WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automattic, Inc. / Bubblestorm Management (Pty) Limited v. Jinhui Jinmingwang
Case No. D2018-0111
1. The Parties
The Complainants are Automattic, Inc. and Bubblestorm Management (Pty) Limited of San Francisco, California, United States of America (“United States”), represented by Steven M. Levy, United States.
The Respondent is Jinhui Jinmingwang of Hang Zhou, Shaanxi, China.
2. The Domain Name and Registrar
The disputed domain name <woocommece.com> is registered with DropCatch.com 720 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2018. On January 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2018, 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 issued a Complaint deficiency notice on February 1, 2018, requesting the Complainants to cure the deficiencies within five days of the date of the notification. The Complainants filed an amended Complaint on February 1, 2018.
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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2018.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 22, 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 factual background is taken from the Complaint.
Automattic, Inc., (“Automattic”) is a web development company, founded in August 2005 and is a promoter of the WordPress website design and publishing software platform. Its wholly-owned intellectual property holding company is Bubblestorm Management (Pty) Limited (“Bubblestorm”). It will generally be appropriate to refer to the Complainants collectively.
The Complainants produce and sell software for electronic commerce in connection with the WordPress management system. The software known as WooCommerce has in various forms been downloaded nearly 35 million times and is used in over 28 percent of all online stores worldwide.
The alleged trademark at issue is WOOCOMMERCE. The trademark is not registered but has been used since 2012 and is the subject of applications for registration being handled by Bubblestorm.
Nothing of significance is known about the Respondent except for the contact details provided for the purpose of registration of the disputed domain name, which was registered on December 7, 2017. The Complainants sent a cease, desist, and transfer letter by email in December 2017, to which the Respondent eventually replied with an asking price of USD 200 for the disputed domain name.
The disputed domain name resolves to a website with pay-per-click links that include competitors of the Complainants.
5. Parties’ Contentions
The Complainants’ contentions include the following.
The Complainants say their trademark WOOCOMMERCE is well known. It is a coined word. Products under the trademark are promoted through social media and suppliers and the Complainants have received publicity in The New York Times and other publications. The Complainants have been active in donating to charities including the Nelson Mandela Children’s Fund, the Westlake United Church Trust, and African Tails. The trademark is not yet registered but application for registration is pending.
The Complainants contend that they have developed strong trademark rights in WOOCOMMERCE through extensive and longstanding use. The disputed domain name is identical or confusingly similar to the Complainants’ trademark because it is a minor misspelling in which the letter “r” is omitted. Searchers for the Complainants’ trademark will likely be confused into believing the disputed domain name to have the endorsement of the Complainants. The Complainants’ trademark appears as a link on the Respondent’s website and this link and some others lead to products or services that may give Internet users the erroneous impression they are endorsed by the Complainants.
The Complainants further contend that the Respondent has no rights or legitimate interest in respect of the disputed domain name. None of the circumstances of paragraph 4(c) of the Policy apply to the Respondent. The disputed domain name hosts pay-per-click links to websites that include competitors of the Complainants. That is not a bona fide offering of goods or services by the Respondent. The Respondent Jinhui Jinmingwang is not believed to be commonly known as <woocommece.com> or “woocommerce” and the Respondent’s use of a privacy service indicates that it does not want to reveal the name by which it is commonly known. The use of the disputed domain name by the Respondent is not a legitimate non-commercial or fair use without intent for commercial gain. The Respondent’s use of the disputed domain name has tarnished and diluted Complainants’ trademark.
The Complainants further contend that the disputed domain name was registered and is being used in bad faith within the contemplation of paragraph 4(b)(iv) of the Policy. The misspelling of the Complainants’ name and trademark is indicative that the Respondent had knowledge of the Complainants’ trademark. The diversion of Internet users to the Respondent’s website is for commercial gain because the Respondent receives compensation when visitors click on the links provided. There is no other rational explanation for the Respondent’s activity with the disputed domain name.
The Complainants say the Respondent must accept responsibility for links provided on its website even if they are provided by another party or automatically. The commercial gain from doing so need not be by the Respondent or solely the Respondent.
The Complainants say the Respondent has acted in bad faith by its attempt to sell the disputed domain name to the Complainants for USD 200, which is in excess of the cost of registration.
The Complainants further contend that the Respondent is an active cybersquatter and has engaged in a pattern of the registration of domain names confusingly similar to trademarks in which it does not have rights, a list of 13 of which is produced together with WhoIs records as evidence.
The Complainants have cited or quoted a number of previous decisions under the Policy that they consider to support their position.
The Complainants request the transfer of the disputed domain name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that a respondent is required to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainants have made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
Since the Complainants do not have a registered trademark for WOOCOMMERCE, they must establish unregistered or common law trademark rights to the satisfaction of the Panel. A mere assertion of common law rights, or evidence of a trademark application, had such evidence been produced, would be insufficient. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.3 has reviewed some of the principles panels have applied in assessing whether a complainant may have rights in a common law trademark for the purposes of the Policy. An alleged trademark has generally been required to have become a distinctive identifier that consumers associate with the complainant’s goods and or services.
