WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Milen Radumilo
Case No. D2019-0009
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“US”), internally-represented.
The Respondent is Milen Radumilo of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <vikipedia.com> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 10, 2019, the Complainant filed an amendment to the Complaint replacing the respondent originally named in the Complaint, with the Respondent Milen Radumilo, as disclosed by the Registrar.
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 January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on February 5, 2019. 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.
The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as advised by the Registrar.
4. Factual Background
The Complainant was incorporated in the United States on June 20, 2003 as a non-profit charitable organization.
The Complainant’s mission is to develop multilingual educational materials for distribution online free of charge. The Complainant’s collective works are compiled, edited, and maintained by a community of over 77,000 active volunteers.
Out of the 13 knowledge projects currently managed by the Complainant, its most notorious are Wikipedia, a free online encyclopaedia 1 ; Wikimedia Commons, a shared media repository of over 50 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 supports the Wikimedia movement by overseeing a network of organizations around the world, including Wikimedia chapters, thematic organizations, and user groups, the sum of which span over 40 countries and six continents.
The Complainant owns national and international trademark registrations for WIKIPEDIA covering multiple countries and regions around the world. The Complainant’s first trademark registration No. 3,040,722 was issued on January 10, 2006 by the United States Patent and Trademark Office (“USPTO”) in connection with “the provision of information in the field of general encyclopedic knowledge via the Internet”, in international class 41, stating January 13, 2001 as the claimed date of first use in commerce, which coincides with the registration date of the Complainant’s <wikipedia.org> domain name.
The disputed domain name was registered on October 11, 2004, and has resolved from as early as June 9, 2005, to a “link farm” website, the subjects and themes of which, have changed over time. The disputed domain name is currently put up for sale.
5. Parties’ Contentions
The Complainant makes the following submissions:
i) The disputed domain name incorporates the WIKIPEDIA mark in its entirety, except for substituting a single letter, namely a “w” for a “v”. This typographical alteration does not make the disputed domain name distinguishable when written or read;
ii) It has been well-established by UDRP panels that a domain name incorporating a distinctive trademark in its entirety, with a single-letter difference in spelling, creates sufficient similarity between the mark and the disputed domain name so as to render it confusingly similar;
iii) The Respondent is not a licensee of or otherwise affiliated with the Complainant, and the latter has never authorized or otherwise consented to the Respondent’s registration of the disputed domain name;
iv) The Respondent is neither affiliated with the Complainant in any way, nor has it been authorized by the Complainant to register and use the WIKIPEDIA mark as a domain name. This alone is sufficient to find that the Respondent has no rights or legitimate interests in the disputed domain name;
v) The Respondent is not commonly known by the disputed domain name, and there is no evidence to suggest that the Respondent is or has been commonly known by “Wikipedia” or any variation thereof;
vi) The Respondent has not made any 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 service, nor has the Respondent used the disputed domain name for any legitimate noncommercial or fair use purpose;
vii) The Respondent has registered and is using the disputed domain name to capitalize on the Internet users’ misspelling of the Complainant’s domain name <wikipedia.org>. This practice, known as typosquatting, does not create rights or legitimate interests in a domain name according to UDRP prior decisions;
viii) The Respondent has registered the disputed domain name through Unregistry Corp.’s Privacy.Link service to hide its identity;
ix) The Respondent is using the disputed domain name to operate a pay-per-click website. The use of an infringing domain as a pay-per-click site has been repeatedly found not to constitute bona fide commercial use of a domain name;
x) The Respondent reserved, used, and is holding the disputed domain name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive rights to use and authorize the use of the WIKIPEDIA mark;
xi) The Respondent did not adopt the disputed domain name in ignorance of the Complainant’s mark. Rather, evidence suggests that the Respondent was well-acquainted with the Complainant’s WIKIPEDIA mark when it registered the disputed domain name in 2004. The registration for the trademark WIKIPEDIA indicates first use of the mark in January, 2001, and the Complainant registered the domain name <wikipedia.org> on January 13, 2001. The disputed domain name was registered more than three years thereafter, namely on October 11, 2004;
xii) The Respondent is trading on the value of the Complainant’s WIKIPEDIA mark by typosquatting, which numerous UDRP panels have found constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy;
xiii) The Respondent’s use of the disputed domain name to profit from pay-per-click advertising revenue amounts to clear and blatant bad faith registration of the disputed domain name for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The first element has a low threshold for it merely serves as a standing requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name).
