WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WordPress Foundation v. Alisher Akramkhanov
Case No. DCO2016-0038
1. The Parties
The Complainant is WordPress Foundation of San Francisco, California, United States of America, (“United States”), represented by Accent Law Group, Inc., United States.
The Respondent is Alisher Akramkhanov of Tashkent City, Uzbekistan.
2. The Domain Name and Registrar
The disputed domain name, <wordpressgroup.co> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2016. On October 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amended Complaint on October 31, 2016.
The Center verified that the Complaint together with 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 November 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2016. The Center received a total of four email communications from the Respondent on November 5, 2016 (twice), November 9, 2016 and November 10, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 29, 2016. 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 (directly and indirectly via its licensee) is a leading provider of blogging and Internet publishing services under and by reference to the name and trade mark WORDPRESS. The Complainant and its licensee provide its services through its websites connected to its domain names, <wordpress.com> and <wordpress.org>.
The Complainant is the registered proprietor of numerous WORDPRESS trade mark registrations including by way of example United States Registration No. 3201424 WORDPRESS (word) registered on January 23, 2007 (application filed March 1, 2006) in class 9 for “downloadable software program for use in design and managing content on a website” and with a first use claim dating back to March 28, 2003.
The Domain Name was registered on October 29, 2014 and is connected to a parking page of the Registrar featuring Registrar advertisements and sponsored listings for a wide variety of goods and services, many of them not having any obvious connection with the Complainant or its line of business.
On May 11, 2016, a representative of the Complainant sent an email to the Respondent drawing the Respondent’s attention to the Complainant’s rights and seeking inter alia transfer of the Domain Name. The Respondent did not reply and chasers were sent on May 18, 2016 and May 26, 2016. Again, no replies were received from the Respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s WORDPRESS trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that Domain Name was registered and is being used in bad faith.
The Respondent has not filed a formal response to the Complaint, but, as indicated in section 3 above, has emailed the Center on several occasions.
The essence of those communications is that he had only registered the Domain Name in 2014 for one year and thought that it had expired, and that he no longer uses it and has tried to access his old account with the Registrar, but has been unable to do so. His final email on November 10, 2016 concluded: “If I agree to transfer domain to complainant, how should I proceed?”.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s WORDPRESS trade mark, the dictionary word “group”, and the “.co” country code Top-Level Domain. The Complainant’s trade mark stands out as the distinctive element of the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
C. Rights or Legitimate Interests
The Respondent’s emails referred to in section 5.B. above purport to confirm that the Respondent has no continuing interest in the Domain Name. Those emails do not explain why the Respondent registered the Domain Name in the first place and the Panel cannot conceive of any possible justifiable reason for him having done so. The evidence demonstrates that by the time the Domain Name was registered in 2014, the Complainant’s WORDPRESS trade mark was very well known in its field. The Complainant asserts that it has had no connection with the Respondent and has not granted the Respondent any permission to use its trade mark. The Respondent is not known by the Domain Name. The use to which the Domain Name has been put, namely to connect to a free pay-per-click parking page of the Registrar, cannot give rise to any rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
On the evidence before the Panel, the Domain Name, comprising the Complainant’s WORDPRESS trade mark and the word “group”, effectively identifies the Complainant as a corporate entity.
In the absence of any explanation from the Respondent, the Panel is left with the clear impression that when the Respondent registered the Domain Name, he did so with the intention of impersonating the Complainant. On any view that was a bad faith objective, and the Panel finds that the Domain Name was registered in bad faith.
The Respondent’s emails indicate that he only registered the Domain Name for a year and that he used the Domain Name for email. Thus, in the view of the Panel, in using the Domain Name for email, he was falsely representing himself to be associated with the Complainant and, in so doing, he was using the Domain Name in bad faith.
The Registrar has confirmed to the Center that the Domain Name is still held in the name of the Respondent. While it currently appears to be being used by the Registrar rather than the Respondent, the Respondent remains responsible for its use, which is a commercial use likely to be benefiting financially from Internet users visiting the site erroneously believing it to be a website of or associated with the Complainant.
However, even if one were to ignore the Registrar’s use of the Domain Name, on the record before the Panel the Domain Name is still available for use by the Respondent. As such, in the view of the Panel, the Domain Name represents an abusive threat hanging over the head of the Complainant and a continuing abusive use.
The Panel finds that the Domain Name was registered and is being used in bad faith for the purposes of 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 Domain Name, <wordpressgroup.co>, be transferred to the Complainant.
Date: December 4, 2016