WordPress Foundation v. Ye Sheng / Yesheng
Claim Number: FA1403001547150
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Ye Sheng / Yesheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpress.mobi>, registered with GoDaddy.com, LLC (146).
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 11, 2014.
On March 6, 2014, GoDaddy.com, LLC (146) confirmed by e-mail to the National Arbitration Forum that the <wordpress.mobi> domain name is registered with GoDaddy.com, LLC (146) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (146) has verified that Respondent is bound by the GoDaddy.com, LLC (146) 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 March 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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.mobi. Also on March 11, 2014, 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 April 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Complainant, WordPress Foundation, is a leading provider of blogging and Internet publishing services.
ii. Complainant is the owner of the WORDPRESS mark which it has registered with the United States Patent and Office (“USPTO”) (e.g., Reg. No. 3,201,424, registered January 23, 2007).
iii. Respondent’s <wordpress.mobi> domain name is confusingly similar to Complainant’s WORDPRESS mark.
i. Respondent has no rights or legitimate interest in the <wordpress.mobi> domain name.
ii. Respondent is not commonly known by the <wordpress.mobi> domain name.
iii. The <wordpress.mobi> domain name does not resolve to any web content other than a parked website hosted by the registrar.
i. Respondent registered the disputed domain name in bad faith.
ii. At least one prior UDRP case has been successfully brought against Respondent.
iii. Respondent has no active website affiliated with the <wordpress.mobi> domain name and has merely passively held the domain name through a parked website.
iv. Respondent was put on both actual and constructive notice of Complainant’s rights in the WORDPRESS marks through Complainant’s trademark registrations, its common law trademark rights and its extensive use of the WORDPRESS mark which predates the creation date of the <wordpress.mobi> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 argues that it is a leading provider of blogging and Internet publishing services. Complainant asserts that it is the owner of the WORDPRESS mark which it has registered with the USPTO (e.g., Reg. No. 3,201,424, registered January 23, 2007). The Panel notes that Respondent resides in China. However, the Panel finds that it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers a mark in the country of Respondent’s residence. 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). Therefore, the Panel finds that Complainant’s registration of the WORDPRESS mark with the USPTO sufficiently proves its rights in the 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.”).
Complainant asserts that Respondent’s <wordpress.mobi> domain name is confusingly similar to Complainant’s WORDPRESS mark. Complainant argues that Respondent has added the generic top-level domain (“gTLD”) “.mobi” to Complainant’s mark. In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), the panel found that the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi.” The Panel holds that Respondent’s inclusion of a gTLD does not distinguish the mark from the domain name under Policy ¶ 4(a)(i). The Panel finds that Respondent’s <wordpress.mobi> domain name is identical to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not commonly known by the <wordpress.mobi> domain name. Complainant alleges that Respondent does not operate a business or other organization under this mark or name, nor does Respondent own any trademark or service mark rights in the WORDPRESS name. The Panel notes that the WHOIS information identifies “Ye Sheng / Yesheng” as the registrant of the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known under the <wordpress.mobi> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s <wordpress.mobi> domain name does not resolve to any web content. Failure to make an active use of a disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has failed to make an active use of the <wordpress.mobi> domain name and finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant alleges that at least one prior UDRP case has been successfully brought against Respondent. See Aphelia’s Technologies Limited v. Mr. Ye Sheng, D2013-0166 (WIPO March 18, 2013). If the Panel finds that Respondent’s one prior UDRP proceeding shows a pattern of bad faith registration, the Panel holds that Respondent has registered and is using the <wordpress.mobi> domain name under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant contends that Respondent has no active website affiliated with the <wordpress.mobi> domain name and has merely passively held the domain name. The Panel notes that Complainant fails to provide evidence of Respondent’s use of the disputed domain name. The Panel finds that Respondent has not made an active use of the <wordpress.mobi> domain name, showing bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant asserts that Respondent was put on both actual and constructive notice of Complainant’s rights in the WORDPRESS marks through Complainant’s trademark registrations, its common law trademark rights and its extensive use of the WORDPRESS mark which predates the creation date of the <wordpress.mobi> domain name. While previous panels have not typically not found constructive knowledge of a complainant’s mark to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark, based on the fame of Complainant’s mark, and 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").
Complainant has proven this element.
Complainant 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.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 11, 2014
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