The Complainant holds a plethora of national and international trademark registrations for WIKIPEDIA, all of which were registered after the disputed domain came into being.
The date of acquisition of the Complainant’s trademark rights has no bearing on the first element as long as said rights had accrued prior to the filing of the UDRP complaint. See section 1.1.3 of the WIPO Overview 3.0 (while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed). In this instance, the Complainant’s trademark rights were fully established long before filing of the Complaint.
The disputed domain name fully coincides with the Complainant’s WIKIPEDIA mark, except for one letter. Moreover, the letter “v” at the beginning of the disputed domain name actually reproduces half of the letter “w” with which the Complainant’s mark begins.
In the Panel’s view, the overall visual resemblance between the disputed domain name and the Complainant’s mark rises to the level of confusing similarity required by paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s WIKIPEDIA mark.
The Complainant has satisfied its burden of proof for this element of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Respondent has not been authorized by the Complainant to use the WIKIPEDIA mark in connection with the disputed domain name or otherwise. There is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.
The Complainant has put forward a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, while the Respondent did not allege, much less proved, that it has rights or legitimate interests in the context of the Policy.
Furthermore, the Panel is of the view that the Respondent’s deliberate attempt to prevent Internet users who mistyped the Complainant’s mark, from reaching the Complainant’s website, negate rights and legitimate interests within the purview of the Policy.
In sum, the Panel holds that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has met its burden of proof for this element of the Policy.
C. Registered and Used in Bad Faith
There are two elements to the inquiry under paragraph 4(a)(iii) of the Policy. These are conjunctive. The Panel must first determine whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, the Panel must decide whether the disputed domain name is being used in bad faith. For the Complainant to prevail, both elements of bad faith registration and use must be found to be present. See Gallerie degli Uffizi v. Registration Private, Domains By Proxy LLC / BoxNic Anstalt, WIPO Case No. D2018-0166.
The proper standard of proof to determine the requirement under scrutiny is the “balance of probabilities”, also known as the “preponderance of the evidence”. See section 4.2 of the WIPO Overview 3.0 (the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”; under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true).
In order to find bad faith registration under the first limb of Policy paragraph 4(a)(iii), the trademark on which the complaint is based must be in existence at the time of registration of the domain name at issue. See section 3.8.1 of the WIPO Overview 3.0 (where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent because the respondent could not have contemplated the complainant’s then non-existent rights).
The registration date of the disputed domain name is October 11, 2004. The Complainant’s earliest trademark registration claimed in the Complaint is US registration No. 3,040,722 granted on January 10, 2006. It follows that the recordation of this US trademark registration does not predate the Respondent’s registration of the disputed domain name.
The Panel takes notice of international trademark registration No. 839132 for WIKIPEDIA in international class 41, registered on December 16, 2004, in good standing 2 .
Still, the recordation of the Complainant’s primary WIKIPEDIA trademark took place after the Respondent’s registration of the disputed domain name.
It remains to address whether or not the Complainant acquired unregistered or common law trademark rights in WIKIPEDIA prior to October 11, 2004.
As pointed out by the Complainant, US trademark registration No. 3,040,722 indicates first use of the WIKIPEDIA mark in January, 2001.
However, a claim that a mark has been in use from a certain date, without more, is insufficient to establish trademark rights within the meaning of the Policy. See Force Therapeutics, LLC v. Patricia Franklin, University of Massachusetts Medical School, WIPO Case No. D2017-2070 (assertion of a date of first use does not establish an evidentiary presumption as to the date of first use).
