WordPress Foundation v. AsiaFast Pte Ltd / Admin Admin
Claim Number: FA1301001480129
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is AsiaFast Pte Ltd / Admin Admin (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wordpressfreelance.com> and <wordpressfreelancers.com>, registered with eNom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2013; the National Arbitration Forum received payment on January 16, 2013.
On January 14, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wordpressfreelance.com> and <wordpressfreelancers.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2013 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@wordpressfreelance.com, postmaster@wordpressfreelancers.com. Also on January 17, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wordpressfreelance.com> and <wordpressfreelancers.com> domain names, the domain names at issue, is confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WordPress Foundation, has used the WORDPRESS mark since at least as early as March 28, 2003 in connection with what has become the largest self-hosted blogging and Internet publishing tool in the world. Complainant has established rights in the WORDPRESS mark based on its numerous registrations of the mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 registered January 23, 2007). Each of Respondent’s <wordpressfreelance.com> and <wordpressfreelancers.com> domain names is confusingly similar to Complainant’s WORDPRESS mark because it uses an identical copy of Complainant’s marks and merely adds the word “freelance” or “freelancer”. Respondent is not commonly known by either of the disputed domain names. Respondent’s <wordpressfreelance.com> website appears to offer an employment service matching skilled consultants with companies requiring help on certain projects. Respondent’s <wordpressfreelance.com> website displays a number of “Advertise Here” links prominently shown at the top of the website. Respondent’s <wordpressfreelancers.com> website resolves to a classic pay-per-click page displaying links which divert visitors—likely Complainant’s customers and potential customers—to other websites which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors. Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with Complainant’s mark. Respondent was on both actual and constructive notice of Complainant’s rights in the marks through Complainant’s trademark registrations and its extensive global use of the WORDPRESS marks. Respondent registered the <wordpressfreelance.com> domain name on July 23, 2006 and the <wordpressfreelancers.com> domain name on September 18, 2007.
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.
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.”).
Complainant, WordPress Foundation, has used the WORDPRESS mark since at least as early as March 28, 2003 in connection with what has become the largest self-hosted blogging and Internet publishing tool in the world. Complainant has rights in the WORDPRESS mark based on its numerous trademark registrations, including registration with the USPTO (e.g., Reg. No. 3,201,424 filed March 1, 2006 registered January 23, 2007). Although Respondent appears to reside in Singapore, Policy ¶ 4(a)(i) and UDRP precedent only requires that Complainant establish its rights in the mark in some jurisdiction. See 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). The registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, Complainant, through its registration of the mark with the USPTO, established its rights in the WORDPRESS mark under Policy ¶ 4(a)(i).
Each of Respondent’s <wordpressfreelance.com> and <wordpressfreelancers.com> domain names is confusingly similar to Complainant’s WORDPRESS mark within the meaning of Policy ¶ 4(a)(i), since each disputed domain name includes Complainant’s WORDPRESS mark, while adding either the generic term “freelance” or “freelancers.” The disputed domains also include the generic top-level domain (“gTLD”) “.com.” Neither alteration to a registered mark sufficient to distinguish a contested domain from the mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, each of the <wordpressfreelance.com> and <wordpressfreelancers.com> domain names is confusingly similar to Complainant’s WORDPRESS mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The WHOIS record identifies Respondent as “AsiaFast Pte Ltd / Admin Admin.” It does not appear that Respondent operates a legitimate business or other organization under the WORDPRESS name. Respondent does not provide evidence that it is known by the domain name. Therefore, Respondent is not commonly known by the disputed domain name under 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).
Respondent’s <wordpressfreelance.com> website appears to offer an employment service matching skilled consultants with companies requiring help on certain projects. This is not a service offered by Complainant itself. Respondent’s <wordpressfreelance.com> website displays a number of “Advertise Here” links prominently shown at the top of the website. When visitors click on one of these links, they are brought to a page of the website <www.buysellads.com>, which specifically relates to Respondent’s website. Respondent’s use of the <wordpressfreelance.com> domain name to offer projects or to feature ads is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use as it simply diverts Internet users away from Complainant to Respondent’s resolving website. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business 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).”); 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)).
Respondent’s <wordpressfreelancers.com> website resolves to a classic pay-per-click page displaying links which divert visitors—likely Complainant’s customers and potential customers—to other websites which are both unassociated with, and, in some cases, associated with, Complainant’s competitors. Respondent’s <wordpressfreelancers.com> website features ads such as “Get Your Website For Free,” “The 2013 Hyundai Santa Fe,” and others. Respondent’s use of the disputed domain name to link to a pay-per-click page featuring competing and unrelated links does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with Complainant’s mark. Respondent is obtaining commercial gain from its use of the disputed domain names. Respondent’s disputed domain names resolve to websites which feature employment listings and commercial ads. When a visitor clicks on one of the employment listings or commercial ads featured on Respondent’s websites, Respondent receives compensation from the various third parties and other website owners who receive forwarded visitor traffic from the disputed domain names. The Panel concludes that Respondent’s use of the disputed domain name to attract Internet users for its own commercial gain evidences bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); 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)).
Respondent was on both actual and constructive notice of Complainant’s rights in the marks through Complainant’s trademark registrations and its extensive global use of the WORDPRESS marks. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the extensive worldwide use of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpressfreelance.com> and <wordpressfreelancers.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 14, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page