WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Domain Administrator, PrivacyGuaridan.org / John Ray
Case No. D2019-0010
1. The Parties
Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally represented.
Respondent is Domain Administrator, See PrivacyGuardian.org, of Phoenix, Arizona, United States / John Ray, whose Registrar-confirmed address is listed as located in “New Youk, OH 43560, US” (which appears to be a non-existent address).
2. The Domain Name and Registrar
The disputed domain name <wikipedia-meds.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 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 Complainant on January 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email from Respondent on January 7, 2019. Complainant filed an amendment to the Complaint on January 10, 2019.
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 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 Center received an email communication from Respondent on January 10, 2019. Pursuant to the Rules, paragraph 17, the proceeding was suspended from January 16, 2019, until February 15, 2019, for the purposes of settlement discussions concerning the disputed domain name. The Proceedings were reinstituted on February 18, 2019, and the Response due date was extended to March 4, 2019. Pursuant to paragraph 6 of the Rules, the Center notified the Parties of the commencement of the panel appointment on March 5, 2019.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 18, 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.
4. Factual Background
Complainant is a nonprofit charitable organization founded in 2003 and dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. Wikipedia is the oldest and largest project of Complainant. Wikipedia offers over 43 million articles in over 290 languages and has about 500 million unique visitors each month.
Complainant owns US Trademark Registration No. 3,040,722 for the mark WIKIPEDIA for “[p]roviding information in the field of general encyclopedic knowledge via the Internet”. The registration issued January 10, 2006, with a date of first use in January 2001. Complainant owns numerous other registered trademarks that incorporate the Wikipedia mark as shown in Annex 7 submitted with the Complaint (“WIKIPEDIA Marks”). Complainant owns approximately 375 trademark registrations worldwide for the Wikipedia trademark and foreign equivalents thereof.
Complainant owns the domain name <wikipedia.org> which it registered on January 13, 2001. Complainant also owns registrations for multiple domain names that incorporate the WIKIPEDIA mark, including <wikipedia.com> and <wikipeddia.org>.
The disputed domain name was registered on October 22, 2017. On July 2, 2018, Complainant sent a cease and desist letter to Respondent. Complainant received no response to the letter.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.
Respondent did not submit a formal response to the Complaint. On January 20, 2019, Respondent sent an email to the Center stating “wikipedia-meds.com we will close this website”. The Center received no further response from Respondent.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
Complainant has demonstrated that it has registered and common law rights in the WIKIPEDIA Marks and that the WIKIPEDIA trademark is well known worldwide. The disputed domain name incorporates Complainant’s mark in its entirety. The addition of the descriptive term “meds” (short for “medicines”) adds no distinguishing element.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Complainant must only establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to Respondent to come forward with evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent is not a licensee of or otherwise affiliated with Complainant. Complainant has never authorized or otherwise condoned or consented to Respondent’s registration of the disputed domain name. There is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name to sell prescription-required medications via anonymous payment methods.
Respondent registered the disputed domain name through a privacy shield to hide his identity. There is no evidence that Respondent is commonly known by the disputed domain name.
The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
By registering the disputed domain name incorporating Complainant’s well-known trademark, Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark. It is inconceivable that Respondent was ignorant of Complainant’s marks at the time of registration. The evidence of record indicates that Respondent has registered the disputed domain name to take advantage of Internet traffic generated by an apparent affiliation with or connection to Complainant.
In addition, Respondent failed to respond to Complainant’s communication warning Respondent that his conduct violates the Policy and infringes Complainant’s mark. Finally, Respondent’s registered address disclosed in this proceeding (as referenced above) appears to be a false address.
The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website selling prescription medications by creating a likelihood of confusion with Complainant’s mark for Respondent’s own pecuniary gain or to disrupt the business of Complainant.
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name 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 <wikipedia-meds.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Date: April 8, 2019