WordPress Foundation v. Robert Hawkins / Sinhawk Global Media
Claim Number: FA1106001392684
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Robert Hawkins / Sinhawk Global Media (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wodrpress.org>, registered with Name.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 14, 2011.
On June 9, 2011, Name.com confirmed by e-mail to the National Arbitration Forum that the <wodrpress.org> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 15, 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@wodrpress.org. Also on June 15, 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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wodrpress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <wodrpress.org> domain name.
3. Respondent registered and used the <wodrpress.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WordPress Foundation, uses and licenses its WORDPRESS marks in connection with self-hosted blogging and Internet publishing tools. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its WORDPRESS marks (e.g., Reg. No. 3,201,424 issued January 3, 2007). Complainant also owns trademark registrations with other governmental trademark authorities worldwide including with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA6980 issued October 9, 2007), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 5,101,068 issued November 19, 2008), and the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 5579753 filed September 1, 2006; August 14, 2009).
Respondent, Robert Hawkins / Sinhawk Global Media, registered the <wodrpress.org> domain name August 10, 2008. Respondent’s disputed domain name resolves to a website that displays pay-per-click links and Google Ads to unrelated businesses and websites.
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 offers evidence to show that its owns several trademark registrations with different trademark authorities for the WORDPRESS mark, namely with the USPTO (e.g., Reg. No. 3,201,424 issued January 3, 2007); CIPO (Reg. No. TMA6980 issued October 9, 2007); OHIM (Reg. No. 5,101,068 issued November 19, 2008); and the SIPO (e.g., Reg. No. 5579753 filed September 1, 2006; August 14, 2009). Therefore, the Panel finds that Complainant has rights in the WORDPRESS mark under 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 argues that Respondent’s <wodrpress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark. Complainant notes that the domain name contains its mark entirely while transposing the letters “r” and “d” and adding the generic top-level domain (“gTLD”) “.org.” The Panel agrees and finds that Respondent’s domain name is confusingly similar to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i), where the domain name contains a modified version of Complainant’s mark through the transposition of two letters, and the addition of the gTLD “.org.” 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 Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant has satisfied the required elements of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii) Complainant must present the Panel with a prima facie case to support its allegations that Respondent does not have rights or legitimate interests in the domain name. If the Panel determines that Complainant has supplied a sufficient prima facie case to support its allegations the burden of proof will then shift to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant has submitted a prima facie case to support its allegations. Due to Respondent’s failure to respond to these proceedings, the Panel assumes that Respondent does not have rights or legitimate interests in the domain name. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). However, the Panel will continue to analyze the evidence and arguments of Complainant under Policy ¶ 4(a)(ii) to determine whether Respondent is without rights and legitimate interests in the <wodrpress.org> domain name.
Complainant contends that Respondent is not commonly known by the <wodrpress.org> domain name, or the WORDPRESS mark. Further, Complainant asserts that Respondent does not operate a business or other organization under the WORDPRESS mark, the <wodrpress.org> domain name, and Respondent does not own trademark or service mark rights in the mark or domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Robert Hawkins / Sinhawk Global Media” as the registrant, which the Panel determines is not similar to the domain name or WORDPRESS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also asserts that Respondent is using the domain name to display various third-party links and Google Ads links to various websites that are unrelated to Complainant’s business. Complainant argues that Respondent’s use of the domain name in such a manner is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel agrees and finds that Respondent’s use of the disputed domain name as a links directory and advertisement website is 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) where Respondent presumably profits from such use. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also 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)).
The Panel finds that Complainant has satisfied the required elements of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent receives commercial gain from its use of the <wodrpress.org> domain name. Complainant argues that when an Internet user visits Respondent’s website and clicks on one of the links or advertisements thereon, that Respondent receives commercial compensation from the websites that those Internet users are forwarded to. Complainant asserts that such use of the confusingly similar domain name for Respondent’s benefit is evidence of bad faith under Policy ¶ 4(b)(iv). The Panel agrees with Complainant, and determines that Respondent’s displaying of various third-party links and advertisements to unrelated websites and businesses, presumably for financial gain, on the website resolving from the <wodrpress.org> domain name is evidence of bad faith registration and use under 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied the required elements of 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 <wodrpress.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 19, 2011
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