WordPress Foundation v. Ali HajiMohamadi / Wordpress
Claim Number: FA1312001534410
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Ali HajiMohamadi / Wordpress (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpress98.com>, registered with OnlineNIC, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2013; the National Arbitration Forum received payment on December 18, 2013.
On December 13, 2013, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <wordpress98.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 December 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2014 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@wordpress98.com. Also on December 18, 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 January 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Respondent is not commonly known by the name <wordpress98.com>.
ii. Respondent’s website appears to be offering website design services using modified versions of Complainant’s plugins, themes, and templates, without Complainant’s permission, and is promoting its own design services and not primarily offering products or services of Complainant.
i. Respondent, by using the domain name, 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 as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
ii. Respondent was on both actual and constructive notice of Complainant’s rights in the marks through Complainant’s trademark registrations, its common law trademark rights, and its extensive, global use of the WORDPRESS marks that predate the creation date of the <wordpress98.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates the largest, self-hosted blogging and Internet publishing tool in the world, used on millions of websites and seen by tens of millions of people every day in hundreds of different languages.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WORDPRESS mark (e.g., Reg. No. 3,201,424, registered January 3, 2007).
3. Respondent registered the <wordpress98.com> domain name on May 13, 2011. It is used to offer website design services using modified versions of Complainant’s plugins, themes, and templates, without Complainant’s permission, and for promoting Respondent’s own design services.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it is the owner of the distinctive and world-famous WORDPRESS trademark which is associated with the largest, self-hosted blogging and Internet publishing tool in the world, used on millions of websites and seen by tens of millions of people every day in hundreds of different languages. Complainant argues that it is the owner of trademark registrations with the USPTO for the WORDPRESS mark (e.g., Reg. No. 3,201,424, registered January 3, 2007). See Complainant’s Exhibit E-1. The Panel finds that although Respondent appears to operate out of Iran, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the jurisdiction in which Respondent resides, so long as it can establish rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel concludes that Complainant’s registration of the WORDPRESS mark with the USPTO sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WORDPRESS mark. Complainant asserts that Respondent’s <wordpress98.com> domain name is identical or confusingly similar to the WORDPRESS mark. Complainant alleges that Respondent uses an identical copy of Complainant’s WORDPRESS mark and merely adds the number “98” and the “.com” gTLD. The Panel holds that Respondent’s inclusion of numbers to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) determination. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Additionally, the Panel determines that Respondent’s addition of a gTLD to Complainant’s mark does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel finds that Respondent’s <wordpress98.com> domain name is confusingly similar to Complainant’s WORDPRESS mark according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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. 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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s WORDPRESS trademark and to use it in its domain name, adding only the number “98” after the trademark;
(b) Respondent has then used the disputed domain name to offer website design services using modified versions of Complainant’s plugins, themes, and templates and for promoting Respondent’s own design services.
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(c) Complainant argues that Respondent is not commonly known by the
name <wordpress98.com>. Complainant contends that Respondent does
not own any trademark or service mark rights in the WORDPRESS mark. The Panel observes that the WHOIS information identifies “Ali HajiMohamadi / Wordpress” as the registrant of the disputed domain name. See Complainant’s Exhibit B. The Panel notes that although Respondent uses the phrase “Wordpress” in the WHOIS record, Respondent fails to provide any evidence that it is actually known by the domain name. Thus, the Panel holds that Respondent is not commonly known by the <wordpress98.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”);
(d)Complainant claims that Respondent’s website appears to be offering website design services using modified versions of Complainant’s plugins, themes, and templates, without Complainant’s permission, and is promoting its own design services and not primarily offering products or services of Complainant. The Panel notes that Respondent’s <wordpress98.com> domain name resolves to an Arabic language website which purports to offer blog design services. See Complainant’s Exhibit F. Complainant argues that Respondent’s disputed domain name site features links to advertisements for a variety of third-party products and services such as “Irancell” telephone plans and inflatable pools and furniture. See Complainant’s Exhibits F 3-6. The Panel finds that Respondent’s use of the <wordpress98.com> domain name to offer its own competing products or to offer competing hyperlinks 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. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent, by using the <wordpress98.com> domain name, 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 as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Complainant alleges that Respondent’s generation of forwarding fees, or some other form of revenue generation, results from links to third-party goods and services. See Complainant’s Exhibit F. Complainant claims that when a visitor to the website of the disputed domain name clicks on one of the third-party links which appear there, Respondent likely receives some form of compensation from the various website owners. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Consequently, the Panel finds that Respondent has registered and is using the <wordpress98.com> domain name in bad faith according to Policy ¶ 4(b)(iv).
Secondly, Complainant asserts that Respondent was on both actual and constructive notice of Complainant’s rights in the marks through Complainant’s trademark registrations, its common law trademark rights, and its extensive, global use of the WORDPRESS marks that predate the creation date of the <wordpress98.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WORDPRESS mark in and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpress98.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 15, 2014
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