WordPress Foundation v. Oleksandr Korhun
Claim Number: FA1308001513527
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Oleksandr Korhun (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worpress.org>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 13, 2013.
On August 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <worpress.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@worpress.org. Also on August 15, 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 September 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <worpress.org> domain name is identical to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <worpress.org> domain name.
3. Respondent registered and uses the <worpress.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the following trademark registrations for its WORDPRESS trademark:
United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,201,424 registered January 3, 2007;
Reg. No. 3,201,428 registered January 23, 2007;
Canadian Intellectual Property Office (“CIPO”):
Reg. No. 698,039 registered October 9, 2007.
China’s State Administration for Industry and Commerce (“SAIC”):
Reg. No. 5,579,753 registered August 14, 2009;
Reg. No. 5,633,949 registered October 21, 2009.
Respondent registered the <worpress.org> domain name on July 2, 2010, and uses it to redirect Internet users to third party websites such as <comcast.com>.
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.”).
The Panel finds that Complainant has rights in its WORDPRESS mark under Policy ¶ 4(a)(i) through its various trademark registrations for the mark. Previous panels have found that evidence of a registration with a recognized authority is sufficient to indicate rights in a given mark. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). Previous panels have also found that it does not matter whether complainant has registered the mark where Respondent is located. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <worpress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i), as it merely eliminates the “d” in Complainant’s WORDPRESS mark and adds the gTLD “.org.” Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a registered mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Top RX, Inc. v. Robert Catts d/b/a BayouSouth, FA 1008565 (Nat. Arb. Forum July 30, 2007) (finding that the addition of the gTLD “.org,” as merely a functional change, is inadequate to differentiate a disputed domain name from a registered mark.) The Panel finds that Respondent’s <worpress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by it under Policy ¶ 4(c)(ii). Complainant argues that Respondent does not operate a business or other organization using the WORDPRESS mark and does not own or have rights to use the WORDPRESS mark. The WHOIS information for the disputed domain name lists “Oleksandr Korhun” as Registrant. Previous panels have found that a respondent is not commonly known by a disputed domain name where there is no indication on the record to suggest a relationship and where complainant has asserted that it has not authorized respondent to use its registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel finds that Respondent is not commonly known by the <worpress.org> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant claims that Respondent uses the <worpress.org> domain name to resolve to a series of websites to presumably collect click-through fees. Complainant argues that Internet users are first directed to the <ccomcast.com> website, also owned by Respondent, and then immediately diverted to other websites. The Panel notes that Internet users are redirected, for example, to a website entitled “Monster,” featuring the headings “Looking for a job?” and “Looking for Employees?” Previous UDRP panels have found that using a confusingly similar domain name to resolve to websites making an unrelated use of the domain name does not indicate rights or legitimate interests in a disputed domain name. 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)). The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the confusingly similar domain name to intentionally attempt to attract, for commercial gain, Internet users to its and other websites, by creating a likelihood of confusion with Complainant’s WORDPRESS mark as to the source, sponsorship, affiliation, or endorsement of the website. Previous panels have found that using a confusingly similar domain name to divert Internet users to a variety of other websites used in ways unrelated to Complainant, such as operating a job search page, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that its trademark registrations for the WORDPRESS mark existed well before the registration of the <worpress.org> disputed domain name, and thus Respondent had constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent had knowledge of Complainant's rights in the WORDPRESS mark, further evidence of 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 Complainant has satisfied 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 <worpress.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 18, 2013
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