travel guide: “and first and foremost, Wikipedia, a free, online encyclopedia compiled, edited, and maintained by over 70,000 active contributors. WMF 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 adds that italso supports the Wikimedia movement by overseeing a network of organizations around the world, “including Wikimedia chapters, thematic organizations, and user groups. These organizations, which share WMF’s mission, support Wikimedia movement activities within a specified geographical region by collecting donations, organizing local events, promoting current Wikimedia projects and initiatives, and providing points of contact for potential partners and supporters.” The Wikimedia chapters, user groups, and thematic organizations “adopt names that clearly link them to the Wikimedia movement. In addition, Wikimedia chapters and user groups are granted the right to use WMF trademarks for work, publicity, and fundraising purposes. Currently, there are over 30 chapters, over 70 user groups, and thematic organization that span over 40 countries and 6 continents.”
The Complainant says that the Wikimedia Marks “are unique and proprietary to WMF, belong exclusively to WMF, and represent the high quality and integrity of WMF’s free-knowledge projects. WMF and its volunteers have also devoted a significant amount of time, effort, and money developing the goods and services that are offered under the Wikimedia Marks and promoting the Wikimedia Marks both in the United States and abroad.”
A result of these efforts is thatthe Wikimedia Marks “have become very valuable assets of Complainant and are extremely well-known within the United States and throughout the world” and as a result “consumers who encounter domain names incorporating the Wikimedia Marks believe the domain name will direct them to one of WMF’s websites and the goods and services that WMF provides through such websites.”
The Complainant’s contentions are that:
a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the domain name;
c) The domain name was registered and is being used in bad faith;
The Complainant requests that the Disputed Domain Name be transferred to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant makes two points.
First, that the Disputed Domain Name <wikimediacommons.com> incorporates the WIKIMEDIA mark in its entirety: “It exactly duplicates the ‘Wikimedia Commons’ wordmark, removing only the space, as required for domain names. The Disputed Domain Name takes advantage of the possibility that users will mistakenly access <wikimediacommons.com> while attempting to access the Wikimedia Commons project, located at <commons.wikimedia.org>. Given the notoriety of the Wikimedia Marks and the fact that the Disputed Domain Name represents the legal equivalent of the Wikimedia Mark, the Disputed Domain Name is likely to cause consumers to believe that the website accessed through the Disputed Domain Name is affiliated with, authorized by, or endorsed by Complainant.”
In those circumstances the Complainant submits that it has been well-established by UDRP panels “that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the mark and the disputed domain name so as to render it confusingly similar.” The Complainant refers to Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500, where the panel stated that previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
Second, the Complainant relies on a phishing point: “While the content of the Disputed Domain Name changes each time the website is accessed, at least some of the pages to which it redirects are malicious websites which trick customers into providing personal information, such as by directing them to call a toll-free number to remove a non-existent ‘virus’ from their computers.”The Complainant refers to the decision in The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093, where the Panel stated that while the content of the website is not strictly relevant to an assessment of confusing similarity, “an effective ‘phishing’ site must, of necessity, entail consumer confusion and so lend weight to a finding of confusing similarity.”
The Panel finds the Disputed Domain Name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits:
- That the Respondent has no legitimate interest in the Disputed Domain Name, and is not a licensee of or otherwise affiliated with WMF, and WMF has never authorized or otherwise condoned or consented to Respondent’s registration of the Disputed Domain Name.
- That the Complainant has never authorized or otherwise condoned or consented to Respondent’s registration of the Disputed Domain Name.
- That the Respondent is not commonly known by the Disputed Domain Name: “There is no evidence to suggest that Respondent is or has been commonly known by ‘Wikimedia’ or any variation hereof.”
- That the Respondent has not made any 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, nor has Respondent used the Disputed Domain Name for any legitimate noncommercial or fair use purpose.
- That the Respondent has not made any 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, nor has Respondent used the dispute domain name for any legitimate noncommercial or fair use purpose: “Rather, Respondent is using this domain name to spread malicious computer software (‘malware’) and solicit personal information from unsuspecting visitors to their website. The <wikimediacommons.com> domain name redirects to various websites, including legitimate websites such as Amazon.com, some pay-per-click pages, and at least one deceptive warning about a computer virus, prompting visitors to call a provided phone number to receive protection. Using a well-known mark to deceive Internet users and maliciously infect their computer systems or promote advertising is not a bona fide or fair use.”
- That the Respondent has registered the Disputed Domain Name through PrivacyProtect.Org to hide its identity: “The use of this exact same privacy service has been found to be evidence of the respondent not commonly being known by the disputed domain name in prior cases before this panel… Given Respondent’s attempt to mask his or her identity behind a privacy protection service, the Panel should presume that Respondent is not commonly known by the Disputed Domain Name.”
The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In support of its contention that the Respondent “reserved, used, and is holding the Disputed Domain Name willfully, in bad faith, and in complete disregard of Complainant’s exclusive rights to use and authorize the use of the Wikimedia Marks”,the Complainant relies upon the following matters, namely:
First, that the Respondent did not adopt the Disputed Domain Name in ignorance of the Complainant’s WIKIMEDIA marks: “Rather, evidence suggests that Respondent was well-acquainted with Complainant’s Wikimedia Marks when it registered the Disputed Domain Name in 2006. The Complainant’s first use of the Wikimedia mark in 2002, and the launch of the Wikimedia Commons project in 2005, predate Respondent’s registration of the Disputed Domain Name in 2006. Every page of the Respondents’ projects states that the website is “a Wikimedia project.” This includes Wikipedia, which was already known worldwide at the time Respondent registered the Disputed Domain Name…” The Complainant refers to Eurail Group GIE v. DOTrader, WIPO Case No. D2003-0422, where the Panel stated that: “Many UDRP panels have found that a domain name registrant’s knowledge of a Complainant’s mark at the time of registration is sufficient, in and of itself, to establish “bad faith” under the Policy.”
Second, that the Respondent’s registration and use of the Disputed Domain Name is clearly designed to misdirect consumers in search of WMF’s official website. The Respondent has registered a domain nameidentical to the name of one of the Complainant’s projects“primarily for the purpose of redirecting Internet users to third-party websites that spread malicious computer software … harvest their personal information, and/or profit from their web traffic… In doing so, Respondent prevents users who intended to visit Wikimedia Commons from accomplishing their goal, creates confusion, and tarnishes the reputation and goodwill of the Wikimedia brand for its own commercial gain. Such registration for the purpose of commercial gain through confusion with the Complainant’s marks represents bad faith.”
Additionally, the Panel notes the Complainant’s earlier reliance on the phishing allegation and the reference to the decision in the case of The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, supra. In that case the panel stated that“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith…”
The Panel also takes into account the Respondent’s use of a privacy shield to mask its identity, together with the Respondent’s failure to reply to the Complainant’s contentions.
In all the circumstances the Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of 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 <wikimediacommons.com> be transferred to the Complainant.
Anthony R. Connerty
Date: June 20, 2017