WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Frank Smith

Case No. D2016-2586

1. The Parties

Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America ("United States"), internally represented.

Respondent is Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Frank Smith of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <wikipediatrade.com> 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 December 20, 2016. On December 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 Complainant on January 4, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 6, 2017.

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 Respondent of the Complaint, and the proceedings commenced on January 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 1, 2017.

The Center appointed Roberto Bianchi as the sole panelist in this matter on February 7, 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

Complainant is a United States non-profit corporation.

Complainant owns numerous registrations for the WIKIPEDIA trademark, including the following registrations with the United States Patent and Trademark Office:

The disputed domain name was registered on July 27, 2012. The disputed domain name resolves to a website where automobiles and related products are offered for sale.

5. Parties' Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to the WIKIPEDIA marks in which Complainant has rights. The disputed domain name contains the full WIKIPEDIA mark, adding only the common word "trade" to the end of the mark. The addition of a generic word, such as "trade," does not make the disputed domain name distinctive.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name. Although Respondent's website uses the domain name <wikipediatrade.com>, the text of the website refers to Respondent's business as "Wiki Auto Blog". Respondent does not refer to their services by any version of the name "Wikipediatrade".

Respondent is not a licensee of or otherwise affiliated with Complainant, and Complainant has never authorized or otherwise condoned or consented to Respondent's registration of the disputed domain name.

Additionally, Respondent has registered the disputed domain name through a privacy protection service and sought to hide their identity. Previous UDRP panels have found that respondents who have taken similar steps have failed to establish this criterion. See, e.g., Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435 and The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises/ et al., WIPO Case No. D2011-2202.

Given Respondent's attempt to mask his or her identity behind a privacy protection service, the Panel should presume that Respondent is not commonly known by the disputed domain names. Under these circumstances, Complainant has made a prima facie showing that Respondent does not any have rights or legitimate interests in the domain name.

The disputed domain name was registered and is being used in bad faith. Respondent reserved, used, and is holding the disputed domain name willfully, in bad faith, and in complete disregard of Complainant's exclusive rights to use and authorize the use of the WIKIPEDIA marks. Indeed, Respondent's actions constitute numerous instances of bad faith pursuant to paragraph 4(b) of the Policy, as set forth below. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant's well-known marks.

Respondent's website bills itself as a custom car manufacturer, which builds replicas of luxury car brands. The website advertises cars, body kits and customizations for sale by the company. Visitors to the website are encouraged to fill out an order form in order to receive a quote for their custom car. Potential customers can then purchase their order on an installment plan via bank transfer. These services are in no way related to providing an online encyclopedia or other reference services, making the disputed domain name misleading, and likely chosen for its potential for association with Complainant's projects. Using a well-known mark to divert Internet users is not bona fide use, and constitutes an instance of bad faith. Simply registering confusingly similar domain names constitutes bad faith. See, e.g., Nik Carter v. The Afternoon Fiasco, WIPO Case No. D2000-0658.

Moreover, Complainant's first use of the WIKIPEDIA mark predates Respondent's registration of the disputed domain name in 2012, and therefore, Respondent knew or should have known of Complainant's rights to the WIKIPEDIA mark. At the time that the mark was registered, Complainant was known worldwide, appearing, for example, in the BBC and the New York Times prior to the registration by Respondent. By the time Respondent registered the disputed domain name in 2012, Complainant's website "www.wikipedia.org" ranked in the sixth place in worldwide traffic. Indeed, in light of the widespread use and protection of the WIKIPEDIA trademark, it is virtually impossible that Respondent chose the disputed domain name while unaware of Complainant's use of the WIKIPEDIA mark or the domain name <wikipedia.org>. As a previous UDRP panel stated, "the trademark WIKIPEDIA is so widely known around the world for providing information in the field of general encyclopedic knowledge via the Internet that it is inconceivable …that the Respondent might have registered a domain name similar to this mark without knowing of it …." See Wikimedia Foundation Inc. v. Protected Domain Services – Customer ID: NCR 1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown to the satisfaction of the Panel that it has trademark rights in the WIKIPEDIA mark. See section 4 above.

The Panel notes that the disputed domain name incorporates the WIKIPEDIA mark in its entirety, just adding the generic and common name "trade" and the generic Top-Level Domain ("gTLD") ".com". It is well established that the addition in a domain name of a generic term to a mark is inapt to distinguish the domain name from the mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's WIKIPEDIA mark. The first requirement of the Policy is thus met.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not commonly known by the disputed domain name. The text of the website at the disputed domain name refers to Respondent's business as "Wiki Auto Blog". Respondent does not refer to their services by any version of the name "Wikipediatrade."

