WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Olive Digital

Case No. D2021-3336

1. The Parties

The Complainant is Wikimedia Foundation, Inc., United States of America (“United States”), represented by Jones Day, United States.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy elf, Iceland / Olive Digital, United States.

2. The Domain Name and Registrar

The disputed domain name <wikipediawriting.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2021, 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 October 13, 2021 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 October 13, 2021. On October 19, 2021, the Center invited the Complainant to amend the Complaint by October 24, 2021 in regards to compliance matters. On October 23, 2021, the Complainant filed an amended Complaint.

The Center verified that the Complaint, the amendment and the amended 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 October 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2021.

The Center appointed Andrew J. Park as the sole panelist in this matter on November 26, 2021. 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, Wikimedia Foundation, Inc. (“WMF”) is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. The Complainant was founded in 2004, and today manages 13 free knowledge projects built and maintained by a community of over 146,000 active volunteers. The well-known projects managed by the Complainant include Wikipedia, a free online encyclopedia, Wikimedia Commons, a shared media repository, and Wikinews, a free-content news source. The Complainant provides technological, legal, fundraising, and administrative support for these projects, which together represent some of the most-visited web properties in the world.

The Complainant obtained a registration for the trademark WIKIPEDIA from the United States Patent and Trademark office on January 10, 2006. The registration indicates first use of the mark on January 11, 2001, and in subsequent years, the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark. The Complainant also owns approximately 430 trademark registrations worldwide for the WIKIPEDIA trademark and the foreign equivalents thereof, has extensive common law rights, and acquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001. The Complainant owns national and international registrations for these marks in over 111 jurisdictions around the world. In addition, the Complainant registered the domain name <wikipedia.org> on January 13, 2001 and also owns registrations for dozens of domain names that incorporate the WIKIPEDIA marks.

The disputed domain name <wikipediawriting.com> was created on May 13, 2020 and the website to which the disputed domain name resolves offers editing and writing services for Wikipedia.org charging its patrons for the creation and maintenance of Wikipedia pages. The website also displays marks which belong to and are registered under the Complainant, all without the Complainant’s consent nor authorization.

The Complainant requested the Respondent to remove the Complainant’s marks from its website and to transfer the disputed domain name. However, the Respondent renewed the disputed domain name until May 13, 2022.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons.

(a) the disputed domain name <wikipediawriting.com> is identical to the Complainant’s trademark WIKIPEDIA in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark WIKIPEDIA in its entirety. The addition of the term “writing” behind the Complainant’s trademark WIKIPEDIA does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. To the contrary, it reinforces the impression that a legitimate connection exists between the Complainant and the website to which the disputed domain name resolved to. The Complainant also insists that as a result of the Respondent’s misuse of the Complainant’s trademark in the disputed domain name, Internet users will perceive that there is some relationship between the Respondent and the Complainant. The Respondent posted in its website several distinctive marks that are registered by and under the Complainant, the actions of which will seriously tarnish the Complainant’s trademark WIKIPEDIA.

(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not a licensee of or otherwise affiliated with the Complainant, and the Complainant has never authorized the Respondent to use its trademark or otherwise condoned or consented to the Respondent’s registration of the disputed domain name. Further, the Complainant claims that the Respondent has registered the disputed domain name through privacy protection to hide its identity which shows that the Respondent is or has not been commonly known by the disputed domain name. The Respondent is using the disputed domain name to operate a paid Wikipedia editing website for which there was no prominent and accurate disclosure of the Respondent’s relationship with the Complainant, the trademark owner. Instead, the Respondent displays the images of the Puzzle Globe logo and the stylized Wikipedia trademark, all of which are unauthorized use of the Complainant’s protected marks in the website to which the disputed domain name resolves. Such use of the disputed domain name and its website to attract, confuse and profit from Internet users seeking the Complainant, and to give the overall impression that there is an official connection between the Respondent and the Complainant. The Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services. Also, there is no evidence that the Respondent is currently making a legitimate noncommercial or fair use of the disputed domain name.

