national arbitration forum

 

DECISION

 

Automattic Inc. v. Private Registrations Aktien Gesellschaft  / Domain Admin

Claim Number: FA1010001354460

 

PARTIES

Complainant is Automattic Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Private Registrations Aktien Gesellschaft  / Domain Admin (“Respondent”), Saint Vincent and The Grenadines.

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REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <woedpress.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2010.

 

On November 9, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <woedpress.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 November 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@woedpress.com by e-mail.  Also on November 10, 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 December 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <woedpress.com> domain name is confusingly similar to Complainant’s WORDPRESS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <woedpress.com> domain name.

 

3.      Respondent registered and used the <woedpress.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Automattic Inc., owns the exclusive rights to its WORDPRESS mark which it uses in connection with its Internet publishing and blogging services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WORDPRESS mark (e.g., Reg. No. 3,201,424 filed March 1, 2006; issued January 23, 2007).

 

Respondent, Private Registrations Aktien Gesellschaft  / Domain Admin, registered the <woedpress.com> domain name on August 27, 2006.  The disputed domain name resolves to a website featuring pay-per-click links.

 

Respondent has been the respondent in various other UDRP proceedings where the disputed domain names were transferred from Respondent to the respective complainants in those cases.  See Ashley Furniture Indus., Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin – NA, FA 1338925 (Nat. Arb. Forum September 13, 2010); see also Joseph Airport Toyota v. Private Registrations Aktien Gesellschaft, D2010-1021 (WIPO July 30, 2010).          

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts that it has established rights in the WORDPRESS mark.  The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark, dating back to the filing date of said mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).  Complainant holds multiple trademark registrations with the USPTO for its WORDPRESS mark (e.g., Reg. No. 3,201,424 filed March 1, 2006, issued January 23, 2007).  Therefore, the Panel finds that Complainant has established rights in the WORDPRESS mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends Respondent’s <woedpress.com> domain name is confusingly similar to Complainant’s WORDPRESS mark.  The disputed domain name contains a misspelled version of Complainant’s mark, simply replacing an ‘r’ with an ‘e’ and adding the generic top-level domain (“gTLD”) “.com.”  Earlier panels have assserted that the misspelling of a mark and the addition of a gTLD, fail to distinguish a disputed domain from said mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s WORDPRESS mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the <woedpress.com> domain name.  Previous panels have shown that once a complainant makes a prima facie case, the burden then shifts to the respondent to show that it can prove rights or legitimate interests under Policy ¶ 4(a)(ii).  The Panel may find that Complainant has made a prima facie case.  Because Respondent did not respond to the Complaint, the Panel may infer that Respondent lacks rights or legitimate interests in the <woedpress.com> domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to 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.”).  Nonetheless, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy 4(c).

 

The Panel may examine factors such as the WHOIS information and other evidence set forth in the claim to determine whether or not a respondent has established rights in a disputed domain name pursuant to Policy ¶ 4(c)(ii).  In this instance, the WHOIS information identifies the domain name registrant as “Private Registrations Aktien Gesellschaft  / Domain Admin.”  There is no other evidence in the record to indicate that Respondent is commonly known by the <woedpress.com> domain name.  Therefore, the Panel asserts that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent uses the disputed domain name to resolve to a website featuring pay-per-click links, some of which are unrelated to Complainant, and some of which resolve to Complainant’s competitors.  The Panel finds that this does not constitute 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); 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 Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant alleges the use of the <woedpress.com> domain name is part of a pattern of bad faith use and registration on Respondent’s behalf.  Respondent has been a respondent in at least two other UDRP proceedings in which disputed domain names were transferred from Respondent to the complainants in those cases.  See Ashley Furniture Indus., Inc. v. Private Registrations Aktien Gesellschaft c/o Domain Admin – NA, FA 1338925 (Nat. Arb. Forum September 13, 2010); see also Joseph Airport Toyota v. Private Registrations Aktien Gesellschaft, D2010-1021 (WIPO July 30, 2010).  The Panel finds this constitutes a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where the respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).

 

Respondent registered and uses the <woedpress.com> domain name to display third-party links which resolve to Complainant’s competitors sites.  The Panel finds such a use constitutes a disruption of Complainant’s business and is in 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).”).

 

Respondent registered a domain name which is confusingly similar to Complainant’s WORDPRESS mark in an attempt to confuse Internet users who are likely searching for Complainant’s official website.  Respondent potentially receives a profit from this confusion as he likely recieves click-through fees when Internet users utilize the links on the disputed domain name.  The Panel finds that an attempt to commercially gain by creation of confusion is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <woedpress.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 13, 2010

 

 

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