WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Gwinel Madisse
Case No. D2017-1250
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States” or “US”), internally represented.
The Respondent is Gwinel Madisse of Bristol, United Kingdom of Great Britain and Northern Ireland, self represented.
2. The Domain Names and Registrar
The disputed domain names <wikinewz.com> and <wikipedia-news.com> are registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 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 Respondent’s 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 July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Center received two informal email communications form the Respondent on July 10, 2017. The Respondent did not file a formal Response.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 3, 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 the registered owner of the trademarks WIKINEWS and WIKIPEDIA in a large number of jurisdictions, including WIKINEWS, United States trademark Registration No. 3,087,280, registered on May 2, 2006, for services in Class 41; WIKINEWS, German trademark Registration No. 30574083, registered on January 31, 2006, for services in Classes 38 and 41; WIKINEWS, European Union trademark Registration No. 12847901, registered on September 30, 2014 for services in Classes 41 and 42; WIKIPEDIA, United States trademark Registration No. 3,040,722, registered on January 10, 2006, for services in Class 41; and WIKIPEDIA, European Union trademark Registration No. 12847836, registered on December 4, 2014, for goods and services in Classes 9, 16, 18, 25, 35, 36, 38, 41 and 42
The disputed domain name <wikinewz.com> was registered on August 4, 2016, and the disputed domain name <wikipedia-news.com> was registered on April 1, 2017.
The Complainant is the Wikimedia Foundation, Inc., owner of the WIKIPEDIA and WIKINEWS registered trademarks, a nonprofit charitable organization founded in 2003 dedicated to encouraging the growth, development, and distribution of free educational content. It manages projects such as Wikipedia, a free, online encyclopedia compiled, edited, and maintained by volunteer contributors, and Wikinews, a free-content news source. The Complainant did not authorize the use of its registered trademarks by the Respondent. The <wikinewz.com> disputed domain name redirects to the website “www.wooomails.com” featuring what appear to be news articles alongside third-party advertising, whereas the <wikipedia-news.com> disputed domain name is currently inactive.
The Respondent did not file a response but did send two emails to the Center in which it rejected the Complainant’s claim for transfer of the disputed domain names but without making any substantive arguments addressing elements of the Policy.
5. Parties’ Contentions
The Complainant is a large nonprofit organization founded in 2003 that encourages the development and distribution of free information and educational content. It achieves this object by way of contributions by volunteers to its Wikipedia and Wikinews websites. The Complainant has established and maintains a network of organizations and contributors around the world, in over 30 chapters and over 70 user groups. The Complainant describes Wikinews as a collaborative free global news source. It was launched in 2004, and currently offers over 200,000 articles in over 30 different languages via the “www.wikinews.org” website, which receives approximately 2 million views per month.
The Complainant asserts that Wikipedia, since its founding in 2001, has grown to become a trusted and beloved cultural institution offering over 43 million articles in over 290 languages. It is said to have about 500 million unique visitors each month, with visitors from around the world collectively making tens of thousands of edits and creating thousands of new articles every day.
The Complainant is the registered owner of the trademarks WIKIPEDIA and WIKINEWS in numerous jurisdictions, in relation to goods and services in multiple classes, including Classes 41 and 42. The Complainant asserts that the relevant marks are unique and belong exclusively to the Complainant, with considerable goodwill vesting in them around the world. They are valuable assets of the Complainant and because, as the Complainant asserts, they are well-known marks, consumers who encounter the websites to which they resolve will expect to be directed to one of the Complainant’s websites.
According to the Complainant, the disputed domain names are confusingly similar to its respective registered trademarks. The disputed domain name <wikinewz.com> incorporates the WIKINEWS mark in its entirety, according to the Complainant, with the exception of the last letter. Such incorporation is said to generate sufficient proximity between the mark and the disputed domain name to render it confusingly similar. Given the notoriety of the WIKINEWS mark this disputed domain name is likely to cause consumers to believe that the website accessed through it is affiliated with, authorized, or endorsed by the Complainant. In relation to the <wikipedia-news.com> disputed domain name, the Complainant contends that the addition of the generic term “news” increases rather than mitigates the risk of confusion with the WIKIPEDIA trademark. The added term is descriptive of the Complainant’s goods and services.
The Complainant asserts that the Respondent is not a licensee of or otherwise affiliated with it, nor has the Respondent ever received its consent to register either of the disputed domain names. The Respondent is not a licensee of the Complainant nor in any other way associated with it. According to the Complainant, there is no evidence to suggest that the Respondent is or has been commonly known by the disputed domain names, “Wikinews”, “Wikipedia”, or any variation thereof, including “Wikinewz”. The <wikinewz.com> disputed domain name is a typical example of typo-squatting, the Respondent hoping to capitalize on misspellings of its trademark in search engines. This activity does not generate rights or legitimate interests in the Respondent. The <wikinewz.com> disputed domain name redirects to a site which the Complainant contends is intended to deceive Internet users into clicking on unrelated and potentially malicious commercial advertisements.
