WordPress Foundation v. Domain Backorder Domain-Catch.com / Net Solutions Holding LLC
Claim Number: FA1404001552560
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Backorder Domain-Catch.com / Net Solutions Holding LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordoress.org>, registered with NameSilo, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2014; the National Arbitration Forum received payment on April 10, 2014.
On April 4, 2014; Apr 10, 2014, NameSilo, LLC confirmed by e-mail to the National Arbitration Forum that the <wordoress.org> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 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@wordoress.org. Also on April 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 May 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. The Complainant has rights to the WORDPRESS Trademarks and makes extensive use of them such that they have become famous.
Complainant Owns The Marks Complainant is the owner of the distinctive and world-famous WORDPRESS trademark and its corresponding logo (the “Marks”). At least as early as March 28, 2003, and long prior to the creation of the <yWordPress.com> domain, Complainant, and its licensee Automattic, Inc., commenced use of the Marks 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. This tool incorporates many components, including website scripts, plugins, themes, and templates which are supplied by Complainant. Since its inception, Complainant has continually used the Marks in commerce and has gained both common-law and registered trademark rights.
The Marks Are Extensively Used, Promoted and Protected. Complainant, on its own and through its licensee, Automattic, Inc., is a leading provider of blogging and internet publishing services and its website <wordpress.com> ranks at No. 25 in visitor traffic on the entire internet according to the metrics used by Quantcast.com. Its <wordpress.org> domain also ranks very high on Quantcast.com. In 2004 and early 2005 Complainant was mentioned in articles on the famous cNet.com technology website as well as the New York Times and the first Wikipedia page discussing Complainant’s services was created. Its reputation at that time was further evident in the number of times the WORDPRESS name was discussed on private blogs and other websites. Even a Google search which limits results to dates between 2003 and 2005 and excludes Complainant’s own websites, shows how extensive was the reputation of the WORDPRESS Mark during Complainant’s early history.
In 2006 WordPress landed the famous news broadcast organization CNN as a client. The WORDPRESS services have also been the subject of national publicity including various news articles, YouTube videos and a book, in the famous “Dummies” series, entitled “WordPress For Dummies.” Complainant has also been the recipient of recognition and awards. In 2007 WordPress won a Packt Open Source CMS Award and in 2009 it won the best Open Source CMS Award. Further, WordPress was featured on the cover of Linux Journal in July of 2008 and in a business section cover story in the San Francisco Chronicle that same month. At that time WordPress was ranked at #31 in the world on the Alexa.com website with 90 million monthly page views. In January of 2009 WordPress appeared in a story in USA Today. By October, 2009, and based on survey evidence, the Open Source CMS Market Share Report reached the conclusion that WordPress enjoys the greatest brand strength of any open source content management system.
Complainant’s <wordpress.com> and <wordpress.org> websites provide information to prospective users and generate significant revenue for Complainant. As a result of Complainant’s long and extensive use and efforts to promote the WORDPRESS Marks, the Marks have gained significant common-law and registered rights and serve to identify and indicate the source of Complainant’s services to the public, and to distinguish its services from those of others. The Marks have become famous and widely recognized by consumers.
Complainant’s WORDPRESS marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns the following:
Mark Goods and Services Reg. No. Reg. Date
WORDPRESS IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201424 (US) January 3, 2007 (Filed: March 1, 2006)
WORDPRESS (Logo) IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328
IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201428 (US) January 23, 2007 (Filed: March 1, 2006)
WORDPRESS WARES:
(1) Downloadable software program and hosted software for use in designing and managing content on a website.
SERVICES:
(1) Hosted software solution services, namely providing use of on-line non-downloadable software for use in enabling internet publishing.
Used in CANADA since at least as early as January 2004 TMA698039
(Canada) October 9, 2007 (Filed: August 31, 2006)
WORDPRESS Cl. 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Cl. 35: Advertising; business management services; business administration; office functions.
Cl. 38: Telecommunications.
Cl. 41: Education; providing of training; entertainment; sporting and cultural activities.
