WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wikimedia Foundation, Inc. v. Charan Naidu, micro seas
Case No. D2018-0707
1. The Parties
The Complainant is The Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), internally represented.
The Respondent is Charan Naidu, micro seas of Tirupati, Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <wikipediavideo.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 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 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 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 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 4, 2018.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on May 15, 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-for-profit corporation that was incorporated in Florida in the United States in 2003. The Complainant offers online platforms for users to contribute freely available content, including Wikipedia for encyclopedia content and Wikimedia Commons for media content. The Complainant further carries out activities to promote such free content around the world through a variety of related organizations.
The Complainant is the registered proprietor of approximately 337 trade mark registrations for, or incorporating, the word WIKIPEDIA around the world, including in the United States (for example, trade mark with registration no. 3040722 for WIKIPEDIA, registered on January 10, 2006), the European Union and other jurisdictions.
The Complainant is also the registered owner of the following domain names of relevance to this Complaint:
i. <wikipedia.org>, registered on January 13, 2001;
ii. <wikipediacontent.com>, registered on April 25, 2013;
iii. <wikipediavideos.com>, registered on May 4, 2008;
iv. <wikipediastories.com>, registered on April 12, 2013;
The disputed domain name was registered on October 3, 2016 and resolves to a parking page.
5. Parties' Contentions
The Complainant asserts, inter alia, as follows:
i. that the disputed domain name is confusingly similar to the WIKIPEDIA mark in which the Complainant has rights, in particular:
(1) the disputed domain name includes the Complainant's WIKIPEDIA mark in its entirety, with the addition of the word "video", which the Complainant asserts is descriptive of the goods and services offered by the Complainant and this enhances rather than detracts from the likelihood of confusion with its WIKIPEDIA mark; and
(2) the likelihood of confusion is increased because the Complainant is the registrant of the domain names <wikipedia.org> and <wikipediavideos.com>, among others.
ii. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular:
(1) the Respondent is not, and has never been, known by the disputed domain name;
(2) the Respondent is not related or affiliated to the Complainant or its business;
(3) no license or authorization has been granted by the Complainant to the Respondent to make any use or apply for registration of the disputed domain name; and
(4) the Respondent is not carrying on any legitimate business at the disputed domain name and has not made any preparations to do so.
iii. that the disputed domain name was registered and is being used in bad faith, in particular:
(1) the disputed domain name was registered some years after the Complainant's domain names and trade marks were registered, and the disputed domain name takes advantage of the reputation and goodwill of the Complainant's WIKIPEDIA mark;
(2) it is difficult to conceive of any actual or contemplated active use of the disputed domain name that would not infringe the Complainant's rights; and
(3) correspondence between the Complainant and Respondent indicates that the Respondent was fully aware of the Complainant's rights and deliberately registered the disputed domain name in order to attempt to sell it to the Complainant for a price well in excess of the Respondent's out-of-pocket costs, which falls within paragraph 4(b) of the Policy.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the WIKIPEDIA mark in many territories around the world that pre-date the registration of the disputed domain name.
The disputed domain name fully incorporates the Complainant's WIKIPEDIA mark. The addition of the generic Top-Level Domain ("gTLD") ".com" does not serve to distinguish the disputed domain name from the WIKIPEDIA mark, and should generally be disregarded for the purpose of the assessment of identity or confusing similarity.
The addition of the descriptive word "video" does not eliminate the confusing similarity between the disputed domain name and the Complainant's WIKIPEDIA mark.
The Panel finds that the Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant states that the Respondent is not sponsored by or affiliated with the Complainant and no licence or authorization has been granted to the Respondent in relation to the disputed domain name. The Respondent has not responded to this statement, or at all, thus it is accepted by the Panel.
There is no evidence before the Panel to suggest that the Respondent's use of the disputed domain name amounts to a bona fide use of the disputed domain name within the meaning of paragraph 4(c) of the Policy. In particular, there is no evidence before the Panel that the Respondent has ever used the disputed domain name except to resolve to a parking page. On the contrary, the evidence submitted by the Complainant suggests that the Respondent purchased the disputed domain name for the express purpose of sale to the Complainant, as the Respondent apparently stated in an email dated October 19, 2016: "[…] just i purchase this domain wikipediavideo.com is to sale for you […]" [sic].
The Panel therefore finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to come forward with evidence to establish its rights or legitimate interests in the disputed domain name. The Respondent has not participated in the proceedings and has presented no evidence to support such rights or legitimate interests.
Accordingly, the Panel considers paragraph 4(a)(ii) of the Policy satisfied and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which indicate that the Respondent may have registered and used the disputed domain name in bad faith.
From the evidence submitted by the Complainant, to which the Respondent did not respond, the Panel considers that circumstances exist that indicate the Respondent had knowledge of the Complainant's WIKIPEDIA mark and the Respondent registered and is using the disputed domain name in bad faith, especially in light of (i) the Complainant's trade marks registered in relation to offering video content, for which it has a reputation and (ii) the Complainant being the owner of <wikipediavideos.com>. In particular, in correspondence with the Complainant, the Respondent made the following statements by email on October 19, 2016 (reproduced verbatim) that strongly suggest the Respondent's actions directly fall within the circumstances of paragraph 4(b)(i) of the Policy:
(i) "[…] because wikipediavideo.com is very cache name, Its you company related domain […]";
(ii) "[…] i can sale wikipediavideo.com 99999 usd for you […]"; and
(iii) "[…] just i purchase this domain wikipediavideo.com is to sale for you, to get money because i need money […]".
The Panel again notes that the Respondent has not submitted any response or participated in these proceedings.
On the basis of the above reasons, the Panel finds 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 <wikipediavideo.com> be transferred to the Complainant.
Date: May 29, 2018