In fact, the date of first use claimed by the Complainant coincides with the date of registration of the Complainant’s <wikipedia.org> domain name. But registration of a domain name does not establish trademark rights in the term(s) used as domain name. See Stephens Valuation and Consultancy Pty Ltd v. SLR Consulting Australia Pty Ltd, WIPO Case No. DAU2013-0026 (Complainant’s evidence was that it operates a website which corresponds to its mark, and uses that website in connection with its business. But this evidence did not clearly establish that the complainant was using that domain name as a mark or identifier of its services in a trademark sense).
It has been submitted that a domain name can become a trademark if it is used as a trademark, and not merely as a domain name. The key is whether the designation claimed as a protectable mark has been used to make such a visual impression that the viewer would see it as a symbol of origin separate and apart from anything else. See McCarthy on Trademarks and Unfair Competition, 4th edition, section 7.17.50, West Group, USA, 2013.
In the instant case, the Panel is of the opinion that the term “Wikipedia” has been used as a mark in commerce with respect to the provision of information and knowledge in the form of an online encyclopedia.
As a result, Wikipedia has built up significant consumer recognition as a mark, separate and apart from its use as a domain name.
The Panel is mindful that WIKIPEDIA was first used within the Complainant’s website “www.wikipedia.org” in January 2001, but the Complainant was not incorporated until June 20, 2003.
Without determining when exactly the Complainant acquired common law trademark rights in WIKIPEDIA, and in the interests of consistency and uniformity with prior UDRP decisions, the Panel assumes that, by October 11, 2004, being the date of registration of the disputed domain name, the Complainant already possessed common law trademark rights in WIKIPEDIA. See Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098 (the panel is satisfied on the evidence submitted that, by May 20, 2004, being the earliest registration date of the disputed domain names, the complainant had indeed acquired unregistered common law trademark rights in the “Wikipedia” name); and Wikimedia Foundation, Inc. v. Domain Administrator, Domain Enterprises, Attn: WILKIPEDIA.COM, WIPO Case No. D2015-1442 (the panel finds that the complainant had unregistered common law rights vested in the WIKIPEDIA marks when the disputed domain name <wilkipedia.com> was registered on March 4, 2004).
The Panel also notes that the WIKIPEDIA mark is inherently distinctive for it entails the original juxtaposition of words with different genealogy 3 .
As such, it is unlikely that the Respondent had randomly selected a domain name that is confusingly similar to the Complainant’s mark. See Expedia Inc. v. Venta, Leonard Bogucki, WIPO Case No. D2001-1222 (noting that “Expedia” is an invented word, and therefore, it does not seem to be a term that others would legitimately choose to use unless seeking to create the impression of association with the complainant).
This is especially true since “vikipedia” has no meaning whatsoever, and the Panel cannot infer any logical connection between the contents of the website at the disputed domain name and the Respondent’s choosing of the disputed domain name.
The Respondent’s registration of a domain name that capitalizes on a mistake of Internet users at the time of typing the Complainant’s mark into the navigation bar or a search engine is a prototypical example of typosquatting, which is clear and convincing evidence of bad faith under the Policy. See Wikimedia Foundation, Inc. v. Allyson Olivero, WIPO Case No. D2015-1263 (the respondent is trading on the value of complainant’s WIKIPEDIA mark to attract users who misspell or mistype said mark when entering the URL).
Last but not least, the Panel notes that the Respondent is a repeated cybersquatter, having been named as respondent in 47 other UDRP complaints filed with the Center.
For the totality of the above circumstances, the Panel finds that the Respondent registered in bad faith, and has been using in bad faith, the disputed domain name.
The Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy.
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 <vikipedia.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: February 26, 2019
1 A book or set of books containing many articles arranged in alphabetical order that deal either with the whole of human knowledge or with a particular part of it, or a similar set of articles on the internet. (emphasis added) See “https://dictionary.cambridge.org/es/diccionario/ingles/encyclopedia”
2 WIPO Global Brand Database at “www.wipo.int/branddb/en/”
3 “Wiki” comes from the Hawaiian word for quick. A “wiki” is a web page created through collaboration. See The Citation of Wikipedia in Judicial Opinions by Lee F. Peoples, 12 Yale J.L. and Tech. 1 (2009), p. 3.; for its part, “pedia” means ‘learning’ in Latin. See “www.quora.com/What-does-the-word-pedia-mean“