Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), internally-represented.
Respondent is Jan Everno of Grandville, Michigan, United States.
The disputed domain name <ewikipedia.org> is registered with Deschutesdomains.com LLC. The disputed domain names <fenwikipedia.org> and <ptwikipedia.org> are registered with Domainamania.com LLC (together the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2019. On January 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 3, 2019, 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 January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 5, 2019. 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.
Complainant is the owner of registrations for the word trademark and service mark (hereinafter “trademark”) WIKIPEDIA on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including registration number 3,505,429, registration dated September 23, 2008, in international classes (“ICs”) 9, 35, 38, 41 and 42, covering, inter alia, software for publishing, storing and organizing audiovisual data in conjunction with a global computer network, and for providing online publications in the form of encyclopedias and encyclopedia articles. Complainant is the owner of additional registrations at the USPTO for the WIKIPEDIA trademark. Complainant also is the owner of international registrations under the Madrid System, including registration number 839132, registration dated December 16, 2004, including designation and acceptance of protection as a European Union Trade Mark (“EUTM”); registration number 907474, registration dated September 20, 2006, covering a substantial number of designated countries; registration number 1178233, registration dated January 19, 2013, covering a substantial number of designated countries; registration number 1226355, registration dated April 3, 2014, covering a substantial number of designated countries, and; registration number 1239634, registration dated June 30, 2014, covering a substantial number of designated countries.
The Panel takes administrative notice that Complainant’s WIKIPEDIA trademark is well known inside the United States and worldwide as promoted by Complainant and used in connection with a public-community developed and maintained online encyclopedia available at “www.wikipedia.org”.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, the record of registration for the disputed domain name <ewikipedia.org> was created on November 16, 2016; the record of registration for the disputed domain name <fenwikipedia.org> was created on February 23, 2018, and; the record of registration for the disputed domain name <ptwikipedia.org> was created on December 11, 2017. There is no indication that a person other than Respondent has owned the aforesaid disputed domain name registrations.
Respondent has used the disputed domain names to direct Internet users to third-party websites. These third-party websites include some that spread malicious software (i.e. malware), and some that provide links to websites that provide advertising links to third-party goods or services, and/or are in competition with Complainant for the hosting of informational content.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the trademark WIKIPEDIA, and that the disputed domain names are confusingly similar to its trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not a licensee or otherwise affiliated with Complainant, and Complainant has never authorized or otherwise consented to Respondent’s registration of the disputed domain names; (2) Respondent is not commonly known by the disputed domain names; (3) Respondent has not made any preparation to use the disputed domain names in connection with a bona fide offering of goods or services, and has not used the disputed domain names for any legitimate noncommercial or fair use purposes; (4) Respondent is engaged in the practice of typosquatting, and; (5) Respondent is using the disputed domain names to direct Internet users to websites that spread malicious software.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) 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 mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location, or of a product or service on Respondent’s website or location; (2) Respondent is trading on the value of Complainant’s trademark by typosquatting; (3) Respondent is using the disputed domain names to profit from pay-per-click advertising revenues; (4) Complainant has warned Respondent that its conduct violates the Policy and infringes on Complainant’s trademark, and; (5) the list of bad faith circumstances in paragraph 4(b) of the Policy is non-exhaustive.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address listed in Respondent’s records of registration. Courier records indicate that delivery of the Written Notice to the address of Respondent was successfully completed. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of ownership of rights in the trademark WIKIPEDIA including by registration at the USPTO and international registration under the Madrid System, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights in its trademark. The Panel determines that Complainant owns rights in the trademark WIKIPEDIA.
The three disputed domain names each fully incorporate Complainant’s distinctive and well-known WIKIPEDIA trademark, adding the prefixes “e”, “fen” and “pt”, respectively. In the circumstances here, the full incorporation of Complainant’s distinctive and well-known trademark in the disputed domain names is sufficient to establish confusing similarity between the disputed domain names and Complainant’s trademark.
The Panel determines that Complainant owns rights in the trademark WIKIPEDIA, and that the disputed domain names are each confusingly similar to that trademark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has used the disputed domain names to direct Internet users to third-party websites spreading malicious software (i.e. malware), as well as to third-party websites with links to goods and services not associated with Complainant. These uses do not establish rights or legitimate interests in favor of Respondent.
Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in each of the disputed domain names.
In order to prevail under the Policy, Complainant must demonstrate that the each of the disputed domain names “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
Respondent registered the disputed domain names confusingly similar to Complainant’s well-known trademark and used them to divert Internet users to websites spreading malicious software, and to websites with links to goods and services not associated with Complainant (presumably earning pay-per-click advertising revenues for Respondent). Respondent has not attempted to rebut Complainant’s evidence of Respondent’s bad faith registration and use of the disputed domain names. The Panel determines that Respondent has used the disputed domain names intentionally for commercial gain to attract Internet users to Respondent’s websites or other online locations by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or other online locations. The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 names <ewikipedia.org>, <fenwikipedia.org> and <ptwikipedia.org> be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: February 12, 2019