WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2016-1344
1. The Parties
The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), represented internally.
The Respondent is Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <wiikipedia.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2016, 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 July 4, 2016 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 amended Complaint on July 8, 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 July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 18, 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 is a nonprofit corporation of San Francisco, California, dedicated to encouraging the growth, development and distribution of free, multilingual, educational content. The Complainant was founded in 2003 and it manages 11 free knowledge projects built and is maintained by a community of over 77,000 active volunteers. Wikipedia is the oldest and largest projects of the Complainant. Since its founding in 2001, Wikipedia has grown to become a trusted and beloved cultural institution and today offers over 40 million articles in over 280 languages, has over 500 million unique visitors each month, and is consistently ranked as one of the ten most popular web properties in the world.
The Complainant has obtained registration of the mark WIKIPEDIA from inter alia the United States Patent and Trademark Office and has used the mark since January 2001. Details of some of the Complainant's registrations in the United States and internationally are set out in detail in the Complaint and referred below. Moreover, copies of the registration certificates evidencing ownership of the marks referred to in the Complaint are set out at annexes to the Complaint.
The disputed domain name was registered on August 10, 2004. The disputed domain name appears to have been used in connection with malicious computer software or malware.
5. Parties' Contentions
The Complainant contends that the disputed domain name is nearly identical or confusingly similar to his trademark WIKIPEDIA, except with the addition of the letter "i". The Complainant shows that it obtained registration of the trademark WIKIPEDIA from the United States Patent and Trademark Office on January 10, 2006 and that the registration indicates first use of the trademark in January 2001. The Complainant also puts forward that it owns approximately 292 trademark registrations worldwide for the WIKIPEDIA trademark and has extensive common law rights and has acquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001. Moreover, the Complainant shows that the disputed domain name is a standard example of typo-squatting, employing a slight misspelling of the WIKIPEDIA trademark and instances of typosquatting are inherently confusing. The disputed domain name contains the entire WIKIPEDIA trademark with an additional letter inserted in the middle. Adding a single letter, especially one that does no significantly alter the appearance or pronunciation of the world trademark, constitutes confusing similarity.
In addition, the Complainant contends that the Respondent has no legitimate interest in the disputed domain name. The Respondent is not a licensee of or otherwise affiliated with the Complainant and the Complainant has never authorized or otherwise condoned or consented to Respondent's registration of the disputed domain name. Moreover, the Respondent has not made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or service for legitimate non-commercial purposes. Rather, the Respondent is using the disputed domain name to direct to malware and adware.
The Complainant also contends that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's well-known trademarks. The Complainant concludes that the Respondent reserved, used and is holding the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted to the Panel by the Complainant.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated inter alia its ownership of the United States trademark WIKIPEDIA registered under No. 3,040,722 on January 10, 2006 for services in international class 41; of the United States trademark WIKIPEDIA registered under No. 3,505,429 on September 23, 2008 for goods and services in international classes 9, 35, 38, 41 and 42; and of the International Trademark registered under No. 839,132 as of December 16, 2004 for services in international class 41.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark. Here, the disputed domain name <wiikipedia.org> has two differences from the trademark of the Complainant WIKIPEDIA: the addition of the generic Top-Level Domain ("gTLD") ".org" suffix and the addition of the letter "i" to the trademark.
The addition of the gTLD ".org" is without legal significance from the standpoint of comparing the disputed domain name to the mark WIKIPEDIA since use of a gTLD is a technical requirement, ".org" is one of only several such gTLDs, and ".org" does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
The addition of a letter "i" is visually apparent only on close inspection. A visual comparison of the disputed domain name with the Complainant's trademark provides the strongest support for the assertion that it is confusingly similar to it. The trademark WIKIPEDIA has a high degree of distinctiveness of the Complainant's activity (see Wikimedia Foundation, Inc. v. Privacy Protect, Privacy Protection / Email Marketing Systems Inc, WIPO Case No. D2015-1810). A domain name which differs by one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (the only difference between the domain name and the trademark is the purposeful misspelling, created by the addition of a letter "h"); Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (closely misspelled domain name satisfies "confusingly similar" factor); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (the domain name differs from the mark merely by the addition of the letter "l" in the domain name, and such addition does not prevent the domain name from being considered virtually identical or confusingly similar to the Complainant's mark); Alta Vista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937 (the domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (the domain name <0xygen.com>, spelled with a zero rather than the letter "o", is confusingly similar to trademark OXYGEN); The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 (the disputed domain names comprise common misspellings of the term "Nasdaq", the only difference being in each case the lack of only one letter; quite clearly, the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant's website, a practice dubbed "typosquatting" and condemned in a number of UDRP panel decisions.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states: "[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]".
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. The Complainant has established that it is the owner of the WIKIPEDIA trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the WIKIPEDIA trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "Wikipedia" (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910.
