national arbitration forum

 

DECISION

 

WordPress Foundation v. Darren Twerdochlib

Claim Number: FA1106001391659

 

PARTIES

Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Darren Twerdochlib (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wordrpess.org>, registered with GoDaddy.com, Inc.

 

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2011; the National Arbitration Forum received payment on June 11, 2011.

 

On June 3, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wordrpess.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 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@wordrpess.org.  Also on June 14, 2011, 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 July 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <wordrpess.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.

 

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

 

3.    Respondent registered and used the <wordrpess.org> domain name in bad faith.

 

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

 

FINDINGS

Complainant, WordPress Foundation, uses its WORDPRESS mark in connection with its self-hosted blogging and Internet publishing tool. Complainant has registered its WORDPRESS mark with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), and the Chinese State Intellectual Property Office (“SIPO”):

 

USPTO

Reg. No. 3,201,424              registered January 23, 2007;

Reg. No. 3,201,428              registered January 23, 2007;

 

CIPO

Reg. No. TMA698039         registered October 9, 2007;

 

OHIM

Reg. No. 005101068           registered November 19, 2008;

 

SIPO

Reg. No. 5579753                registered August 14, 2009; and

Reg. No. 5633949                registered October 21, 2009.

 

Respondent, Darren Twerdochlib, registered the <wordrpess.org> domain name on February 23, 2009. The disputed domain name resolves to a generic pay-per-click link hosting web page.

 

 

 

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 owns trademark registrations for its WORDPRESS mark with the USPTO, the CIPO, the OHIM, and the SIPO:

 

USPTO

Reg. No. 3,201,424              registered January 23, 2007;

Reg. No. 3,201,428              registered January 23, 2007;

 

CIPO

Reg. No. TMA698039         registered October 9, 2007;

 

OHIM

Reg. No. 005101068           registered November 19, 2008;

 

SIPO

Reg. No. 5579753                registered August 14, 2009; and

Reg. No. 5633949                registered October 21, 2009.

 

Based on these trademark registrations around the world, including in the country of Respondent’s registered address, the Panel concludes that Complainant has demonstrated adequate rights in the WORDPRESS mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant alleges that Respondent’s <wordrpess.org> domain name is confusingly similar to Complainant’s WORDPRESS mark because the disputed domain name merely transposes the letters “r” and “p” and adds the generic top-level domain (“gTLD”) “.org.” The Panel finds that such a simple misspelling does not result in a distinct domain name that can avoid a finding of confusing similarity. See 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”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark). The Panel also concludes that the addition of a gTLD is insignificant under the Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel thus determines that Respondent’s <wordrpess.org> domain name is confusingly similar to Complainant’s WORDPRESS mark according to Policy ¶ 4(a)(i).

 

The Panel holds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Before Respondent must bear the burden of proving its rights and legitimate interests in the disputed domain name, Complainant must present a prima facie case against Respondent pursuant to Policy ¶ 4(a)(i). As Complainant has successfully presented such a case in these proceedings, the Policy now transfers the obligation to supply evidence of rights and legitimate interests to Respondent. Respondent has defaulted, however, failing to present any evidence in support its claim to rights and legitimate interests and failing to contest Complainant’s allegations. The Panel accordingly infers that Respondent does not possess rights and legitimate interests in the disputed domain name but will nevertheless consider the evidence against the Policy ¶ 4(c) factors in order to conclude a complete analysis. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name.  The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant's mark BANCO DO BRASIL”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

 

Complainant contends that Respondent is not commonly known by the <wordrpess.org> domain name. In making this assertion, Complainant relies on the WHOIS information, which shows the registrant as “Darren Twerdochlib,” and the lack of other affirmative evidence indicating any connection between Respondent and the disputed domain name. Complainant argues additionally that Respondent does not operate any business under the WORDPRESS mark or own any trademark or other rights in the mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant asserts that Respondent uses the <wordrpess.org> domain name to direct Internet users to a generic web-directory of pay-per-click links. As Respondent presumably earns a profit from these pay-per-click links, the hosting of the resolving website at the disputed domain name is a commercial enterprise that does not fall within the bounds of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also 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)). 

 

The Panel holds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered a misspelled version of Complainant’s WORDPRESS mark as the disputed domain name solely for the purpose of attracting Internet users seeking Complainant and creating a likelihood of confusion as to the source or affiliation of the disputed domain name. Complainant argues that Respondent displays the generic pay-per-click links on the resolving website for their revenue-generating potential. As the number of diverted visitors to Respondent’s web page increases, so, too, does its potential for commercial gain. Accordingly, the Panel holds that Respondent’s intentional attraction and creation of confusion while misappropriating Complainant’s mark for the purpose of personal profit demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel holds Policy ¶ 4(a)(iii) has been satisfied.

 

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 <wordrpess.org> domain name be TRANSFERRED from Respondent to Complainant.

 

Judge Harold Kalina (Ret.), Panelist

Dated:  July 14, 2011

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page