WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WordPress Foundation v. Cezary Brzezinski

Case No. D2013-2171

1. The Parties

The Complainant is WordPress Foundation of San Francisco, California, United States of America, represented by Fairwinds Partners, LLC, United States of America.

The Respondent is Cezary Brzezinski of Pultusk, Poland.

2. The Domain Name and Registrar

The disputed domain name <owrdpress.org> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2013, 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 Registrar did not clearly disclose the language of the registration agreement. The Center transmitted a further email to the Registrar, on December 30, 2013, in response the Registrar confirmed the language of the registration agreement for the disputed domain name to be Polish. On January 16, 2014, the Center transmitted the language of the proceedings document to the Parties in both English and Polish. On January 16, 2014, the Complainant requested the language of the proceedings to be English and referred to the Language Request which appears in the Complaint. Despite having been invited to do so by the Center, the Respondent did not submit any comment in relation to the language of the proceedings.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both the English and Polish language, and the proceedings commenced on January 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2014. The Center received an email communication from the Respondent on January 26, 2014, in Polish, which translates as follows: “Dear Sirs, With respect to the matter pertaining to the owrdpress.org domain, I declare that I have decided to willingly transfer the domain to the account of the complainant”. No further reply was filed by the Respondent. Accordingly, the Center notified the Respondent’s default on February 18, 2014.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 10, 2014. 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, which is headquartered in the United States, is a leading blogging software provider operating in many countries worldwide, providing one of the most popular self-hosted blogging and Internet publishing tools in the world, used on millions of websites, and seen by tens of millions of people every day in over a hundred languages.

The Complainant holds registrations for the WORDPRESS trademark (“the Mark”) and variations of it in numerous countries including the United States of America (“US”), which it uses to designate a downloadable software program for use in design and managing content on a website. Its US registration No. 3201424 has been in effect since January 3, 2007.

The Complainant conducts business on the Internet using numerous domain names containing the word “wordpress” including <wordpress.com> and <wordpress.org> with its websites relating to its blogging software business resolving from these domain names.

The disputed domain name <owrdpress.com> was created on October 17, 2013 and resolves to a parking web page containing an offer to purchase on auction the disputed domain name, which is expressly mentioned as a “possible typo of: wordpress”.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Mark, and is confusingly similar to the Mark insofar as the disputed domain name contains the Mark in its entirety, save for the inversion of the first letter (“w”) with the second letter (“o”), resulting in a deliberate misspelling.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has never been commonly known by the disputed domain name and never acquired any trademark or service mark rights in the disputed domain name. Furthermore, the Complainant contends that it never consented to the Respondent’s use of the Mark.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and has never used the disputed domain name in connection with a bona fide offering of goods or services. It alleges that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain. Furthermore, the Complainant submits that the Respondent acted in bad faith because it knew or should have known about the Complainant's rights in and to the Mark when registering the disputed domain name.

(v) Finally, the Complainant contends that the Respondent acted in bad faith because the Respondent’s registration and use of the disputed domain name harms the Mark by tarnishing and diluting it.

(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions other than by his email communication of January 26, 2014.

6. Discussion and Findings

A. Procedural Issues

(i) Language of the Proceeding

Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Registrar confirmed that the language of the registration agreement of the disputed domain name is Polish.

The Complainant specifically requested in its Complaint that the proceeding takes place in the English language under paragraph 11(a) of the Rules, quoting several WIPO panel decisions which held that in deciding to use a language other than that of the Registration Agreement, panels may exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, and the expense of time and money by the Complainant. See, The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, citing Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004, and Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.

The Complainant pointed out in this respect that the following facts are relevant:

- The WORDPRESS trademark and the <owrdpress.org> domain name are composed of words (in some case misspelled) which are only recognized in the English language.

- The Respondent’s facility with the English language is evident in its ability to intentionally create such a domain name and a misspelling;

- The website to which visitors are redirected by the <owrdpress.org> domain name appears entirely in the English language;

- Complainant’s business is headquartered in the US and it operates in the English language.

In light of the foregoing, the Complainant argued that the Respondent is capable of communicating in the English language and is targeting the English-language market. As such, it would be inequitable for the Respondent to hide behind a language requirement, other than English, and that the additional cost and burden this would impose upon the Complainant is not warranted. See Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398; Zappos.com, Inc. v. Zufu aka Huahaotrade; WIPO Case No. D2008-1191; Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012.

The Complainant concluded that should the Respondent wish to put forth facts and arguments in favor of conducting these proceedings in a language other than English, it is certainly free to do so in its Response to the Complaint.

Considering the request of the Complainant and the lack of any objection from the Respondent on this point, the Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.

(ii) Default

The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent on the substance of the Complaint within the time limit set by the Policy and the Rules.

Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain names or other remedy have been met.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

B. Requirements of paragraph 4(a) of the Policy

(i) Identical or Confusingly Similar

The disputed domain name is almost identical to the Mark owned by the Complainant, which it replicates almost entirely. Indeed, the Mark is replicated in the disputed domain name, save for the inversion of the first letter with the second (“o” instead of “w”).

The consensus view of UDRP panels is that a domain name which contains an obvious misspelling of a mark will normally be found to be confusingly similar to such mark, where the misspelled mark remains the dominant or principal component of the domain name. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Allstate Insurance Company v. Acme mail, WIPO Case No. D2010-2162; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Confédération Nationale du Crédit Mutuel v. Web Advertising Corp., WIPO Case No. D2007-0655; and Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460.

The Panel finds that the similarity in this case between the disputed domain name <owrdpress.org> and the Mark is such as to create a likelihood of confusion for Internet users.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Although a 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 proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.

Thus, the consensus view of UDRP panels 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 a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.

The website associated with the disputed domain name resolves to a parking page offering the purchase of the disputed domain name on auction.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name, (ii) is not commonly known by the disputed domain name and (iii) received no consent from the Complainant.

In the circumstances, the Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

(iii) Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Mark.

It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v.The Polygenix Group Co., WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

The Panel finds that the notoriety of the Mark has been determined in WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427 (“The trademark WORDPRESS is so-well know globally for blogging software …”) and that it makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

In the present case, the disputed domain name resolves to a webpage containing an offer to purchase on auction the disputed domain name, which is expressly mentioned as a possible typo of “wordpress”. The Panel finds that this is a clear indication of bad faith in itself.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

Besides, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.

Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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, <owrdpress.org> be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: March 24, 2014