WordPress Foundation v. johnny leed
Claim Number: FA1312001535048
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is johnny leed (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordprress.org>, registered with GoDaddy.com, LLC.
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 17, 2013; the National Arbitration Forum received payment on December 23, 2013.
On December 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wordprress.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 December 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 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@wordprress.org. Also on December 27, 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 20, 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.
1. Policy ¶ 4(a)(i)
a. Since at least as early as March 28, 2003, Complainant, and its licensee Automattic, Inc., have used the WORDPRESS mark in connection with what has become 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.
b. Complainant owns a number of trademark registrations for the WORDPRESS mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 registered January 23, 2007) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,579,753 registered August 14, 2009).
c. Respondent’s <wordprress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.
i. The disputed domain name merely adds an extra letter “r” to Complainant’s mark.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <wordprress.org> domain name and does not operate a business or other organization under this mark. Respondent also does not own any trademark or service mark rights in the WORDPRESS name.
b. Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the <wordprress.org> domain name without intent for commercial gain within the meaning of Policy ¶ 4(c)(iii).
i. Respondent’s domain name redirects visitors to a rotating series of different websites relating to a variety of subjects, and as such, diverts Complainant’s customers and potential customers to these websites which are not associated with Complainant. See Complainant’s Exhibit F.
ii. Respondent has diminished consumers’ capacity to associate Complainant’s mark with the quality services offered under the mark by Complainant by using the mark in association with unrelated sites which provide services not associated with or related to Complainant’s own services.
3. Policy ¶ 4(a)(iii)
a. Respondent registered and uses the disputed domain name in bad faith by intentionally attempting 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 Respondent’s website. Respondent generates commercial gain from the operation of this website, most likely in the form of click-through fees for directing users to various unrelated commercial websites.
b. Respondent was on both actual and constructive notice of Complainant’s rights in the WORDPRESS mark through Complainant’s trademark registrations and its extensive, global use of the mark, both of which predate the creation date of the <wordprress.org> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States non-profit corporation that operates the largest self-hosted blogging and Internet publishing tool in the world.
2. Complainant owns a number of trademark registrations for the WORDPRESS mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 registered January 23, 2007) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,579,753 registered August 14, 2009).
3. Respondent registered the <wordprress.org> domain name on January 17, 2013.
4. The domain name redirects visitors to a rotating series of different websites relating to a variety of subjects, and as such diverts Complainant’s customers and potential customers to these websites which are not associated with Complainant.
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. According to Complainant, Complainant and its licensee Automattic, Inc., have 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, used on millions of websites and seen by tens of millions of people every day in hundreds of different languages. Complainant claims to own a number of trademark registrations for the WORDPRESS mark, including registration with the USPTO (e.g., Reg. No. 3,201,424 registered January 23, 2007) and China’s SAIC (e.g., Reg. No. 5,579,753 registered August 14, 2009). Previous panels have agreed that federal registration of a mark is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel thus holds that Complainant has established rights in the WORDPRESS mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the WORDPRESS mark. Complainant contends that Respondent’s <wordprress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i), asserting that the disputed domain name merely adds an extra letter “r” to Complainant’s mark. The Panel notes that the disputed domain name also adds the generic top-level domain “.org” to Complainant’s mark. Past panels, however, have considered neither alteration sufficient to defeat a claim of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore finds that the disputed domain name is confusingly similar to the WORDPRESS mark.
Accordingly, 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, making only a slight spelling alteration;
(b) Respondent has then used the disputed domain name to redirect visitors to a rotating series of different websites relating to a variety of subjects, and as such diverts Complainant’s customers and potential customers to these websites which are not associated with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent is not commonly known by the <wordprress.org> domain name and does not operate a business or other organization under this mark. Complainant adds that Respondent also does not own any trademark or service mark rights in the WORDPRESS name. The panel in Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), concluded that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the fact that respondent did not counter this argument in its response. The Panel notes that Respondent has failed to refute Complainant’s assertions in the immediate case as well. As the Panel agrees that nothing in the record suggests that Respondent is in fact commonly known by the <wordprress.org> domain name, the Panel determines that Respondent is without rights and legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii);
(e) Complainant contends that Respondent’s actions are not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the <wordprress.org> domain name without intent for commercial gain within the meaning of Policy ¶ 4(c)(iii). Complainant asserts that Respondent’s domain name redirects visitors to a rotating series of different websites relating to a variety of subjects, and as such, diverts Complainant’s customers and potential customers to these websites which are not associated with Complainant. See Complainant’s Exhibit F. According to Complainant, Respondent’s use of the disputed domain name has diminished consumers’ capacity to associate Complainant’s mark with the quality services offered under the mark by Complainant by using the mark in association with unrelated sites which provide services not associated with or related to Complainant’s own services. The panel in Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) explained that “[d]iverting customers, who are looking for products relating to [complainant’s] mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” The Panel similarly hold that Respondent’s diversion of customers looking for products and services related to Complainant’s WORDPRESS mark to a website unrelated to the mark represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under 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.
Accordingly, 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 alleges that Respondent registered and uses the <wordprress.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). According to Complainant, Respondent is intentionally attempting to attract, for commercial gain, Internet searchers to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant submits that Respondent generates commercial gain from the operation of this website, most likely in the form of click-through fees for directing users to various unrelated commercial websites. As the Panel agrees that Respondent selected the disputed domain name based on its similarity to Complainant’s WORDPRESS mark and the likelihood that consumers would accidentally visit Respondent’s site when trying to reach Complainant’s site, and as the Panel further accepts that Respondent achieves some sort of pecuniary gain from this diversion scheme, the Panel concludes that Respondent registered and uses the <wordprress.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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)).
Secondly, Complainant further alleges that Respondent registered the <wordprress.org> domain name in bad faith because Respondent knew of Complainant and its rights in the WORDPRESS mark at the time Respondent registered the disputed domain. Complainant avers that Respondent was on both actual and constructive notice of Complainant’s rights in the WORDPRESS mark through Complainant’s trademark registrations and its extensive, global use of the mark, both of which predate the creation date of the <wordprress.org> domain name. Panels have held that constructive knowledge is not enough to support bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). But the Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <wordprress.org> domain name in bad faith under Policy ¶ 4(a)(iii) on that basis. See 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 had "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 and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Accordingly, 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 <wordprress.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: February 3, 2014
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