(c) 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. The Complainant contends that the Respondent was well acquainted with the Complainant’s WIKIPEDIA marks when it registered the disputed domain name in 2020. The disputed domain name incorporates the Complainant’s trademark WIKIPEDIA in its entirety, rendering it identical to the Complainant’s trademark and in addition, the Respondent itself even mentioned that its business is related to the Complainant in its website to which the disputed domain name resolves promoting “Our highly qualified teams have years of experience in writing content for Wikipedia pages and are aware of every single one of Wikipedia’s standards, guidelines, and requirements.” These two facts alone are sufficient to prove that the Respondent was well aware of the complainant when registering the disputed domain name and registered in bad faith.

Even though the Respondent agreed to comply with the Complainant’s demands to remove the infringing marks and content from its website and to terminate the registration of the disputed domain name when the Complainant contacted the Respondent at first, the Respondent rather, allowed the renewal of registration of the disputed domain name and continued to use it for its website to solicit payment for services. This is indicative that the Respondent is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not submit its Response to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the trademark WIKIPEDIA and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the term “writing” that potential consumers may very well associate with the Complainant’s activity does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. Further, the use of the generic Top-Level Domain “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.

The Respondent registered the disputed domain name, created a website using the disputed domain name purportedly offering writing services for Wikipedia pages, one of the Complainant’s projects, used not only the Complainant’s WIKIPEDIA trademark but also the images of the Complainant’s stylized word mark and did not prominently include accurate information about its relationship with the Complainant and the identity of the provider on the website, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant, and all without the Complainant’s permission or authorization. The foregoing demonstrates that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods and or services. Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

The Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant. Therefore, the Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a formal Response.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv). The Complainant claims that the Respondent registered the disputed a domain name which is confusingly similar to the Complainant’s trademark, WIKIPEDIA, with the knowledge of the Complainant and its worldwide famous projects.

As already mentioned, the Respondent did not file any formal Response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Panel notes that Wikipedia was first launched on January 15, 2001 by the Complainant, Wikimedia Foundation, a non-profit organization that also hosts a range of other projects. Wikipedia is a free online encyclopedia, created, edited and maintained by volunteers around the world through a model of open collaboration, using a wiki-based editing system. The Panel finds the Respondent intentionally registered the disputed domain name – which is confusingly similar to the Complainant’s trademarks – in bad faith for several reasons. Most significantly, the Complainant’s commencement of its business and its first use of the WIKIPEDIA trademark since 2001 far pre-date the registration date of the disputed domain name in 2020.

Further, the Panel finds that the addition of the term “writing” next to the Complainant’s trademark actually increases the likelihood of confusion because Internet users may think that there is a connection between the Respondent and the Complainant.

The fact that (i) the Complainant had never given any authorization to the Respondent to use its trademark, (ii) the Respondent registered the disputed domain name which contains the Complainant’s trademark in its entirety, (iii) the Respondent is operating a website in which the disputed domain name resolves to, purportedly offering writing services for Wikipedia pages which is the Complainant’s project and using the Complainant’s WIKIPEDIA trademark as well as Puzzle globe logo word mark and the Complainant’s product images, and (iv) the Respondent tried to hide its identity behind a privacy protection service by registering the disputed domain name through it, (v) the disputed domain name incorporates the Complainant’s trademark in its entirety, and (vi) the Respondent renewed the disputed domain name and continued to use it for its website for commercial gain after the Respondent agreed to comply with the Complainant’s demands to remove all infringing marks and content from the website to which the disputed domain name resolved, terminate registration of the disputed domain name and transfer it to the Complainant, all make it abundantly clear that the Respondent was well aware of the Complainant and its activities when the Respondent registered the disputed domain name in order to cause Internet consumers to believe that there is a relationship between the Respondent and the Complainant.

There is no other evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.

Accordingly, the evidence shows that the Respondent likely knew the Complainant’s trademark and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark for commercial gain, in violation of paragraph 4(b)(iv) of the Policy.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

7. Decision

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 <wikipediawriting.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: December 10, 2021