Wikimedia Foundation, Inc v. Domain Administrator, Private Registration / Scott Elliott, Transcom Ltd




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Domain Administrator, Private Registration / Scott Elliott, Transcom Ltd.

Case No. D2015-1404



1. The Parties

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


The Respondent is Domain Administrator, Private Registration of Tampa, Florida, United States / Scott Elliott, Transcom Ltd of Guernsey.


2. The Domain Name and Registrar

The disputed domain name is registered with Nettuner Corp. DBA Webmasters.com (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2015, 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 August 18, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on August 19, 2015.


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 August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2015.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on September 17, 2015. 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, Wikimedia Foundation, Inc., is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. The Complainant was founded in 2003, and today manages eleven free knowledge projects built and maintained by a community of over 70,000 active volunteers. Amongst the most popular projects managed by the Complainant are: (i) Wikimedia Commons, a shared media repository of almost 25 million freely usable images, sound files, and video files, (ii) Wiktionary, an online dictionary and thesaurus, (iii) Wikivoyage, a free, worldwide travel guide, and first and foremost, and (iv) Wikipedia, a free, online encyclopedia compiled, edited, and maintained by over 70,000 active contributors.


On January 10, 2006, the Complainant obtained registration for the trademark WIKIPEDIA from the United States Patent and Trademark Office, for “providing information in the field of general encyclopedic knowledge via the Internet.” The registration indicates first use of the mark in commerce on January 13, 2001. In subsequent years, the Complainant has registered a number of other marks that incorporate the WIKIPEDIA mark.
Including the above, the Complainant owns approximately 148 trademark registrations worldwide for the Wikipedia trademark and the foreign equivalents thereof, has extensive common law rights, and has acquired distinctiveness in the WIKIPEDIA trademark since its first use in 2001. The registered trademarks in the United States mentioned above, the registered trademarks in additional countries throughout the world, and the Complainant’s common law rights in the WIKIPEDIA trademark are hereinafter referred to as the “WIKIPEDIA Mark(s)”.
The disputed domain name was registered by the Respondent on March 1, 2004.



5. Parties’ Contentions

A. Complainant

The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:


1. The disputed domain name is confusingly similar to the WIKIPEDIA Mark in which the Complainant has rights. The Complainant owns the WIKIPEDIA Mark, which is uniquely identified with the Complainant. The disputed domain name is confusingly similar to this trademark. It is an example of typosquatting, and the Respondent is diverting users who are attempting to reach the Complainant’s website to its own page.
2. The Respondent has no rights or legitimate interests 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 the Respondent’s registration of the disputed domain name. In addition, the Respondent is not commonly known by the disputed domain name, nor has put the disputed domain name to any legitimate use, only trading on the goodwill and reputation of the Complainant.
3. The Respondent has registered and is using the disputed domain name in bad faith, as the Respondent has intentionally attempted to attract, through typosquatting, for commercial gain, Internet users to a website where Internet users are asked to complete a survey, by creating a likelihood of confusion with the Complainant’s well-known marks. The Respondent is trading upon the popularity and reputation of the Complainant, in stating that the survey is connected with the Complainant and offering people the chance to “win” up to USD 1,000.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.




6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).



A. Identical or Confusingly Similar




Paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. There are therefore two conditions in paragraph 4(a)(i) that the Complainant must meet: First, that it has “rights in a trade or service mark”, and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.



The Complainant provided evidence that it has prior and well-established registered rights in the WIKIPEDIA Mark. From the evidence on the record, the Panel finds that the WIKIPEDIA mark is widely known mark as a result of the considerable time, effort, money, and promotion of the WIKIPEDIA Mark on the part of the Complainant, and its association with goods and services emanating from the Complainant. Therefore, the Panel finds that the first condition of paragraph 4(a)(i) of the Policy is met.
In respect to the second condition of paragraph 4(a)(i) of the Policy, the disputed domain name contains the full WIKIPEDIA mark with the addition of a single duplicative letter in the middle of the mark: a second “k” next to the “k” that is properly present in the mark. This creates both visual and phonetic similarity, which previous UDRP panels have considered to be incorrectly confusing in terms of sight, sound and overall impression (see Wikimedia Foundation, Inc. v. Moniker Privacy Services/Domain Admin, Frontline Media, LLC, WIPO Case No. D2011-0106; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).
The Panel finds it clear that altering the mark by one letter is strongly evocative of typosquatting, which “consists of registering misspelled trademarks as domain names, and then deriving profits from Internet users seeking the rightful owners of those trademarks as revenues can be generated by web links and pop up advertisements on the websites to which those domain names point or on the websites on which those domain names are parked” (see Thomson Broadcast and Media Solution, Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746).
In light of the above, the Panel finds that the first element of the Policy has been satisfied.

B. Rights or Legitimate Interests

In order for a complainant to prove that a respondent has no rights or legitimate interests in the disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the Complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in the disputed domain name to the panel.


Three non-exhaustive circumstances are identified to assess the existence of rights or legitimate interests: (i) bona fide prior use of the disputed domain name; (ii) common association with the disputed domain name; and (iii) legitimate noncommercial use of the disputed domain name.
It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been known by the disputed domain name. The Panel notes in this regard that the Respondent registered the disputed domain name through a privacy protection service, and sought to hide its identity.
It is apparent that the only reason the Respondent registered and is using the disputed domain name is that it knew of and wanted to trade on the Complainant’s goodwill and reputation and not for any legitimate noncommercial or fair use purpose. Previous UDRP Panels have held that the type of survey hosted on the Respondent’s website at the disputed domain name is not a legitimate use of a disputed domain name. For instance, in Adidas AG v. Domain Manager, WIPO Case No. D2014-1414, the panel considered a page hosting a similar survey and noted that “since personal data are a valuable commodity, respondent clearly had a purpose of commercial gain”. The Panel concluded that, “this use of Complainant’s mark in the disputed domain name to obtain valuable personal data from visitors presumably attracted by Complainant’s well-known mark is neither a bona fide nor a fair use of the disputed domain name.”
Moreover, the use of typosquatting to redirect unsuspecting users to the Respondent’s website is not a legitimate use of the disputed domain name, and “does not create legitimate rights” to the disputed domain name (see PHE, Inc. v. Bill McCall, WIPO Case No. D2003-0516).

The Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.



Therefore, the Panel finds that the second element of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b)(i) of the Policy provides that 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:


“(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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.”
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).
Additionally, the Panel finds it apparent that the intention of the Respondent was to take advantage of the reputation of the Complainant and its trademarks, attracting Internet users to the website at the disputed domain name, by causing an erroneous association with the Complainant, its activities and products. It is a typical example of typosquatting, which traps users who type an errant second “k” while attempting to visit the Complainant’s website. The very practice of typosquatting “is evidence of the bad faith registration of a domain name” (see Amazon.com Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517).
Indeed, the Panel finds it apparent that this Respondent is attempting to trade upon the goodwill present in the WIKIPEDIA Mark for commercial gain, by confusing users as to the Complainant’s involvement in the website and the survey at the disputed domain name (see, e.g., National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118). The attempt to confuse users is obvious: the survey that they are asked to take claims to be from or related to the Wikimedia Foundation. As the Respondent is not affiliated with the Complainant, this is further evidence of efforts to deceive users, and of bad faith.
As decided in Société pour l’Oeuvre et la Memóire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Therefore, the Panel finds that the third element of the Policy has been satisfied.


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 be transferred to the Complainant.

Gonçalo M. C. Da Cunha Ferreira

Sole Panelist



Date: September 25, 2015



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