Automattic Inc. v. Domain Admin
Claim Number: FA1008001340441
Complainant is Automattic Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordprss.com>, registered with Rebel.com Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 11, 2010.
On August 12, 2010, Rebel.com Corp confirmed by e-mail to the National Arbitration Forum that the <wordprss.com> domain name is registered with Rebel.com Corp and that Respondent is the current registrant of the name. Rebel.com Corp has verified that Respondent is bound by the Rebel.com Corp 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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@wordprss.com by e-mail. Also on August 19, 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 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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:
1. The Complainant has rights to the WORDPRESS Trademarks and makes extensive use of them such that they have become well-known.
(a) Complainant Owns The Marks Complainant is the exclusive licensee of the distinctive and well known WORDPRESS trademark and its corresponding logo (the “Marks”). The Marks are owned by the WordPress Foundation, however, for the remainder of this Complaint, Complainant and the WordPress Foundation will collectively be referred to as “Complainant”. At least as early as March 28, 2003, Complainant commenced use of the Marks in connection with what has become the largest self-hosted blogging and internet publishing tool in the world, used on millions of websites and seen by tens of millions of people every day. Since its inception, Complainant has continually used the Marks in commerce.
(b) The Marks Are Extensively Used, Promoted and Protected. Complainant is a leading provider of blogging and internet publishing services and its website <wordpress.com> ranks at No. 25 in visitor traffic on the entire internet according to the metrics used by Quantcast.com. In 2006 WordPress landed the famous news broadcast organization CNN as a client The WORDPRESS services have also been the subject of national publicity including various news articles, YouTube videos and a book, in the famous “Dummies” series, entitled “WordPress For Dummies.” Complainant has also been the recipient of recognition and awards. In 2007 WordPress won a Packt Open Source CMS Award and in 2009 it won the best Open Source CMS Award. Further, WordPress was featured on the cover of Linux Journal in July of 2008 and in a business section cover story in the San Francisco Chronicle that same month. At that time WordPress was ranked at #31 in the world on the Alexa.com website with 90 million monthly page views. In January of 2009 WordPress appeared in a story in USA Today. By October, 2009, and based on survey evidence, the Open Source CMS Market Share Report reached the conclusion that WordPress enjoys the greatest brand strength of any open source content management system.
Complainant’s <wordpress.com> website provides information to prospective users and generates significant revenue for Complainant. As a result of Complainant’s long and extensive use and efforts to promote the WORDPRESS Marks, the Marks serve to identify and indicate the source of Complainant’s services to the public, and to distinguish its services from those of others. The Marks have become well-known to, and widely recognized by consumers.
Complainant’s WORDPRESS marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns United States and Canadian Trademark Registrations for the Marks as follows:
|
Mark |
Goods and Services |
Reg. No. |
Reg. Date |
|
WORDPRESS |
IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 |
3201424 |
January 3, 2007 |
|
WORDPRESS (Logo) |
IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 |
3201428 |
January 23, 2007 |
|
WORDPRESS |
WARES: (1) Downloadable software program and hosted software for use in designing and managing content on a website. SERVICES: (1) Hosted software solution services, namely providing use of on-line non-downloadable software for use in enabling internet publishing. Used in CANADA since at least as early as January 2004 |
TMA698039 (Canada) |
October 9, 2007 |
2. Respondent’s registration of the <wordprss.com> violates the Policy. Based upon an historical Whois record dated December 16, 2007, Complainant believes that the Respondent behind the privacy protection services is an individual named Hanjin Wo with an address of Hwanggeum 4-dong, Suseong-gu, Daegu, 706976 Korea. Should the Registrar confirm this to be the case, Respondent is a known cybersquatter. In a prior dispute against the Respondent, Shutterfly.com, Inc. v. Hanjin Wo, NAF Claim No. FA0801001140703 (2008) the Panel held that (“because the disputed domain name [<shuttterfly.com>] differs from the SHUTTERFLY mark by only one letter, the Panel finds that Respondent is engaging in typosquatting” and that Respondent’s bad faith was clear under both Policy ¶4(b)(iii) and (iv).). Further, in The Coryn Group II, LLC formerly The Coryn Group, Inc. v. Hanjin Wo, NAF Claim No. FA0804001174493 (2008), in ordering the transfer of the misspelled domain <applevacatoins.com>, “[t]he Panel finds that a respondent’s typosquatted version of a complainant’s mark used to attract unknowing Internet users is evidence that Respondent lacks all rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii)” and that “[t]yposquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”
(a) The <wordprss.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s domain <wordprss.com> is confusingly similar, on its face, to Complainant’s registered and distinctive WORDPRESS trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name <wordprss.com>.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark, possibly against the same Respondent as in the present dispute). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id. See also, Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a nearly identical copy of Complainant’s Marks (merely omitting the letter “e”), thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <wordprss.com> website. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <wordprss.com> web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant. This is apparent because the Marks are clearly used on Respondent’s web page.
