WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Sanjeev Pahwa, StrikeOne Ads
Case No. D2017-0651
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), represented by Charles M. Roslof, United States.
The Respondent is Sanjeev Pahwa, StrikeOne Ads of New Delhi, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wikimedipedia.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 March 31, 2017. On March 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2017, 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 proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Center extended the Response due date to May 15, 2017. The Response was filed with the Center on May 15, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 18, 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 reference resource "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 35, 38, 41 and 42;
- European Union Trade Mark 6671846 for WIKIMEDIA, registered on January 21, 2009 in Classes 9, 35, 38, 41 and 42;
- United States trademark number 3040722 for WIKIPEDIA, registered on January 10, 2006 in Class 41;
- International trademark number 839132 for WIKIPEDIA, registered on December 16, 2004 in Class 41.
The disputed domain name <wikimedipedia.com> was registered on September 12, 2016.
The disputed domain name resolves to a registrar parking page including sponsored links to a variety of goods and services.
5. Parties' Contentions
The Complainant states that it was founded in 2003 and that, as well as managing "Wikipedia", it also administers "Wikimedia Commons", a repository of over 35 million freely usable images; "Wiktionary", an online dictionary; and "Wikivoyage", an online worldwide travel guide. It states that it provides technological, legal, fundraising and administrative support for these and other projects. The Complainant exhibits detailed evidence concerning its "Wikipedia" and "Wikimedia Commons" projects 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 and 292 registrations worldwide which comprise or incorporate the mark WIKIPEDIA. The Complainant also refers to its use since 2003 of the domain names <wikimedia.org>, <wikimedia.com>, <wikipedia.org> and <wikipedia.com>.
The Complainant states that, as a result of its activities under the names and marks referred to above since 2003, including extensive activity on social media, the marks WIKIMEDIA and WIKIPEDIA have become distinctive of the Complainant, identify a single source of the services provided under the marks and represent the high quality and integrity of the Complainant's free-knowledge projects.
The Complainant submits that the disputed domain name <wikimedipedia.com> is identical or confusingly similar to trademarks in which it has rights. The Complainant refers to its WIKIMEDIA mark and submits that the disputed domain name is identical to it but for the removal of the letter "a" and the addition of the term "pedia", which also forms part of its WIKIPEDIA mark. The Complainant says that the fact that the Respondent has removed one letter and mixed the Complainant's two trademarks does not prevent the disputed domain name from being confusingly similar to the Complainant's highly distinctive trademarks. The Complainant adds that the Complainant's legitimate websites attract a large number of first-time and inexperienced Internet users, which merely adds to the likelihood of confusion caused by the disputed domain name.
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 affiliated with the Complainant and that the Complainant has never authorized or licensed the Respondent to use the disputed domain name. The Complainant submits that there is no evidence that the Respondent is, or has commonly been, known by any name corresponding to the disputed domain name. The Complainant further contends that the Respondent has neither made any preparations to use the disputed domain name in connection with any bona fide offering of goods or services or made any legitimate noncommercial or fair use of the disputed domain name. The Complainant argues that the inactivity of the disputed domain name cannot indicate any legitimate rights or interests on the part of the Respondent.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the Respondent cannot have registered the disputed domain name in ignorance of the Complainant's well known trademarks and must have been aware of those marks. The Complainant refers to the finding of a previous UDRP panel that: "… the trademark WIKIPEDIA is so widely known around the world for providing information in the field of general encyclopedic knowledge via the Internet that it is inconceivable… that the [r]espondent might have registered a domain name similar to this mark without knowing of it" (Wikimedia Foundation, Inc. v. Protected Domain Services – Customer ID: NCR1181691, WIPO Case No. D2011-0107).
The Complainant submits that the mere registration of a confusingly similar domain name constitutes bad faith because it is liable to divert Internet users looking for particular websites. The Complainant contends that this is particularly true in the case of a well-known trademark. The Complainant submits that it is irrelevant that the disputed domain name was inactive (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) because the registration of the disputed domain name was clearly intended to profit from and exploit the trademark of another.
The Complainant exhibits copies of correspondence sent by its representative to the Respondent dated October 18, 2016, November 18, 2016 and March 23, 2017 asking the Respondent to cease and desist from using the disputed domain name. The Complainant also exhibits a response from the Respondent dated March 24, 2017 requesting copyright information and stating that the disputed domain name was not in use. The Complainant submits that an unsatisfactory response of this nature is further evidence of the Respondent's bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent states that the purpose of the disputed domain name is a social website with a single phone number, providing medical services information including hospitals, ambulance services, pathology centres, air ambulances and medical tourism.
The Respondent submits that the term "wikimedipedia" can be broken up as follows: "wiki", being a Hawaiian word meaning quick or fast, "medi", being a "short form for many words" and "pedia", for which the Respondent includes an online dictionary link. The Respondent also provides a link to online commentary as to whether the Hawaiian word "wiki" can be used for a domain name.
The Respondent exhibits a single page which he states comprises "the site design". The page is headed "wikimedipedia.com" and appears to be designed as a website homepage with links to various medical services. The strapline at the top of the page reads: "Call India's only Health services number 24x7 – 981111111 – Over 1 Million listings of Hospitals, Diagnostic Labs, Medical Services". The page provides an "About Us" section, client testimonials and contact details.
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.
A. Identical or Confusingly Similar
The Complainant has established that it has longstanding registered trademark rights in the marks WIKIMEDIA and WIKIPEDIA in territories throughout the world. The Panel also accepts the Complainant's evidence that its marks, and in particular the WIKIPEDIA mark, have become widely known worldwide and are distinctive of the Complainant and its services.
The disputed domain name <wikimedipedia.com> comprises an amalgam of the Complainant's two trademarks referred to above and, in the view of the Panel, is confusingly similar to both of those trademarks. In particular, the Panel rejects any suggestion that the particular combination of the terms "wiki", "medi" and "pedia" results in the disputed domain name being distinct from the Complainant's trademarks.
In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent argues that the disputed domain name comprises three generic terms and that it was intended to be used for the purposes of a website providing information about medical services. While the Panel has reviewed the Respondent's purported website design, the supposed web page is unconvincing and the Panel is not satisfied on the evidence that there is any genuine website behind this design or that the Respondent had any genuine intention to operate any such website.
Given the widespread notoriety of the Complainant's trademarks and the nature of the disputed domain name, the Panel considers it overwhelmingly likely that the Respondent was aware of the Complainant's trademarks when he registered the disputed domain name and that he did so with the intention of taking unfair advantage of the Complainant's goodwill in those trademarks.
The Panel finds that the disputed domain name was not used until the Complainant became aware of this dispute, at which time it was used for the purpose of a parking page providing sponsored links. The Panel does not consider such use to be legitimate in circumstances where the Respondent has targeted the Complainant's trademark and goodwill for the purpose of attracting Internet users to the Respondent's website.
In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In view of the nature of the disputed domain name and the use that has been made of it, the Panel finds that the Respondent registered the disputed domain name with the Complainant's trademarks in mind and with the intention of profiting from the Complainant's goodwill in those trademarks. The Panel rejects the Respondent's explanation for the registration of the disputed domain name and finds that the disputed domain name has misleadingly been used to divert Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademarks (paragraph 4(b)(iv) of the Policy).
The Panel also finds that the Respondent's failure to make any proper response to the Complainant's repeated cease-and-desist letters is indicative of bad faith.
The Panel finds in the circumstances 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, <wikimedipedia.com>, be transferred to the Complainant.
Steven A. Maier
Date: May 22, 2017