WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Mhsn Shms, Prdazsh Hoshmnd

Case No. D2017-2543

1. The Parties

The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“USA” or “US”), internally represented.

The Respondent is Mhsn Shms, Prdazsh Hoshmnd of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name, <wikipedia-iran.com>, is registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2018.

The Center appointed David Stone as the sole panelist in this matter on March 28, 2018. 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 a non-profit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. It was founded in 2003 and today manages 13 free knowledge projects built and maintained by a community of over 77,000 active volunteers. These projects include Wikipedia, a free, online encyclopedia; Wikimedia Commons, a shared media repository of over 35 million freely usable images, sound files, and video files; and Wikinews, a free-content news source. The Complainant 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 also oversees a network of organizations around the world, including Wikimedia chapters, thematic organizations and user groups. These organizations support Wikimedia movement activities within specific geographical regions and currently operate in 40 countries and six continents.

The Complainant is the registered owner of a large number of active service or trade marks comprising the word “wikipedia”. These include the following registered US service mark and four international registrations designating Iran (the “WIKIPEDIA Marks”):

- WIKIPEDIA: US registration number 3040722, registered on January 10, 2006 in Nice class 41, first used on January 11, 2001;

- WIKIPEDIA: international registration number 907474, registered on September 20, 2006 in Nice classes 9, 35, 38, 41 and 42;

- WIKIPEDIA: international registration number 1178233, registered on January 19, 2013 in Nice classes 9, 35, 41 and 42;

- WIKIPEDIA: international registration number 1224858, registered on March 27, 2014 in Nice classes 9, 36, 38, 41 and 42; and

- WIKIPEDIA: international registration number 1222505, registered on June 30, 2014 in Nice classes 16, 18, 25 and 35.

The Complainant holds analogous registrations in many other jurisdictions.

The Complainant is also the registered holder of a number of domain names comprising or incorporating the word “wikipedia” or a variant spelling. These include the following:

- <wikipedia.org>: registered on January 13, 2001;

- <wikipeddia.org>: registered on December 13, 2004;

- <wikipedia.us>: registered on May 24, 2005; and

- <indiawikipedia.com>: registered on November 13, 2009.

The disputed domain name was registered on January 31, 2017, and resolves to a website automatically initiating the installation of a file onto the user’s computer.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the WIKIPEDIA Marks, because it incorporates WIKIPEDIA in its entirety and differs from it only in the addition of the descriptive word “Iran”, which increases rather than decreases the risk of confusion. The use of WIKIPEDIA is likely to lead consumers to believe that the website to which the disputed domain name resolves is associated with or authorized by the Complainant.

On the contrary, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not received any permission from the Complainant to register the disputed domain name. Furthermore, there is no evidence that the Respondent is or has been commonly known by the disputed domain name, or that it has made any preparations to use it to provide a bona fide offering of goods or services or for any other legitimate noncommercial purpose or fair use. In fact, the website to which the disputed domain name resolves automatically attempts to download a file to the user’s computer, which could indicate malicious intent. The Complainant therefore contends that the Respondent has no legitimate interests in the disputed domain name.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith, noting that the WIKIPEDIA Marks are highly distinctive and well-known worldwide. See Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911; Wikimedia Foundation Inc. v. www.visichat.net / Rokibul Islam - (Rony), WIPO Case No. D2011-1031; Wikimedia Foundation Inc. v. Jamie Wells, WIPO Case No. D2010-0269; Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798. The Complainant maintains that the Respondent was well aware of the WIKIPEDIA Marks when it registered the disputed domain name. They, and the Complainant’s domain names referred to above, were all registered more than two years before the disputed domain name. By using the disputed domain name, the Respondent seeks to divert Internet users for commercial gain by creating confusion as to the Complainant’s association with the website to which the disputed domain name resolves. The Complainant has notified the Respondent that its conduct violates the Policy and infringes the WIKIPEDIA Marks, but has received no response.

These examples suffice under the Policy to demonstrate the Respondent’s bad faith, but in this context the Complainant again notes that, when visited, the associated website automatically starts to download an unidentified file to the user’s computer. This creates a security risk to Internet users who navigate to the website seeking information on the Complainant’s projects within Iran, and must be considered further evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the disputed domain name is identical or confusingly similar to a trade mark 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 incorporation of a trade mark into a domain name, as here, suffices to render the two confusingly similar, irrespective of the presence of other text, such as a descriptive word or geographic term, in the domain name. See Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500; BuzzFeed, Inc. v. Ryan Lenahan, WIPO Case No. D2015-0803. For this reason the Panel finds that the condition in paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable 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; or

(ii) as an individual, business or other organization, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant’s contentions that the Respondent has received no form of authorisation to use the WIKIPEDIA Marks and is not commonly known by the disputed domain name are valid grounds on which to assert the Respondent’s lack of rights or legitimate interests in the disputed domain name. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798; Red Bull GmbH and Red Bull AG v. xiangsong, WIPO Case No. D2014-1704.

Where there is a prima facie case such as this, the onus is on the Respondent to adduce evidence in rebuttal. However, the Respondent has chosen not to submit a reply to this Complaint, and the Panel therefore finds that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:

(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;

(ii) prevent the trade mark owner from registering its trade mark in a domain name;

(iii) disrupt the business of a competitor; or

(iv) divert Internet traffic for commercial gain.

On the evidence presented by the Complainant, which lacks a translation of the content of the website to which the disputed domain name resolves, it is not clear that, as contended, the Respondent seeks to divert Internet traffic for commercial gain, or indeed that any of the four criteria listed above are satisfied. However, this list is not exhaustive.

Here, where the trade marks involved are acknowledged to be well-known worldwide and in some cases predate the registration of the disputed domain name by more than ten years, the Panel may make a finding of registration and use in bad faith on the basis that the Respondent knew or ought to have known about the trade marks before registering the disputed domain name. See Wikimedia Foundation, Inc. v. Gwinel Madisse, WIPO Case No. D2017-1250; Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524; Eurail Group GIE v. DOTrader, WIPO Case No. D2003-0422. Bad faith is also indicated under the circumstances by the Respondent’s failure to respond to the Complainant’s attempt to settle the matter privately. See Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lizhen Ye, WIPO Case No. D2013-0808; Microgaming Software Systems Limited v. E Net Marketing Ltd., WIPO Case No. D2007-0013.

Without knowing the purpose of the file that the associated website seeks to download to the user’s computer, the Panel cannot comment with certainty on its relevance to the issue of bad faith, although it agrees with the Complainant that an unsolicited download is potentially a significant security risk. However, the Panel need not consider this further, and concludes from the above that the condition in paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

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-iran.com>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: April 9, 2018