WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Wu Yu, Aidan / Registration Private
Case No. D2018-1458
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("US"), internally-represented.
The Respondent is Wu Yu, Aidan of Nanning, Guangxi, China / Registration Private of Burgenland, Austria.
2. The Domain Names and Registrar
The disputed domain names <owikipedia.org>, <wikipedia0.org> and <0wikimedia.org> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 11, 2018.
The Center verified that the Complaint together with the amendment to 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 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on August 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-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.
The Complainant is also the registered proprietor of a large number of trade marks in the US and the European Union ("EU"), as well as several international registrations. These registrations include:
- International Registration number 907474, for WIKIPEDIA, designating 79 countries, registered on September 20, 2006;
- US registration number 3505429, for WIKIPEDIA, registered on September 23, 2008;
- International Registration number 1224858, for WIKIPEDIA, designing 10 countries, registered on March 27, 2014;
- EU Trade Mark registration number 12847836, for WIKIPEDIA, registered on December 4, 2014; and
- US registration number 4780015, for WIKIPEDIA, registered on July 28, 2015.
Each of the above registrations is registered, inter alia, in Class 38 for "electronic transmission of data and documents via the Internet". The Complainant is also the proprietor of numerous registrations for or including WIKIMEDIA, including International Registration number 902694, which is also registered in Class 38. In this decision these marks are referred to collectively as the "Marks".
In addition, the Complainant has registered a large number of domain names incorporating its WIKIPEDIA trade mark, including <wikipedia.org> and <wikipediazero.org>.
The Respondent registered the disputed domain names on September 10 and 11, 2017. To the extent that they have been used, the disputed domain names have provided Internet users with access to parking pages displaying pay-per-click links, some of which refer expressly to "Wikipedia" while others appear to bear no relation to the Complainant. In either instance, the evidence is that none of these links is unaffiliated with the Complainant.
5. Parties' Contentions
The Complainant contends that its trade marks are extremely well known within the US and throughout the world. It cites previous UDPR decisions to the effect that it owns both registered and common law rights in WIKIPEDIA and that that mark is highly distinctive and well known around the world (for example, 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; and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798).
The Complainant asserts that the Respondent is not a licensee of or otherwise affiliated with the Complainant, and that it has never authorized or otherwise condoned or consented to the Respondent's registration of the disputed domain names. It argues that the Respondent is not commonly known by any of the disputed domain names and that there is no evidence to suggest that the Respondent is or has been commonly known by "Wikipedia" or any variation thereof.
According to the Complainant, the Respondent has not made any preparations to use the disputed domain names or a name corresponding to any of them in connection with a bona fide offering of goods or services, nor has the Respondent used them for any legitimate non-commercial or fair use purpose (referring to the disputed domain names as examples of typosquatting).
The Complainant believes that the Respondent's registration and use of the disputed domain names is in bad faith and in disregard of the Complainant's exclusive rights to use and authorize the use of the Marks. The Complainant believes that the Respondent registered the disputed domain names despite being well‑acquainted with the Complainant's rights in the Marks, several years after the Complainant registered and began using its Marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
These criteria are cumulative. For each of the disputed domain names the failure of the Complainant to prove any one of these elements means the Complaint must be denied with respect to that domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Marks.
The Panel also accepts that each of the disputed domain names is confusingly similar to either the Complainant's WIKIPEDIA mark or to its WIKIMEDIA mark, each of which is reproduced in its entirety in the disputed domain names and is instantly recognizable as the dominant and distinctive element thereof. The addition of the non-distinctive letter "o" or number "0" to does not alter that conclusion. The addition of the generic Top-Level Domain ("gTLD") suffix ".org" may be disregarded for the purposes of comparison under the first element. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
Section 1.8 of the WIPO Overview 3.0 permits a finding of confusing similarity in circumstances such as this, stating that: "Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case by stating that it has not authorized or consented to the registration or use of the disputed domain names by the Respondent. The Complainant has also shown that the only active use by the Respondent of the disputed domain names (in fact, the Complainant's evidence itself only shows one of them: <0wikimedia.org>) has been to provide access to pay-per-click links. Use of a domain name to provide access to pay-per-click advertisements "which compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users", as is the case with <0wikimedia.org>, is not a bona fide offering that amounts to a legitimate noncommercial or fair use of that domain name. It is therefore insufficient to establish rights or legitimate interests in respect of a domain name. See section 2.9 of the WIPO Overview 3.0.
The Respondent has failed to respond to the Complaint and there is no evidence that the Respondent has acquired any common law rights to use the Marks or that it is commonly known as any name that corresponds to them. By not participating in these proceedings, the Respondent has failed to refute the Complainant's prima facie case that it has met its burden under the second UDRP element.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Panel accepts that each of the disputed domain names was registered by the Respondent with the Complainant in mind. Although multiple entities use "WIKI" descriptively in their names, WIKIPEDIA and WIKIMEDIA are distinctive of the Complainant alone. Yet these are the words the Respondent has chosen to incorporate into the disputed domain names together with an "o" or a "0" (most likely to refer to the Wikipedia Zero campaign run by the Complainant before the disputed domain names were registered). The Respondent also chose to use the ".org" gTLD suffix, which is associated with the Complainant's "www.wikipedia.org" website as well as with other non-profit organizations, and has not put forward any argument to attempt to explain or defend these similarities to the Complainant's own use of its Marks in its own domain names. As a result, the Panel must conclude that the Respondent knew of the Complainant's rights in the globally recognized Marks when it registered the disputed domain names, and that it also knew that it had not been authorized to do so. The Panel therefore finds that the Respondent's registration of the disputed domain names was in bad faith.
The Panel also finds that the disputed domain names are being used in bad faith. The use of the world‑famous Marks in domain names either being passively held so that the Complainant cannot register them, or for pay-per-click links which have not been approved by the Complainant, is inconsistent with the Complainant's exclusive rights in its Marks. Where such use is undertaken in full knowledge of the Complainant's rights in the Marks and of the Respondent's lack of rights to use them, such use amounts to a bad faith use of the disputed domain names.
As a result of the above, the Panel finds that each 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 names <owikipedia.org>, <wikipedia0.org>, and <0wikimedia.org> be transferred to the Complainant.
Date: August 29, 2018