Automattic Inc. v. PrivacyProtect.org / Domain Admin / Ruben Garcia
Claim Number: FA1008001341002
Complainant is Automattic Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is PrivacyProtect.org / Domain Admin / Ruben Garcia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com>, registered with Fabulous.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2010.
On August 16, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@wordpres.com, postmaster@wordress.com, postmaster@wordperss.com, and postmaster@worpress.com by e-mail. Also on August 24, 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 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names are confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names.
3. Respondent registered and used the <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Automattic Inc., offers self-hosted blogging and internet publishing tools. Complainant’s services are offered under its WORDPRESS mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,201424 filed March 1, 2006; issued January 23, 2007) with a first use in commerce date of March 28, 2003.
Respondent, PrivacyProtect.org / Domain Admin / Ruben Garcia, registered the disputed domain names not earlier than March 28, 2005. The disputed domain names resolve to pay-per-click websites with links to various third-party websites, some of which compete with Complainant.
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.
The Panel finds that Complainant’s registration of the mark with the USPTO is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i) dating back to Complainant’s date of filing, March 1, 2006. 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 Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant also states that it has common law rights in the WORDPRESS mark dating back to March 28, 2003. The Panel finds that common law rights may be established, pursuant to Policy ¶ 4(a)(i) by Complainant’s production of sufficient evidence that its mark acquired secondary meaning. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant’s USPTO trademark registration indicates a first use in commerce date of March 28, 2003. Additionally, Complainant indicates that in 2004 and early 2005 it was mentioned in articles on the <cnet.com> technology website as well as in the New York Times. Complainant also asserts that a Google search limiting results to dates between 2003 and 2005 and excluding Complainant’s own websites, shows how extensive the reputation of Complainant’s WORDPRESS mark was on the Internet. Complainant states that its services have been the subject of national publicity including various news articles, YouTube videos and a book in the famous “Dummies” series. Complainant indicates that it has been using the WORDPRESS mark extensively and continuously since March 28, 2003 in connection with its internet publishing and self-hosted blog services. The Panel finds that Complainant has provided sufficient evidence to establish common law rights based on its extensive and continuous use of the WORDPRESS mark dating back to Complainant’s first use of the mark on March 28, 2003. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
Respondent’s <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names are confusingly similar to Complainant’s WORDPRESS mark. Respondent’s disputed domain names incorporate common misspellings of Complainant’s mark. The <wordpres.com>, <wordress.com>, and <worpress.com> domain names all simply eliminate a single letter from Complainant’s mark. The <wordperss.com> domain name transposes two letters in Complainant’s mark. All of the disputed domain names append the generic top-level domain (“gTLD”) “.com.” The Panel finds that the elimination of a single letter or transposition of two letters in Complainant’s mark do not render the disputed domain names distinct from Complainant’s WORDPRESS mark. 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 Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel also finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent is not commonly known by the disputed domain names. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Without evidence in the record to the contrary, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii) as Respondent is not commonly known by the <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names. See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent’s disputed domain names resolve to pay-per-click websites with links to various third-party websites, some of which compete with Complainant. As Respondent is using the confusingly similar disputed domain names to profit from the displayed third-party links, the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent is using the disputed domain names to redirect Internet users who are seeking information on Complainant’s services to a website with links to Complainant’s competitors, which interferes with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent is receiving commercial gain from its use of the websites resolving from the disputed domain names. Complainant further alleges that Respondent has registered and used the confusingly similar disputed domain names to attract Internet users by creating a likelihood of confusion with Complainant’s WORDPRESS mark. The Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpres.com>, <wordress.com>, <wordperss.com>, and <worpress.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 5, 2010
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