WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wikimedia Foundation, Inc. v. Mohsen Shamsi
Case No. DIR2017-0013
1. The Parties
The Complainant is The Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally represented.
The Respondent is Mohsen Shamsi of Tehran, Islamic Republic of Iran.
2. The Domain Names and Registrar
The disputed domain names <dr-wikipedia.ir>, <fa-wikipedia-org.ir>, <wikepedia.ir>, <wikipedia-dropstore.ir>, <wikipedia-iran.ir> and <wikipedia-persian.ir> (the “Domain Names”) are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2017. On July 4, 2017, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Names. On July 5 and July 23, 2017, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 24, 2017.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 21, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 24, 2017. 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 is a non-profit charitable foundation founded in 2003 that manages 11 free knowledge products built and maintained by a community of over 77,000 active volunteers. The projects managed by the Complainant include Wikimedia Commons, a shared media repository of over 25 million freely usable images, sound files, and video files; Wiktionary, an online dictionary and thesaurus; Wikivoyage, a free, worldwide travel guide; and Wikipedia, a free, online encyclopaedia. Wikipedia contains 33.5 million articles in over 288 languages and has about 500 million unique visitors each month.
The Complainant has held a trade mark registration for the word mark WIKIPEDIA (the “WIKIPEDIA Mark”) since at least 2004 in the European Union and Japan, and since 2006 in the United States, registered for “Providing information in the field of general encyclopaedic knowledge via the Internet”. It has also registered the WIKIPEDIA Mark as part of a number of international registrations designating the Islamic Republic of Iran.
The Domain Name <wikipedia-iran.ir> was registered on February 16, 2016. The Domain Name <wikipedia-persian.ir> was registered on June 8, 2016. The Domain Name <dr-wikipedia.ir> was registered on June 9, 2016. The Domain Name <wikipedia-dropstore.ir> was registered on June 15, 2016. The Domain Name <wikepedia.ir> was registered on June 19, 2016. The Domain Name <fa-wikipedia-org.ir> was registered on June 23, 2016.
The Domain Names <wikepedia.ir> and <wikipedia-iran.ir> redirect to a website (the “Respondent’s Website”) in Persian that appears to contain certain articles of general interest along with numerous pop-up advertisements. The remaining Domain Names do not redirect to any active page.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s WIKIPEDIA Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered or are being used in bad faith.
The Complainant is the owner of the WIKIPEDIA Mark having registered the WIKIPEDIA Mark in the United States and throughout the world.
The Domain Names either contain the WIKIPEDIA Mark in its entirety or consist of (in the case of the <wikepedia.ir> Domain Name) a misspelling of the WIKIPEDIA Mark. The Domain Names are each confusingly similar to the Complainant’s WIKIPEDIA Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization from the Complainant to register any of the Domain Names. The Respondent is either not using the Domain Names or using the Domain Names for a website that contains the WIKIPEDIA Mark and misleads users about the relationship between the Complainant and the Respondent. The use of a domain name in this manner does not constitute a bona fide offering of goods or services. Rather it constitutes prima facie evidence of no rights or legitimate interests.
The Domain Names were registered and are being used in bad faith. The Domain Names were registered with the Complainant in mind, given the fame of the WIKIPEDIA Mark. The Complainant contends that the Respondent used the Domain Names to capitalize on the fame of the WIKIPEDIA Mark in order to increase traffic to the Respondent’s Website (being supported by pop-up advertisements) for the Respondent’s own pecuniary gain. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the WIKIPEDIA Mark, having registrations for the WIKIPEDIA Mark as a trade mark in the Islamic Republic of Iran and various countries around the world.
The Domain Name <wikepedia.ir> is confusingly similar to the WIKIPEDIA Mark since it is a minor misspelling of the WIKIPEDIA Mark, replacing the second “i” with “e”. The remaining Domain Names incorporate the WIKIPEDIA Mark in its entirety with the addition of either a descriptive term, geographical term or indistinct two letter term (“dr” or “fa"). These additions are insufficient to dispel the impression of confusing similarity with the WIKIPEDIA Mark: see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 with respect to descriptive terms; Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097;
The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s WIKIPEDIA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(1) 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
(2) 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
(3) 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the WIKIPEDIA Mark or a mark similar to the WIKIPEDIA Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Currently four of the Domain Names (<dr-wikipedia.ir>, <fa-wikipedia-org.ir>, <wikipedia-dropstore.ir> and <wikipedia-persian.ir>) are inactive while the remaining two Domain Names resolve to a website that, without the permission of the Complainant:
(a) makes reference to the Complainant’s WIKIPEDIA Mark, potentially indicating that the Respondent and its website are in some way connected with the Complainant or offer its services; and
(b) contains advertising that one would presume the Respondent receives revenue from.
Such use by itself is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) “circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the WIKIPEDIA Mark at the time each of the Domain Names was registered. It is improbable that a person would register six domain names in a six-month period that all incorporate (or are a minor misspelling of) the highly distinctive WIKIPEDIA Mark without having some awareness of the Complainant’s mark rights. The Respondent has provided no explanation, nor is one apparent to the Panel, as to why an individual would register the Domain Names other than by reason of their resemblance to the WIKIPEDIA Mark. In the circumstances, the registration of the Domain Names in awareness of the WIKIPEDIA Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent may also have registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The registration of six Domain Names incorporating the WIKIPEDIA Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent is using two of the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s WIKIPEDIA Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used two of the Domain Names to operate a website that likely generates revenue for the Respondent when visitors click on the various pop-up advertisements that appear. The Respondent therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the WIKIPEDIA Mark.
The fact that certain Domain Names have not been linked to an active website does not prevent a finding of bad faith being made in respect of them. In circumstances where the Respondent has registered six Domain Names incorporating the WIKIPEDIA Mark and redirected two of them to websites referring to the Complainant the Panel is prepared to infer that the Respondent had the same intention when registering and holding the four Domain Names that have not yet resolved to active websites. In any event, the passive holding of a domain name does not prevent a finding of bad faith, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Names in bad faith under 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 Names <dr-wikipedia.ir>, <fa-wikipedia-org.ir>, <wikepedia.ir>, <wikipedia-dropstore.ir>, <wikipedia-iran.ir> and <wikipedia-persian.ir> be cancelled.
Date: August 28, 2017
1 While the Complaint is brought under the Policy and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.