WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Danny Nouwen
Case No. DME2017-0011
1. The Parties
Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), represented internally.
Respondent is Danny Nouwen of Rotterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <wikimedia.me> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2017. On December 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2018.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on April 17, 2018. 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
Wikipedia, the online collaborative encyclopedia, is among many projects managed by non-profit Complainant Wikimedia Foundation.
Complainant owns numerous trademarks worldwide containing the term “WIKIMEDIA.” Among Complainant’s large portfolio of relevant registrations are United States Trademark Registration No. 4,824,827 for WIKIMEDIA in classes 9, 16, 18, 25, 35, 36, 38, 41 and 42. That United States registration notes a first use in commerce date for Class 9 of January 25, 2002.
The disputed domain name was registered September 8, 2008. The website to which the disputed domain name routes automatically redirects users to a website displaying pornographic images. The site to which users are redirected purports to be “under construction,” but nonetheless offers users access to a large collection of sexually oriented images in exchange for users posting their own nude photographs.1
5. Parties’ Contentions
A. Complainant
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar or identical to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
The Complaint also alleges that Complainant’s legal counsel sent a written cease and desist communication to the Registrar in May 2017, to which Respondent did not reply.
On the basis of the above, Complainant requests transfer of the disputed domain name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent by courier, facsimile and email to Respondent notification of this proceeding, using the contact information provided by the Registrar. The facsimile notice was unsuccessful; several of the email Written Notices returned delivery errors; and the Written Notice couriered to the Registrant was not deliverable to the address provided. However, delivery to Respondent’s Technical Contact was successfully completed.
The Panel is satisfied that by sending communications to the contact addresses provided by the Registrar, provided by Complainant and listed in the WhoIs records on the day of the notification, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substantive Rules of Decision
The Panel must render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(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.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name <wikimedia.me> is identical to Wikimedia marks in which Complainant has rights.
Panels disregard the TLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. In this case, removing the “.me” ccTLD suffix, the disputed domain name consists simply of Complainant’s WIKIMEDIA mark itself.
The Panel concludes, therefore, that the Complaint establishes the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant avers that Respondent is not commonly known by the disputed domain name and that Respondent has no authorization to use the WIKIMEDIA marks. In the absence of a response, the Panel accepts these undisputed factual averments as true.
Respondent is using the disputed domain name to redirect users to a website that has no relation to the subject matter associated with Complainant’s WIKIMEDIA family of marks. It is not used for critical commentary or anything that remotely might qualify as fair use. Instead, the disputed domain name is used in a scheme of posting and gathering pornographic and explicit images and promoting other websites that generate revenue from adult content and services. The Panel agrees with Complainant, therefore, that Respondent is not making a legitimate noncommercial or bona fide use of the disputed domain name. While the Complaint does not address the question, the Panel further finds, based on the record, that Respondent is not making fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
E. Registered and Used in Bad Faith
The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718 (respondent’s use of disputed domain name to direct users to commercial pornographic websites constituted bad faith). UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, or other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel does not hesitate to find that Respondent knew of Complainant’s WIKIMEDIA marks when Respondent registered the disputed domain name, since the marks had been in existence and widely used well before registration of the disputed domain name.
The Panel finds, therefore that the disputed domain name was registered in bad faith. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Online screens from the pornographic website to which users are redirected do not presently contain live links to other websites. The disputed domain name is used, however, as part of a scheme to promote commercial sexually explicit websites and services wholly unrelated the projects and services associated with the WIKIMEDIA family of marks. The Panel concludes that this activity demonstrates bad faith use by Respondent.2
Respondent’s failure to maintain accurate contact details in accordance with his agreement with the Registrar and his lack of a response to the Complaint are cumulative evidence of bad faith use. E.g., Telstra Corporation Limited, supra; Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.3
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 <wikimedia.me> be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: May 2, 2018
1 The site does not contain live links, however it graphically and prominently advertises something called the “Most Wanted Agency,” listing Respondent’s email address in the <mostwanted.nu> domain at the foot of the page. The website at “www.mostedwanted.nu” displays links to various other sites, including commercial third-party websites offering adult content and a phone number for adult escort services.
2 Many other panels have similarly found that the unauthorized use of identical or confusingly similar domain names to direct users to pornographic websites supports a finding of bad faith and precludes finding legitimate rights and interests under the Policy. E.g., Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381(respondent’s use of domain name to redirect Internet users to pornographic websites “should and could not be considered a bona fide offering of goods or services”); Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187; Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 (finding bad faith where domain resolved to website “at which adult content and links to websites at which pornographic contact [was] being offered . . . and for which Respondent [was] likely receiving commercial gain”).
3 The Complaint also alleges that Respondent’s failure to respond to a cease and desist letter that Complainant’s counsel sent to the Registrar in May 2017 is evidence of bad faith. The Panel notes, however, that the exhibit annexing the referenced “cease and desist” letter is in fact a notice to the Registrar (not to Respondent). The notice requests that the Registrar cease hosting the website at issue. Since the record contains no evidence that a cease and desist letter was sent to Respondent, the Panel cannot embrace Complainant’s contention that Respondent’s “failure” to respond to such a letter establishes bad faith.