WordPress Foundation v. Ruslan Yusufov
Claim Number: FA1106001394256
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Ruslan Yusufov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpreas.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 21, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wordpreas.org> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@wordpreas.org. Also on June 23, 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.
A timely Response was received and determined to be complete on July 12, 2011.
On July 13, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist. The resolution of this matter was delayed at the request of the parties who sought an opportunity to resolve their dispute. When they were unable to do so, the matter was returned to the National Arbitration Forum for a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a charitable organization which describes itself as furthering “the mission of the WordPress open source project: to democratize publishing through Open Source [general public license] software.” Complainant states that it holds various trademark rights for the WORDPRESS mark, as well as common law rights in the mark. Complainant contends that Respondent’s domain name is confusingly similar to its mark.
Complainant contends that the domain name does not resolve to an active website.
Complainant contends that Respondent has engaged in bad faith use and registration of the domain name as it has not made active use of the domain and has held it passively.
B. Respondent
Respondent states that the domain was registered for a “social-networking game oriented to the European market.” Respondent contends that the domain name is not confusingly similar to Complainant’s mark because the word “preas” is translated as “pride” from the Catalan language and as “Chairman may” from French.
Respondent states that he has rights and legitimate interests in the domain name because he has paid the proper fees. Respondent denies that he has engaged in bad faith. Respondent states there is no “illegal content” on the resolving website, no “scandals around it” and no connection with the WordPress Foundation.
Complainant holds trademark registrations for the WORLD PRESS mark. Respondent has failed to make any active use of the website that resolves from the disputed domain name, despite the passage of several years.
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."
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 has established rights in the WORD PRESS mark due to trademark registrations that it currently holds with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 issued January 3, 2007). Complainant submitted trademark registration certificates to support its claim of rights in the mark. Thus, Complainant has established its rights in the WORD PRESS mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also claims Respondent’s disputed domain name is confusingly similar to its WORD PRESS mark. Complainant bases this claim on the assertion that the disputed domain name keeps the distinctive portion of the mark, merely changing one of the “s” letters to an “a” and adding the generic top-level domain (“gTLD”) “.org.” The addition of a gTLD and changing a letter in the mark do not sufficiently differentiate the disputed domain name from Complainant’s WORD PRESS mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Texas 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.”); see also Hotwire, Inc. v. Wilder, FA 741901 (Nat. Arb. Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it).
While Respondent contends that the <wordpreas.org> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant asserts that Respondent lacks any rights or legitimate interests in the disputed domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel expressed that “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.” Here, Complainant has made a prima facie showing in support of its allegations.
Complainant correctly asserts Respondent is not commonly known by the disputed domain name. The WHOIS information supports its assertion as the WHOIS information identifies the registrant of the disputed domain name as “Ruslan Yusufov.” Furthermore, it is uncontradicted that Respondent is not commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by 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).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The record supports Complainant’s contention that the disputed domain name resolves to an inactive site. Respondent’s assertion, without supporting evidence, that its project is “currently developing” is not sufficient to establish that Respondent has made demonstrable preparations to use the disputed domain name. Therefore, the Panel finds that Respondent has not shown 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 America Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use. Respondent concedes in the Response that despite the passage of several years it has yet to make any use of the resolving website as it is keeping its project “secret” until it is complete. Nothing in the Response indicates when Respondent will be in a position to actually create its site. By failing to make active use of the disputed domain name Respondent’s conduct amounts to bad faith registration and use under Policy ¶ 4(a)(iii). See American Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpreas.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page