According to the Complainants’ evidence and uncontested assertions, the “WooCommerce” software has been sold since October 2011. Archived screen shots of the Complainants’ websites at “www.woothemes.com” captured by the Wayback machine (“www.archive.org”) show references to the Complainant’s “WooCommerce” software since December 2012. The Complainants’ website at “www.woocommerce.com” dated December 30, 2016 claimed 19,206,520 downloads of its software at that time. The “WooCommerce” software is the subject of an entry in Wikipedia, which appears to have been updated in November 2017 according to the screen capture submitted by the Complainant. The Complainants maintain a presence under the name “WooCommerce” on Twitter, Facebook, and YouTube. The Complainants and the name WooCommerce have been the subject of articles in The New York Times of June 12, 2013 and Forbes magazine of November 20, 2017. Third parties sell goods and services connected with “WooCommerce”, such as “WooCommerce Australia Post Shipping”. “WooCommerce” was the Technology Growth Award Winner on the web log “www.blog.builtwith.com”. The Complainants state on their website that they have supported the Nelson Mandela Children’s Fund, the Westlake United Church Trust, African Tails, and Grow Academy.
Having regard to the totality of the evidence, and solely for the purposes of paragraph 4(a)(i) of the Policy, the Panel is satisfied that WOOCOMMERCE through duration of use, sales, advertising and public awareness, has acquired secondary meaning and the status of a common law trademark.
The disputed domain name, disregarding the generic Top-Level Domain (gTLD) designation “.com”, is found by the Panel to be a misspelling of the Complainants’ trademark through the omission of the letter “r”, and as such, to be confusingly similar to the trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have made a prima facie assertion to the effect that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainants’ prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has not replied to the Complaint and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
The Complainants have asserted that none of the circumstances listed in paragraph 4(c) of the Policy can apply the Respondent. The Panel does not find any evidence that the disputed domain name, being a misspelling of the Complainants’ trademark, is in use for any bona fide offering of goods or services; that the Respondent Jinhui Jinmingwang is commonly known by the disputed domain name; or that the disputed domain name is in any legitimate noncommercial or fair use. The Panel finds for the Complainants under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
Screen captures of the website to which the disputed domain name has resolved showed it to be operating at the time as a pay-per-click website with an offering of 10 link categories such as “Woocommerce”, “Shopping” and “Pianos and Keyboards”. The screen capture evidence showed that the link to “Woocommerce”, when followed by the Complainants, led to further link categories: “WOOCOMMERCE - THE BEST ECOMMERCE PLATFORM”, “ECOMMERCE FOR WORDPRESS - START A 14 DAY FREE TRIAL NOW”, and “#1MARKETING PLATFORM - FUEL YOUR BRAND”. Others of the Respondent’s links led to businesses or entities unrelated to the Complainants, such as “LegalShield” and “Fairfax County Economic Development Authority”.
On the evidence, it may reasonably be inferred that the Respondent has arranged for links to be placed on the website of the disputed domain name by way of a pay-per-click operation, in which advertisers pay a fee for referrals to their website, a share of the fee then accruing to the benefit of the Respondent. Pay-per-click links are not in and of themselves illegitimate and are widely adopted as a means of defraying the operating costs of a website or as a legitimate stand-alone source of revenue. It is not legitimate, however, to use another’s trademark, whether registered or unregistered, without consent in order to attract Internet users for that purpose. On the evidence, and taking note of the Respondent’s links to “Woocommerce” on the website of the disputed domain name, the Panel finds it more probable than not in this case that the Respondent was familiar with the Complainants’ trademark WOOCOMMERCE. The Panel finds on balance that the Respondent has intentionally incorporated a misspelling of the Complainants’ trademark, omitting the letter “r”, into the disputed domain name in the expectation that a proportion of Internet users who are looking for the Complainants’ trademark may make the same spelling mistake and arrive at the Respondent’s website, a well-recognised ploy known as typosquatting. Thus the Panel finds that the Respondent, in the terms of paragraph 4(b)(iv) of the Policy, has used the disputed domain name in bad faith in order to attract Internet users for commercial gain by confusion with the Complainants’ trademark. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly the Panel finds both registration and use of the disputed domain name in bad faith by the Respondent under paragraph 4(a)(iii) of the Policy.
The Panel finds the Respondent’s bad faith to be compounded by its conduct in attempting to sell the disputed domain name to the Complainants for USD 200, without justification of a sum that prima facie appears may be higher than the probable out-of-pocket costs directly related to registration.
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 <woocommece.com> be transferred to the Complainants.
Clive N.A. Trotman
Date: April 5, 2018