Cl. 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services. 005101068
(European CTM) November 19, 2008 (Filed: May 29, 2006)
WORDPRESS Cl. 9 Establishment of an Internet blog site with a downloadable computer software; for the Internet electronic publications downloadable computer software. 5579753 (China) August 14, 2009 (Filed: September 1, 2006)
WORDPRESS Cl. Realtime connection service for datexchange between computer users, Hosting computer sites [wesites], Creating and maintaining wesites for others, Computer programming, Rental of computer software, Computer system design, Computer software (Maintenance of -), Computer programs (Duplication of -), 5633949 (China) October 21, 2009 (Filed: September 27, 2006)
Respondent’s registration of the <WordOress.org> domain violates the Policy.
(a) The <WordOress.org> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <WordOress.org> domain is confusingly similar, on its face, to Complainant’s distinctive WORDPRESS Marks, the registered and common-law rights to which existed prior to the creation date of the <WordOress.org> domain. See, Yarnmarket Inc. v. yarndexforyarn, NAF Claim No. FA0910001288402 (2009) (Panel held the “registration of a trademark is not necessary to establish that Complainant has rights in the mark), citing, McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002); and Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <WordOress.org> domain.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark, possibly against the same Respondent as in the present dispute). In WORDPRESS, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s WORDPRESS mark pursuant to Policy ¶4(a)(i), because Respondent’s domain name contains Complainant’s mark in its entirety or is simply a misspelled variation of the WORDPRESS mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a nearly identical copy of Complainant’s Marks and merely substituting the letter “O” for the letter “P” in the WORDPRESS Mark and utilizing the “.COM” extension, thereby making visitors to its websites think that they are being linked to one of the Complainant’s legitimate sites. This confusion is made all the worse because the letters “O” and “P” are immediately next to each other on a standard QWERTY keyboard and it is very easy for a user to enter a typo of the WORDPRESS Mark. See, Apple Inc. v. Hung-Yen Cheng, WIPO Case No. D2014-0186 (The domain applw.com was held to be confusingly similar to the APPLE trademark and “a classic case of typosquatting”). Further, in Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 it was reasoned that even if searchers discover they are not at Complainant’s site, they may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of a disputed domain. As in Athanasios, Respondent here uses the WORDPRESS Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the WORDPRESS Marks listed in the body of the web pages of the <WordOress.org> domain and the services offered on that page reference or are related to those offered by Complainant, searchers will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <WordOress.org> domain under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances that, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <WordOress.org> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <WordOress.org> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant. See, Exhibit F-1 hereto. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Further, Respondent’s use of the <WordOress.org> domain to deposit malware on the machines of website visitors is certainly not a bona fide use of the domain. In a prior case brought by Complainant, WordPress Foundation v. Ensei Tankado, NAF Claim No. FA1312001536197 (2014), the Panelist considered another infected website and found that “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.” Id. See also, Orbotech Ltd. v. Above.com Domain Privacy / Host Master, NAF Claim No. FA1106001392102 (2011) (“Downloading malicious software onto an Internet users’ computer demonstrates a lack of rights to and legitimate interests under Policy ¶4(a)(ii)”).
Next, Respondent is not commonly known by the name WORDPRESS or <WordOress.org> and so its actions do not fall within Policy ¶4(c)(ii). Respondent does not legitimately operates a business or other organization under the <WordOress.org> name since this name infringes upon Complainant’s trademark rights and contains malware as noted above. Respondent also does not own any trademark or service mark rights in the WORDPRESS name. The mere existence of the website to which the <WordOress.org> domain resolves does not, by itself, demonstrate otherwise.