Finally, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant when conducting the analysis of confusing similarity because all domain names are required to have a top-level domain. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
(b) Respondent has no rights or legitimate interest in the domain name <wordprss.com> Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <wordprss.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant. ICANN panels have found that leading consumers who are searching for a particular business, to a site where other services provided by unrelated entities are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the name <wordprss.com> and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by the names “WORDPRESS” (or “WORDPRSS” for that matter) nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the WORDPRESS name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <wordprss.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s WORDPRESS services, who used the domain name <wordprss.com>, would be confused and think they were visiting a site of the Complainant’s site until they discovered that they were in a directory of links to other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to a directory site over which Complainant has no quality control.
(c) Respondent Registered The Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv). As noted above, the <wordprss.com> Domain is confusingly similar to Complainant’s WORDPRESS Marks and there is no other rational explanation for the existence of this Domain other than it having been copied from the Marks. In fact, a Google search for the terms “word”, “pr” and “ss” yields no organic results and only shows links referring to Complainant.
Respondent intentionally used the Marks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in the Marks through Complainant’s Trademark Registrations as well as its extensive use of the Marks which predates the creation date of the <wordprss.com> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks..
Respondent is obtaining commercial gain from its use of the <wordprss.com> website. This is a directory or “pay-per-click” website providing a listing of hyperlinks to other websites. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the <wordprss.com> website. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to commercial third parties. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <wordprss.com> domain alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to individuals, groups or entities which are unrelated to Complainant, on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the <wordprss.com> web page. Respondent’s use of the domain name is commercial because the various companies linked to the <wordprss.com> directory site benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Finally, as more fully set forth above, Respondent uses the Marks intentionally in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s WORDPRESS Marks and such intentional action, alone, is strong evidence of its bad faith. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <iredale.com> domain in bad faith..
B. Respondent failed to submit a Response in this proceeding.
Complainant, Automattic Inc., holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WORDPRESS mark (e.g., Reg. No. 3,201,424 registered January 23, 2007). Complainant uses the WORDPRESS mark in connection with a self-hosted blogging and internet publishing tool.
Respondent registered the <wordprss.com> domain name on March 25, 2007. The disputed domain name resolves to a pay-per-click website.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the WORDPRESS mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,201,424 registered January 23, 2007). The Panel finds these trademark registrations sufficiently prove Complainant’s rights pursuant to Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Moreover, the Panel finds it is irrelevant whether Complainant holds registration with the trademark authority in the country in which Respondent operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant claims Respondent’s <wordprss.com> domain name is confusingly similar to its WORDPRESS mark. Respondent omits the letter “e” from Complainant’s mark in the disputed domain name. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds these slight alterations do not negate a finding of confusing similarity. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶4(a)(i).); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <wordprss.com> domain name is confusingly similar to Complainant’s WORDPRESS mark pursuant to Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <wordprss.com> domain name under Policy ¶4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to respond, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶4(c).
The WHOIS information lists “Domain Admin” as the registrant of the disputed domain name, which the Panel finds is not similar to the <wordprss.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).
Complainant contends Respondent uses its disputed domain name to resolve to a website that displays links to third-party websites. Complainant further contends Respondent profits from this use through the receipt of pay-per-click fees. Based on the evidence in the record, the Panel finds Respondent uses a confusingly similar domain name to operate a pay-per-click website. Therefore, the Panel determines Respondent’s use does not qualify as a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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 finds Complainant has satisfied Policy ¶4(a)(ii).
As previously discussed, Respondent’s <wordprss.com> domain name is confusingly similar to Complainant’s WORDPRESS mark. In addition, Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Consequently, the Panel finds 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 Respondent’s website. Therefore, the Panel concludes Respondent has engaged in registration and use in bad faith pursuant to Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordprss.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 5, 2010
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