WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
What3Words Ltd v. Host Master
Case No. D2019-2439
1. The Parties
Complainant is What3Words Ltd, United Kingdom, represented by J A Kemp., United Kingdom.
Respondent is Host Master, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <whatfreewords.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. The Complaint concerned ten disputed domain names registered to multiple respondents. On October 8, 2019, the Center transmitted by email to the concerned Registrars a request for registrar verification in connection with the disputed domain names. The Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named respondents and contact information in the Complaint. The Center sent an email communication to Complainant on October 28, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. On October 31, 2020, Complainant requested a suspension of the proceedings to enable the Complainant and the named respondents to conduct settlement negotiations. The proceedings were suspended on November 4, 2020. The proceedings were reinstituted on February 18, 2020. Complainant filed an amendment to the Complaint on February 19, 2020, removing nine of the domain names originally listed in the Complaint. The Amended Complaint concerned only the disputed domain name registered in the name of Respondent.
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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel appointment process on March 12, 2020.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on March 19, 2020. 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, What3Words, Ltd., is a provider of geolocation services based in the United Kingdom.
Complainant owns several trademark registrations for the marks WHATTHREEWORDS and WHAT3WORDS in connection with its geolocation products and services. These include, inter alia, a registration in the United Kingdom for WHATTHREEWORDS (Registration No. 2656721), that issued to registration on July 5, 2013; a registration in the European Union for WHAT3WORDS (Registration No. 01352911), that issued to registration on April 8, 2015; and a registration in the United States of America for WHAT3WORDS (Registration No. 4893853), that issued to registration on February 2, 2016. Complainant also owns and uses the domain name <what3words.com> to promote and provide information regarding its geolocation services.
Respondent registered the disputed domain name on September 24, 2019. Respondent uses the disputed domain name for a website promoting an open-source library to implement Complainant’s What3Words geocoding system.
5. Parties’ Contentions
Complainant asserts that it is the owner rights in the name and mark WHATTHREEWORDS by virtue of its use of the mark since 2013 with its geolocation products and services and by virtue of the trademark registrations that Complainant owns and obtained in multiple jurisdictions for the WHATTHREEWORDS and WHAT3WORDS marks before Respondent registered the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s distinctive WHATTHREEWORDS trademark as the disputed domain name is aurally and visually similar to the WHATTHREEWORDS mark. In that regard, Complainant further contends that the terms “three” and “free” are phonetically identical and indistinguishable when enunciated.
Complainant argues that Respondent has no right or legitimate interest in the disputed domain name as Respondent (i) is not affiliated with Complainant and is not authorized to use Complainant’s trademark, (ii) is not commonly known by the disputed domain name and (iii) is not making a legitimate use of the disputed domain name. Complainant maintains that Respondent is distributing unauthorized copies of Complainant’s proprietary geolocation software code and wordlist, and is doing so for the express purpose of harming Complainant’s business.
Lastly, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith as Respondent is using the disputed domain name to distribute unauthorized copies of Complainant’s proprietary software code for its WHATTHREEWORDS service and is expressly doing so for purposes of harming Complainant’s business. Complainant also asserts that the website at the disputed domain name mirrors a website that previously appeared at the domain name <whatfreewords.org>, a domain name Complainant successfully suspended through a Uniform Rapid Suspension (“URS”) proceeding initiated by Complainant in October 2019. Complainant argues that the Respondent is the same party that operated the website at the <whatfreewords.org> website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the WHATTHREEWORDS mark in connection with Complainant’s geolocation products and services. Complainant has also provided evidence that the WHATTHREEWORDS and WHAT3WORDS marks have been registered in multiple jurisdictions well before Respondent registered the disputed domain name.
With Complainant’s rights in the WHATTHREEWORDS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating an identical or confusingly similar mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s WHATTHREEWORDS as it essentially mirrors the WHATTHREEWORDS mark. The replacement of the word “three” with the word “free” in the middle of the disputed domain name does not distinguish the disputed domain name from Complainant’s WHATTHREEWORDS mark, as the words “three” and “free” in the context of the disputed domain name are phonetically and aurally quite close. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s WHATTHREEWORDS mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding, none of which is contested by Respondent, shows that Respondent has used the disputed domain name with a website that purports to offer free downloads of an open-source version of Complainant’s geolocation software code, including Complainant’s proprietary wordlist and unique three word addresses “3WA” which are central to the geolocation service. Whether such activity is a violation of Complainant’s copyright rights in its proprietary software, wordlist and 3WA addresses is beyond the scope of this UDRP proceeding. What is at issue, however, is whether it is legitimate for Respondent to use the disputed domain name which plays upon Complainant’s WHATTHREEWORDS mark to distribute without authorization a free version of software code that has been created to essentially replicate Complainant’s geolocation service.
In the Panel’s view, the use of the disputed domain name by Respondent is meant to attract web users to Respondent’s website in order to distribute Respondent’s open-source version of Complainant’s geolocation software and service. The disputed domain name, which essentially follows the format of Complainant’s WHATTHREEWORDS trademark, mistakenly could be seen by consumers as a website connected to Complainant offering a free version of Complainant’s geolocation software and service. Indeed, the home page of Respondent’s website actually heightens the confusion as it includes a prominent header that simply states “Open-source geocoding for What3Words.” The home page also provides that “WhatFreeWords is a free and open-source, compatible implementation of the What3Words geocoding.” These statements in combination with a domain name that plays upon the WHATTHREEWORDS mark, is likely to mislead some consumers into believing that the website at the disputed domain name is connected to or authorized by Complainant, when such is not the case.
A consumer can only discover that the website at the disputed domain name is not connected to Complainant by clicking on tabs at the top of the website that are entitled “About” and “FAQ” and then reading through text provided by Respondent. If a consumer simply accesses the website and begins a download of the “free” version of the software by clicking on one of three prominent boxes on the home page, the consumer would not know that the website has no connection to Complainant.
That Respondent is using the disputed domain name to likely attract web users to Respondent’s website to promote Respondent’s agenda is further heightened by Respondent’s own statements on the website. The “FAQ” page within Respondent’s website at the disputed domain name includes a question that asks “Do you want to ruin the What3Words company’s business?” Respondent answers the question affirmatively and makes clear that Respondent has a desire to harm Complainant’s business.
Simply put, while Respondent conceivably could have a legitimate basis for distributing an open source version of Complainant’s geolocation proprietary code, doing so by using a domain name based on Complainant’s trademark to misleadingly redirect consumers to a website offering a competing product for the express purpose of harming Complainant’s business is not a bona fide use and does not support a legitimate interest. WIPO Overview 3.0 at sections 2.5.1 and 2.5.2.
Given that Complainant has established with sufficient evidence that it owns rights in the WHATTHREEWORD mark, and given Respondent’s above noted actions and failure to appear in this proceeding, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given Respondent’s actions as noted above, and its failure to appear in this proceeding, the Panel concludes that Respondent’s registration and use of the disputed domain name which plays upon Complainant’s WHATTHREEWORDS mark to attract and redirect consumers to a website that purports to promote downloads of a free open-source version of Complainant’s geolocation service is being done in bad faith – particularly in light of Respondent’s statements that Respondent is seeking to harm Complainant’s business. The Panel also notes that Respondent’s prior use of the domain name <whatfreewords.org> for essentially the same website and purpose further underscores Respondent’s bad faith actions. Accordingly, the Panel finds that Complainant succeeds under this element 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 <whatfreewords.net> be transferred to the Complainant.
Date: April 2, 2020