The <wikipedia-news.com> disputed domain name is currently inactive, which according to the Complainant indicates that the Respondent is not using it in connection with the bona fide offering of any goods or services.
According to the Complainant it is inconceivable that the Respondent registered the disputed domain names in ignorance of the Complainant’s marks which were registered more than a decade earlier. The actual or presumed knowledge of the Respondent is sufficient to establish that the disputed domain names were appropriated in bad faith, according to the Complainant. By using the <wikinewz.com> disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location. The Complainant asserts that when visitors enter the website to which the <wikinewz.com> disputed domain name resolves, they are redirected to a website at the domain name <wooomails.com>, a newsfeed with headlines that are pulled directly from RT, E Online, BBC, and other news outlets. Clicking on headlines leads to article text from the news outlets and advertisements from sponsors like Target, Virgin America, and Macy’s. According to the Complainant it may be inferred that Internetusers are being redirected to other websites for a fee. The same website also advertises website traffic-increasing services and premium access to its own platform. These activities cast an ill light upon the marks by associating them with the Respondent’s commercial offerings. The Respondent cannot claim that this has not been their intention, asserts the Complainant. The <wikipedia-news.com> disputed domain name resolves to a “404 Not Found” message.
The Respondent did not provide any substantive reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Neither of the disputed domain names is identical to the Complainant’s registered trademarks WIKIPEDIA and WIKINEWS. However, the <wikinewz.com> disputed domain name is a typical example of typo-squatting, with only one letter having been substituted. The difference between the registered trademark in this case and the disputed domain name is very small, as the letters “S” and “Z” look and sound similar. The change does not affect meaning in any way. Therefore the <wikinewz.com> disputed domain name is confusingly similar to the WIKINEWS trademark of the Complainant. In the case of the <wikipedia-news.com> disputed domain name, the Complainant’s WIKIPEDIA trademark, which is distinctive and readily recognizable, is incorporated in its entirety and as the first element of the disputed domain name. The addition of the term “news” does nothing to distinguish it from the Complainant’s trademark. To the contrary, it may rather reinforce the impression that a legitimate connection exists with the Complainant, which is not in fact the case.
Therefore the Panel holds that the disputed domain names are confusingly similar to the Complainant’s trademarks WIKINEWS and WIKIPEDIA respectively.
B. Rights or Legitimate Interests
The <wikinewz.com> disputed domain name is an example of what has become known as typo-squatting, whereby the Respondent hopes to capitalize on common misspellings or misconceptions about the proper spelling of a registered trademark belonging to an unrelated third party. The website to which the disputed domain name <wikinewz.com> resolves has various click-through links which appear to be designed to generate some form of revenue for the Respondent. This is not a legitimate activity which vests rights or interests in the Respondent, but rather an illegitimate attempt to capitalize on another’s goodwill. The<wikipedia-news.com> disputed domain name does not resolve to an active website or webpage – there is thus no evidence of any legitimate use potentially giving rise to rights or legitimate interests in the Respondent. As has been found by other UDRP panels, the mere holding of a domain name, which incorporates another party’s distinctive trademark to which real goodwill attaches, does not vest rights or legitimate interests in a Respondent.
The Respondent has also not been authorized or licensed to use the distinctive registered trademarks of the Complainant in any way. The Respondent does not appear to be known by the terms “Wikinewz” or “Wikipedia” and has not done any legitimate business under those names.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names were registered more than a decade after the Complainant registered its WIKIPEDIA and WIKINEWS marks. Both those marks have garnered very substantial goodwill in the meantime, in particular in the Internet environment. They are both distinctive trademarks. It is inconceivable that the Respondent was ignorant of the marks and the goodwill vesting in the Complainant at the time of registration of both of the disputed domain names. In relation to the <wikinewz.com> disputed domain name, the website to which it redirects is populated with hyperlinks that are most likely devised or selected to generate some sort of click-through revenue stream for the Respondent. For this the Respondent hopes to derive an unfair advantage from typical typographical errors anInternet user might make. This typo-squatting conduct is generally considered to be in bad faith.
The <wikipedia-news.com> disputed domain name does not resolve to an active website. The passive holding of a disputed domain name that incorporates a distinctive and widely known trademark belonging to a third party generally supports a finding of bad faith. The Respondent’s failure to provide any evidence of actual or contemplated good-faith use further supports this finding. In the circumstances of this case, the Panel finds it likely that the Respondent hoped to derive some future financial benefit from the close resemblance between the disputed domain name and the Complainant’s trademark WIKIPEDIA, one of the most recognized marks on the web.
Therefore the Panel holds that the disputed domain names were both registered and 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 names <wikinewz.com> and <wikipedia-news.com> be transferred to the Complainant.
William A. Van Caenegem
Date: August 14, 2017