As for fair use, the commercial activity conducted on the site to which the <WordOress.org> domain resolves removes the possibility that Respondent’s use fits within any accepted definition of fair use. Searchers for Complainant’s WORDPRESS goods and services, who used the <WordOress.org> domain would be confused and think they were visiting a site of the Complainant’s, or an authorized company, until they discovered that they were in a site of an unrelated company which contains malware and promotes the goods of unrelated third parties through a series of pay-per-click links. This activity removes the site from any definition of fair use and is very confusing for individuals searching for Complainant’s services. The <WordOress.org> site is likely to confuse visitors and potentially lead them to download malware under the mistaken impression that they are visiting a site which is run using Complainant’s WORDPRESS services. Such use cannot be considered fair. See, Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165 (Confusingly similar name and the commercial activity on respondent’s websites would lead to visitors being diverted away from complainant’s legitimate website even after such visitors realized they were not on the legitimate site), and Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (Respondent’s use of optiononelending.com was not bona fide nor legitimate where such domain was nearly identical to Complainant’s trademark).
Lastly, Respondent’s use has tarnished and diluted the WORDPRESS Marks. By using the Marks in association with a site which is not authorized by Complainant and which features links to third-party websites, Respondent has diminished consumers’ capacity to associate the Marks with the quality products and services offered under the Marks by Complainant and its authorized partners. Respondent’s use creates the very real risk that Complainant’s trademarks are being associated with goods and services over which Complainant has no quality control. This is entirely unacceptable under the basic tenets of international trademark law.
(c) Respondent Registered The <WordOress.org> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally seeks to disrupt the business of a competitor, Policy ¶4(b)(iii), or attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location, Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. 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 date on which the Respondent acquired the <WordOress.org> domain. See, Microsoft Corporation and Skype v. Abdu lSalam / jus2communications, supra, (Since the respondent displayed complainant’s trademark on its website the Panelist found that “Respondent registered the <skypeplus.org> domain name with actual knowledge of the SKYPE trademark. Respondent’s actual knowledge of Complainant’s SKYPE mark is inferred from the notoriety of the SKYPE mark, and Respondent’s scheme to exploit the mark…. It is therefore inconceivable that Respondent was unaware of Complainant’s mark when it registered <skypeplus.org>.”); American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name … provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s registered and common-law rights in the Marks.
In Microsoft Corporation and Skype v. Abdu lSalam / jus2communications, supra, using the SKYPE trademark and logo, the respondent’s <skypeplus.org> domain name targeted internet users seeking the services provided under the complainant’s mark and diverted such users to the respondent’s website seeking to benefit from the goodwill associated with the complainant’s famous mark. The Panelist held that “These circumstances demonstrate bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv).” Id.
Respondent may be obtaining commercial gain from its use of the <WordOress.org> domain. When a visitor to the website to which the <WordOress.org> domain resolves, clicks on one of the third-party links which appear there, Respondent may be receiving some form of compensation from the various website owners who are forwarded from the <WordOress.org> website – either in return for propagating malware of such third parties or for promoting their websites and products. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <WordOress.org> site.
Here, Respondent’s possible generation of forwarding fees, or some other form of revenue generation, from its website at the <WordOress.org> site results from links to third-party goods and services. This alone constitutes commercial gain. Moreover, Respondent’s use of the <WordOress.org> domain and website may result in a commercial gain for others by forwarding visitors to such third-party sites. Because of the appearance of pay-per-click links on the page, Respondent’s use of this domain is commercial since the various third-parties which receive forwarded traffic from the site benefit from such traffic or the malware they transmit to visitors. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Further, as noted above, the <WordOress.org> website contains malware which is transmitted to visitors’ machines. Such use of a domain name has uniformly been held to evidence bad faith on the part of it owner. See, Orbotech Ltd., supra, (“Panels have found that domain names that attempt to download malicious software and other viruses onto the computers of Internet users are being used in a way that supports findings of bad faith registration and use.”), citing, Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrates Respondent’s bad faith under Policy ¶4(b)(iv)); see also 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).).
