Automattic Inc. v. Pawel Janic
Claim Number: FA1008001338752
Complainant is Automattic
Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worxpress.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.
On August 4, 2010 Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <worxpress.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@worxpress.com by e-mail. Also on August 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant holds trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for its WORDPRESS mark (including Reg. No. 3,201,424, issued January 23, 2007).
Complainant markets a downloadable software program for use in website design and content management under its WORDPRESS mark.
Respondent registered the disputed domain name on December 12, 2008.
The disputed domain name does not resolve to an active website.
Respondent’s <worxpress.com> domain name is confusingly similar to Complainant’s WORDPRESS mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <worxpress.com> domain name.
Respondent registered and uses the <worxpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its WORDPRESS mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i) notwithstanding that Respondent resides and/or operates in another country. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient that that complainant have rights in a mark in some jurisdiction).
Respondent’s <worxpress.com> domain name is confusingly similar to
Complainant’s WORDPRESS mark.
Respondent’s domain name replaces the letter “d” in Complainant’s mark
with the letter “x” and adds the generic top-level domain (“gTLD”) “.com.” These distinctions are not adequate to avoid
a finding of confusing similarity under the Policy. See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000)
(finding that a respondent’s <newbergerberman.com> domain name was confusingly
similar to a complainant’s NEUBERGER BERMAN mark despite a slight difference in
spelling); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to a complainant's BELKIN
mark because the name merely replaced the letter “i” in the mark with the
letter “e”); see also Jerry Damson, Inc.
v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Thus, the Panel finds that Respondent’s <worxpress.com>
domain name is confusingly similar
to Complainant’s WORDPRESS mark for purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations under this head of the Complaint, the burden shifts to Respondent to prove that it nonetheless has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights to and legitimate interests in a disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have rights or legitimate interests in the domain).
From our review of Complainant’s submissions, we are satisfied that Complainant has established a prima facie case in support of its contentions on the point of Respondent’s lack of rights or interests as to the contested domain name. Respondent, for its part, has failed to submit a Response to these proceedings. We are therefore free to conclude that Respondent has no rights or interests in the disputed domain name which would satisfy the requirement of the Policy. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Notwithstanding, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and
Respondent does not deny, that Respondent is not commonly known by the disputed
domain name. Moreover, the pertinent WHOIS
information identifies the registrant of the disputed domain name only as
“Pawel Janic,” which does not resemble the contested domain name. On this record, we are constrained to
conclude that Respondent is not commonly known by the disputed domain name so
as to have demonstrated rights to or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see
also Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that a respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the relevant WHOIS
information, suggesting that that respondent was commonly known by the disputed
domain name).
We also note that Complainant indicates, without objection from Respondent, that Respondent’s domain name fails to resolve to an active website. Respondent’s failure to make active use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using the domains for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
We may consider the totality of the circumstances when conducting an analysis of the question of bad faith under Policy ¶ 4(a)(iii), and we are not limited to consideration of the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.
In light of this, we
must consider that Respondent’s <worxpress.com> domain name does not resolve to an active
website and that a failure to make active use of the disputed domain name is
evidence of its bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v.
For this reason, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <worxpress.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 20, 2010
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