The Respondent has not used or made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services or legitimate noncommercial purposes. To the contrary the Respondent, according to the Complainant's unrebutted contentions, is using the disputed domain name in connection with malicious computer software or malware. The Complainant submitted evidence with the Complaint that upon attempting to visit the site to which the disputed domain name visitors are greeted by a pop-up message warning them that their computer has crashed or been infected by a virus and advising them to seek help by calling a specified toll-free number. As held by previous UDRP panels in similar situations, this does not give rise to a right or a legitimate interest in the disputed domain name (see e.g. Wikimedia Foundation, Inc. v. RespectedResponse.org / Email Marketing Systems Inc, WIPO Case No. D2015-1820).
Under such circumstances, the Panel agrees with the solution of the panel in Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., WIPO Case No. D2015-2140, where it was stated that:
"There is no evidence that the Respondent has neither registered the disputed domain name in connection with a bona fide offering of goods or services nor used the disputed domain name for legitimate noncommercial or fair use purposes. Rather the Complainant points out the Respondent is using <wiipedia.com> to disseminate malicious computer software or malware. This can be seen from Annex 7 to the Complaint which consists of screenshots of the website under the disputed domain name. Use of a well-known mark to deceive Internet users and maliciously infect their computer systems is not a bona fide use of the mark. In this case, the Respondent's use of the disputed domain name puts users at risk. A parallel example is the earlier UDRP decision of Wikimedia Foundation, Inc. v. Mildred Valentine / Domain Hostmaster, WIPO Case No. D2014-2283".
In these circumstances the Panel finds that the Complainant, in the absence of evidence to the contrary, has shown that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
As regards bad faith registration, we note that the disputed domain name was registered on August 10, 2004. The Complainant registered its first trademark WIKIPEDIA internationally on December 16, 2004. It also registered a United States WIKIPEDIA trademark on January 10, 2006 where it was acknowledged that first use in commerce was in 2001.
Having in mind the above and the evidence adduced by the Complainant in this case, the Panel agrees to similar solutions that "In light of the Complainant's well-established identity and the widely known WIKIPEDIA Mark, the Panel finds it very likely that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name (2004). By that time, Wikipedia had existed for three years and was well-known online as it was mentioned in high-profile news publications. It has been established by previous UDRP panels that there may be bad faith when a complainant's trademark is shown to be well-known or in wide use at the time of registration of a disputed domain name (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). See Wikimedia Foundation, Inc. v. Domain Administrator, Private Registration / Scott Elliott, Transcom Ltd., WIPO Case No. D2015-1404.
A similar solution it was found in Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098: "The Complainant contends that in the course of 2001 following its first use of the 'Wikipedia' name it built up a sufficient reputation and goodwill to give rise to unregistered common law trade mark rights in respect of the name."
The Panel is satisfied on the evidence submitted that by the date of registration of the first of the Domain Names to be registered (May 20, 2004) the Complainant had indeed acquired such rights. Were there any doubt in the matter the fact that the Respondent so obviously sought to 'ape' the 'Wikipedia' name for his commercial purposes confirms the existence of those rights. To put it another way, it is inconceivable to the Panel that anyone would have registered any of the Domain Names were it not the case that at date of registration there was already in existence a significant reputation and goodwill in respect of the name 'Wikipedia'".
As regards the use of the disputed domain name, the Complainant contends that the disputed domain name is used in connection with malicious computer software or malware.
Such activity amounts to bad faith use of the disputed domain name; "The dissemination of malware through a predictable typo-variant is often used to steal consumer information for commercial gain and this is evidence of bad faith. Even if it is unclear whether or not the Respondent intended to manipulate the mark WIKIPEDIA for ordinary commercial gain, the Respondent's malicious conduct is still considered evidence of bad faith following earlier decisions such as Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303". See Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., supra. The Respondent must have registered the disputed domain name with the intention to disrupt the Complainant's business by damaging the Complainant's reputation, as Internet visitors diverted to the Respondent's website would believe that the website is related to the Complainant's business and at the same time running the risk of being infected by malware. See in this regard Twitter, Inc. v Moniker Privacy Services /accueil des solutions inc., WIPO Case No. D2013-0062. See Wikimedia Foundation, Inc. v. Domain Administrator, WhoIs Watchdog, Attn: wikopedia.com and wikpedia.com, WIPO Case No. D2015-1341.
An additional fact retained by this Panel is that the Respondent appears to have intentionally attempted to attract for commercial gain Internet users to its website by creating confusion with the Complainant's trademark, through deliberate typo-squatting as to source, sponsorship, affiliation or endorsement of that website and or product or service on that website. See for a similar finding Wikimedia Foundation, Inc. v. Domain Administrator, WhoIs Watchdog, Attn: wikopedia.com and wikpedia.com, supra.
The Respondent registered the disputed domain name using a privacy service. As held by previous UDRP panels "While this is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent's identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Respondent". Bryant Tyson v. Fundacion Private Whois/ Domain IP Holding Corp., WIPO Case No. D2013-0529.
In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel ascertains that the disputed domain name was registered and is being used in bad faith.
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, <wiikipedia.org> be transferred to the Complainant.
Date: September 1, 2016