Of course, as the owner of the <WordOress.org> domain, Respondent is entirely and solely responsible for the content of its website, including all links, malware, and other items which appear thereon. American Airlines, Inc. v. kirk shafonsky / none, NAF Claim No. FA1310001525985 (2013) (Where malware was found on Respondent’s site, “[t]he Panel finds that Respondent is primarily and ultimately responsible for the content reflected on the site to which the domain name resolves whether Respondent is consciously aware of the presence of competitors links or has hired a third party who is directly involved in generating the links.”). Also see, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <WordOress.org> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Since March 28, 2003, Complainant has continuously used the WORDPRESS mark in association with one of the largest, self-hosted blogging and internet publishing tools in the world. Complainant’s official websites provide information to prospective users and generate significant revenue for Complainant. Complainant registered its trademarks with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 registered January 3, 2007); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA698,039 registered October 9, 2007); Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 005,101,068 registered September 19, 2008) as well as with China’s SAIC (e.g., Reg. No. 5,579,753 registered August 14, 2009). A complainant may normally demonstrate its rights in a mark by providing evidence of registration with a recognized trademark authority. 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)). Using this standard, Complainant has adequately demonstrated its rights in the WORDPRESS mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <wordoress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark. Respondent substitutes the letter “o” for the letter “p” in Complainant’s WORDPRESS mark. The letter “o” and the letter “p” are very close to each other on a QWERTY keyboard. Respondent also adds the gTLD “.com” to Complainant’s registered mark. Neither change is adequate to differentiate the disputed domain name from Complainant’s mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Respondent’s <wordoress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <wordoress.org> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the Registrant as “Domain Backorder Domain-Catch.com.” A respondent is not commonly known by a disputed domain name where nothing in the WHOIS information indicates any similarity between the disputed domain name and Respondent’s name. 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). Based upon the information available, Respondent is not commonly known by the <wordoress.org> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <wordoress.org> domain name under Policy ¶¶4(c)(i) or 4(c)(iii). Respondent’s disputed domain name resolves to a classic pay-per-click website displaying links to other websites that are not associated with Complainant. The website at Respondent’s <wordoress.org> domain name features the heading “Navigation” and proceeds to list numerous links in Chinese as well as in English. A few of the English links include “www.medicoxchina.com,” “jfwxhw.com,” “www.sesler.com,” and “www.technetcn.com.” Using a disputed domain name to resolve to a website featuring links to third-parties for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Respondent has no rights or legitimate interests in the <wordoress.org> domain name under Policy ¶¶4(c)(i) or 4(c)(iii).
Complainant claims Respondent’s disputed domain name is being used to resolve to a website that distributes malware computer programs. This type of use indicates Respondent’s lack of rights. See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not 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)). Based upon this factor alone, Respondent has no rights or legitimate interests in the disputed domain name.
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. This makes it clear the registered owner has no control over the contents of the domain name. The beneficial owner remains hidden from public view and does not publicly associate itself with the disputed domain name. This means Respondent cannot acquire any rights or legitimate interests in the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <wordoress.org> domain name in bad faith. Respondent is commercially profiting from the use of the <wordoress.org> domain name through website displaying pay-per-click links for third-parties, where Respondent appears to receive compensation. Using of a confusingly similar domain name to display pay-per-click links indicates bad faith use and registration under Policy ¶4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)). Respondent registered and is using the <wordoress.org> domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s resolving website deposits malware on the computers of website visitors. Using a disputed domain name in this fashion is an attempt to attract Internet users to its website for commercial gain under Policy ¶4(b)(iv) by creating a likelihood of confusion with Complainant’s mark and very likely Policy ¶4(b)(iii) as well. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)); see also 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO March 5, 2009) (finding the respondent’s use of a website to distribute malware was an attempt to attract Internet users to its website or other online location for commercial gain, by creating a likelihood of confusion with the complainant’s mark.). Even if this type of action does not qualify as bad faith registration and use under Policy ¶4(b)(iv) and Policy ¶4(b)(iii), it certainly fits within the penumbra of Policy ¶4(b). Respondent registered and is using the <wordoress.org> domain name in bad faith.
Finally, using a WHOIS privacy service raises a rebuttable presumption of bad faith in the commercial context. Respondent has done nothing to rebut that presumption. Therefore, this fact alone justifies finding Respondent registered and uses the disputed domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wordoress.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 5, 2014
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