WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Organization for Transformative Works v. Bradley Binkley
Case No. D2018-0132
1. The Parties
The Complainant is Organization for Transformative Works of New York, New York, United States of America (“United States”), represented by Heidi Tandy, United States.
The Respondent is Bradley Binkley of Chicago, Illinois, United States.
2. The Domain Name and Registrar
The disputed domain name <archiveofourowno.com> 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 January 27, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on March 13, 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
The Complainant has used the ARCHIVE OF OUR OWN mark in connection with fanfiction, storytelling, writing archives and legal services since as early as the summer of 2008, and asserts common law rights in the mark. The Complainant’s “www.archiveofourown.com” website is one of the top 2000 websites in the world, and ranked at 751 in the United States, based on statistical date made available by Alexa. Over 21,000 sites currently link to the Complainant’s “www.archiveofourown.com” website, and a large number of visits to the website come from search engines.
The Respondent registered the disputed domain name <archiveofourowno.com> on November 4, 2017. The disputed domain name resolved to a website that appears for all practical purposes to be a clone of the Complainant’s website. The Complainant suspects that the Respondent’s “fake” website is being used for phishing or other fraudulent purposes.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s ARCHIVE OF OUR OWN mark, in which the Complainant asserts common law rights by virtue of the use of mark since 2008 with the Complainant’s website. The Complainant observes that the disputed domain name differs from the Complainant’s mark only by the insertion of the letter “o” immediately following “archiveofourown” and preceding the Top-Level Domain (“TLD”) “.com.”
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant observes that the website to which the disputed domain name resolves closely mimics the Complainant’s website, using the same design and layout as the home page of the Complainant’s website, and infringing the Complainant’s copyrighted materials. The Complainant maintains the Respondent has not been authorized or licensed to use the Complainant’s mark, and that the Respondent is not commonly known by the disputed domain name. To the contrary, the Complainant submits that the Respondent is making an unauthorized and illegitimate use of the disputed domain name to lure Internet visitors to Respondent’s website in order to phish for personal information.
The Complainant relates that, according to ZDNet, cyber criminals are creating an average of 1.4 million phishing websites each month with fake pages designed to mimic the company being spoofed, and that up to 90 percent of all data breaches occur as a result of credentials stolen during a phishing attack. As such, the Complainant asserts that the Respondent is making an illegitimate use of the disputed domain name. The Complainant submits that the use of a domain name to divert Internet traffic to a website in furtherance of a scam or phishing scheme is not a bona fide offering of goods or services. The Complainant asserts that there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Respondent notes that the Respondent registered the disputed domain name less than three months ago, whereas the Complainant has used its ARCHIVE OF OUR OWN mark since 2008, and has established rights in the mark. The Complainant reiterates that according to ZDNet some 1.4 million phishing websites are created each month and that 90 percent of all date breaches occur as a result of credentials stolen during a phishing attack. The Complainant submits that the Respondent is using the disputed domain name in bad faith to redirect Internet users to a substantially similar reproduction of the Complainant’s website, creating the impression that the Respondent’s website is owned and operated by the Complainant, in order to phish for personal information.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <archiveofourowno.com> is confusingly similar to the Complainant’s ARCHIVE OF OUR OWN mark, in which the Complainant has established common law rights through long and substantially exclusive use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
The Complainant’s ARCHIVE OF OUR OWN mark is clearly recognizable in the disputed domain name.2 The addition of the letter “o” following “archiveofourown” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark, and is evocative of typosquatting. TLDs generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The record reflects that the Respondent registered and is using the disputed domain name with a website that mimics the Complainant’s website and it is possible that it being used in furtherance of a fraudulent phishing scheme.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident that the Respondent was aware of the Complainant and the Complainant’s ARCHIVE OF OUR OWN mark when registering the disputed domain name. In the absence of any explanation by the Respondent, the Panel considers in all likelihood that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, through the impersonation of the Complainant in furtherance of a fraudulent phishing scheme.
Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s ARCHIVE OF OUR OWN mark in mind when registering the disputed domain name. The record strongly suggests that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances, the Respondent’s registration of the disputed domain name (including typosquatting) smacks of opportunistic bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <archiveofourowno.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: March 27, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.