Complainant also contends that Respondent is not a licensee of or otherwise affiliated with Complainant, and that Complainant has never authorized or otherwise condoned or consented to Respondent's registration of the disputed domain name. In addition, Respondent has registered the disputed domain name through a privacy protection service and sought to hide their identity.

In the opinion of the Panel, the evidence on record supports these contentions of Complainant. According to the corresponding WhoIs database, the registrant of the disputed domain name is "Frank Smith", identified as Respondent by Complainant, together with "Domain Admin Privacy Protection Service Inc. d/b/a privacyprotect.org". In addition, the website at the disputed domain name appears to be offering the services of "CMC", exclusively. Since Respondent does not appear to be known – commonly or otherwise – by the disputed domain name, paragraph 4(c)(ii) of the Policy is not applicable.

Complainant has also shown that the website at the disputed domain name is being used to promote and market the manufacturing by "CMC" of replicas – described on the website as "rivals" or "perfect reproductions" – of classic automobiles such as Bugatti, Ferrari, Lamborghini, et cetera, for a price to be paid in installments. In the opinion of the Panel, such an offering is not bona fide because Complainant's well-known WIKIPEDIA mark is being used to promote and market goods or services totally unrelated to this mark and the goods and services it protects.

The Panel notes that the home page of the website at the disputed domain name is entitled "Wiki Auto Blog", and that "wiki" may be considered a relatively common term. However, the Panel also notes that the disputed domain name is <wikipediatrade.com> and not <wikitrade.com>, and that Complainant's mark is distinctive. See Wikimedia Foundation Inc. v. Jamie Wells, WIPO Case No. D2010-0269, finding that the WIKIPEDIA mark is "a distinctive coined name combining 'wiki' (a term for a website or software allowing easy creation and editing of interlinked web pages) and 'pedia' (the last syllables of "encyclopedia"), suggesting a wiki-based encyclopedic reference website."). Accordingly, paragraph 4(c)(i) of the Policy does not apply.

Further, since the services offered on the website at the disputed domain name are being promoted and marketed for profit, while using Complainant's renowned mark WIKIPEDIA to lure consumers into Respondent's website, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, pursuant to paragraph 4(c)(iii) of the Policy.

In the opinion of the Panel, these facts and circumstances are sufficient to consider that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. According to the consensus reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1, "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 the 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 […]").

Since Respondent failed to provide any explanation or evidence whatsoever for its registration of the disputed domain name, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that Complainant's registrations for the WIKIPEDIA mark predate the registration of the disputed domain name by several years. For instance, United States Reg. No. 3040722 predates the registration of the disputed domain name by six years. See section 4 above. In addition, the Panel agrees with previous UDRP panels that the WIKIPEDIA mark is well known with regard to an encyclopedia accessible via the Internet. See Wikimedia Foundation Inc. v. Protected Domain Services – Customer ID: NCR 1181691 / webudaipur, web udaipur, WIPO Case No. D2011-0107 (finding that the WIKIPEDIA mark is widely known around the world for providing information in the field of general encyclopedic knowledge via the Internet); see also Wikimedia Foundation, Inc. v. Domain Administrator, Whois Privacy Services Pty Ltd / Yeongju Hong and Mike Kerry, Dzone Inc., WIPO Case No. D2015-1148 (finding that the WIKIPEDIA mark is "widely known due to its global presence and recognition"); see also Wikimedia Foundation, Inc. v. Host Master, Above.com Domain Privacy, WIPO Case No. D2015-0132 (finding that WIKIPEDIA is one of the best-known trademarks on the Internet).

From these facts and circumstances the Panel concludes that in all likelihood Respondent knew of, and had the WIKIPEDIA mark in mind when it registered the disputed domain name, i.e., that this registration was in bad faith.

As seen above, Complainant has shown that the website at the disputed domain name is being used to promote and market the services provided by "CMC", consisting of manufacturing replicas – also called on the website, "rivals" or "perfect reproductions" – of classic automobiles such as Bugatti, Ferrari, Lamborghini, et cetera, for a price to be paid in installments by the consumer placing an order. In the opinion of the Panel, by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. Under paragraph 4(b)(iv) of the Policy, this is a circumstance of registration and use of the disputed domain name in bad faith. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.

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 <wikipediatrade.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: February 17, 2017