WordPress Foundation v. Ensei Tankado
Claim Number: FA1312001536197
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Ensei Tankado (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpress-plugin.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 26, 2013; the National Arbitration Forum received payment on December 27, 2013.
On December 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wordpress-plugin.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@wordpress-plugin.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 Paul M. DeCicco 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 contends as follows:
Complainant has rights in the WORDPRESS mark, which it uses in connection with self-hosted blogging and Internet publishing, including offering plugins for its website tool. Complainant owns the United States Patent and Trademark Office (“USPTO”) registration for the WORDPRESS mark (Reg. No. 3,201,424 registered Jan. 23, 2007), as well as other registrations worldwide.
The <wordpress-plugin.org> domain name is confusingly similar to the WORDPRESS mark. Respondent merely adds a hyphen, the descriptive term “plugin,” and a generic top-level domain. Respondent has no rights or legitimate interests in the <wordpress-plugin.org> domain name. Respondent is not commonly known by the WORDPRESS mark. Respondent is not affiliated with or authorized by Complainant to use the WORDPRESS mark.
The <wordpress-plugin.org> domain name was registered on August 30, 2010 by a Mr. Ozgur Koca and was transferred to Respondent on August 25, 2011.
The mere existence of a website to which the <wordpress-plugin.org> domain name resolves does not alone demonstrate that Respondent is somehow known as “wordpress-plugin” or any variation thereof. Respondent uses the <wordpress-plugin.org> domain name to appear to offer plugins, themes, and templates of Complainant, but the domain name is actually a trap to deliver malware to the computers of unsuspecting Internet users. Neither of these uses are bona fide offerings of goods or services.
The <wordpress-plugin.org> domain name was registered and is used in bad faith. Respondent intentionally seeks to disrupt the business of Complainant. Internet users are likely to be confused into believing that there is a connection between Complainant and the <wordpress-plugin.org> domain name. Respondent’s registration and use has tarnished and diluted the WORDPRESS mark by using the mark in a way which connects the WORDPRESS mark to goods and services over which Complainant has no quality control. Respondent is attempted to benefit from the goodwill of Complainant’s marks and presumably is profiting from the distribution of templates, plugins, and themes for Complainant’s products. Respondent had actual or constructive knowledge of Complainant’s rights in the WORDPRESS mark. Complainant’s trademark registrations and extensive, long term use give Respondent such notice.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for WORDPRESS mark as well as other registrations for such mark worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the WORDPRESS mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in WORDPRESS.
Respondent uses the <wordpress-plugin.org> domain name to appear to offer plugins, themes, and templates of Complainant, but the domain name is actually a trap to deliver malware to the computers of unsuspecting Internet users.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the WORDPRESS mark. Such rights also flow from its other registrations of such mark worldwide. It is irrelevant to the purposes of Policy ¶4(a)(i) that Respondent may operate outside each trademark registrant’s jurisdiction See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The at-issue domain name differs from Complainant’s trademark through the addition of a hyphen, the descriptive term “plugin,” and the appending of the top-level domain name, “.org,” thereto. Such differences fail to differentiate the domain name from Complainant’s WORDPRESS trademark under Policy ¶4(a)(i). Therefore the Panel concludes that the at-issue <wordpress-plugin.org> domain name is confusingly similar to Complainant’s WORDPRESS trademark. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“… the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “Ensei Tankado” and the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <wordpress-plugin.org> domain name for the purposes of 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 uses the <wordpress-plugin.org> domain name to feign a legitimate offering of plugins, themes, and templates related to Complainant. Such use is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor a legitimate or fair use of the domain name under Policy ¶¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Furthermore, the domain name ultimately addresses a trap or honey pot used to deliver malware .exe files onto the computers of unsuspecting Internet users. Needless to say, this foul use of the domain name is counter indicative to Respondent having any rights or interests in respect thereof. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”)
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent displays offerings of competing goods and services for Complainant’s products. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (holding “Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Next, it appears clear that at least some Internet users are likely to be confused into believing that there is a connection between Complainant and the <wordpress-plugin.org> domain name. On its relevant website, Respondent offers goods that compete with Complainant’s WORDPRESS mark in a manner that creates a likelihood of confusion as to such goods’ source or origin. This use of the domain name demonstrates bad faith under Policy ¶ 4(b)(iv) as Respondent intends to improperly profit from the goodwill associated with Complainant’s marks. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark.)
Moreover, a trip to the <wordpress-plugin.org> domain name website may result in malware being downloaded onto the visitor’s computer. This felonious action, in and of itself, shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name which resolves to a website to attract Internet users and download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii).)
Finally, Respondent had knowledge of Complainant’s rights in the WORDPRESS mark prior to acquiring the at-issue domain name. Complainant’s trademark registrations are extensive and the WORDPRESS mark has been used for years preceding the domain names acquisition. Importantly, combining Complainant’s mark with the suggestive term “plugin” further indicates that Respondent must have known of Complainant’s mark at the time it acquired the domain name. Respondent’s prior knowledge of Complainant's trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpress-plugin.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 21, 2014
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