WordPress Foundation v. Alexander Mooney
Claim Number: FA1410001583527
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Alexander Mooney (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpresswebsitebuilder.org>, registered with eNom, Inc. (R39-LROR).
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 6, 2014; the National Arbitration Forum received payment October 10, 2014.
On October 7, 2014, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <wordpresswebsitebuilder.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) verified that Respondent is bound by the eNom, Inc. (R39-LROR) registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@wordpresswebsitebuilder.org. Also on October 10, 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.
The Forum received a timely Response and determined it to be complete October 30, 2014.
The Forum received a timely Additional Submission from Complainant November 3, 2014.
The Forum received a timely Additional Submission from Respondent November 10, 2014.
On November 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Policy ¶ 4(a)(i). Complainant owns the WORDPRESS mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,201,424, registered January 3, 2007). Complainant uses the WORDPRESS mark in connection with self-hosted blogging and Internet publishing tools. The <wordpresswebsitebuilder.org> domain name is confusingly similar to the WORDPRESS mark as the domain name adds the descriptive terms “website builder” and the generic top-level domain (“gTLD”) “.org.”
Policy ¶ 4(a)(ii). Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not affiliated with, nor authorized by Complainant to use the WORDPRESS mark in the disputed domain name. Further, Respondent is not commonly known by the <wordpresswebsitebuilder.org> domain name. Additionally, Respondent has not made a bona fide offering of goods or services pursuant to the test formulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO June 11, 2001). Respondent’s website offers website hosting and design services, reliant in part on unauthorized use of Complainant’s plugins, themes, and templates. Further, the disputed landing page promotes design services that are not offered by Complainant and also promotes the hosting services of a company different from Complainant, namely “HostGator.” Tellingly, the page contained no disclaimer at the time Complainant filed the Complaint. Respondent’s use of the disputed domain name in connection with a commercial website, which mirrors Complainant’s own color scheme and branding, shows that Respondent’s use does not fall within any accepted definition of fair use.
Policy ¶ 4(a)(iii). Respondent engaged in conduct supporting findings of bad faith use and registration by using the <wordpresswebsitebuilder.org> domain name to mislead users as to Complainant’s purported affiliation with the resolving content to generate commercial gain. Such use is counter to Policy ¶ 4(b)(iv). Further, Respondent’s actual knowledge of Complainant’s rights in the WORDPRESS mark at the time Respondent registered the domain name evidences bad faith.
Respondent Makes the Following Points in Response:
Respondent registered this <wordpresswebsitebuilder.org> domain name August 22, 2012 to market Respondent’s WordPress website design services. WordPress is a free content management system (CMS).
Respondent claims the disputed domain name is not confusingly similar to the WORDPRESS mark. The disputed domain name is merely descriptive of the subject of Respondent’s services, namely to design WordPress websites.
Respondent asserts that he is making a bona fide use of the disputed domain name, and has a legitimate interest therein. The consensus view, according to WIPO, is that a reseller or distributor can make a bona fide offering of goods or services if it: i) actually offers goods and services; ii) uses the site to sell only the trademarked goods; and, iii) prominently discloses at the site the registrant’s relationship with the trademark holder. Respondent’s use satisfies these prongs.
Respondent asserts that he registered the disputed domain name in good faith and has used it continually in good faith since 2012, some five years after Complainant’s registration.
Respondent requests a finding of Reverse Domain Name Hijacking, as Complainant knows, according to Respondent, that no plausible basis exists for a complaint.
Complainant Makes These Additional Submissions:
The screen grab available in Respondent’s Exhibit A now shows a website that was modified after inception of this dispute. Notably, a “Disclaimer” appears at the bottom of the page, explaining that the site is not endorsed by WordPress. Post-dispute alterations should not be considered, and should not satisfy the third prong of the Oki Data test. Further, Respondent’s screen grab fails to show the link to third-party hosting services as shown in Complainant’s screen grab. Such alterations may be subject to change and those coming after the filing of the Complaint may support findings of bad faith.
A likelihood of confusion exists between the WORDPRESS mark and the disputed domain name. Confusing similarity is merely the threshold test.
Complainant asserts that others may use the WORDPRESS mark in a legitimate way; however, Complainant does not authorize commercial use of its mark in any company or domain names, especially where the use is confusing. Respondent’s use of colors similar to those used on Complainant’s own website as well as the lack of any disclaimer at the initiation of this dispute heighten the possibility of confusion.
Respondent Makes These Additional Submissions
Respondent primarily contends that Complainant’s Additional Submission deflects the issues, fails to rebut Respondents defenses, and does not address Respondent’s legitimate use.
Complainant established that it has rights in the disputed domain name that contains Complainant’s protected mark in its entirety.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no license, permission, authorization or consent to use Complainant’s protective mark in the disputed domain name that contains Complainant’s protected mark in its entirety.
By its specialized use of the mark and by use of a color scheme mimicking Complainant’s, Respondent shows that it knew of Complainant’s prior rights in the mark and seeks to capitalize for commercial gain on goodwill associated with Complainant’s protected mark.
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 to 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.
Identical or Confusingly Similar:
Complainant uses the WORDPRESS mark in connection with self-hosted blogging and Internet publishing tools. Complainant owns the WORDPRESS mark through trademark registrations with the USPTO (e.g., Reg. No. 3,201,424, registered January 3, 2007). Complainant correctly urges that such valid trademark registrations satisfy Policy ¶ 4(a)(i). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel reasoned: “As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).” Accordingly, the Panel agrees that Complainant’s USPTO registration of the WORDPRESS mark evidences Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant urges that the <wordpresswebsitebuilder.org> domain name is confusingly similar to the WORDPRESS mark as the domain name adds the descriptive terms “website builder” and the gTLD “.org.” Complainant urges that the added terms are descriptive of the blogging and Internet publishing tools promoted under the WORDPRESS mark, and therefore serve to increase the likelihood of confusion. In its Additional Submission, Complainant urges that the confusing similarity test is a threshold consideration. Prior panels have found confusing similarity in cases where the domain name at issue includes the disputed mark in its entirety, with the additions of generic or descriptive terms, and gTLD. For example, in Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012), the panel found that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that addition of generic and descriptive terms fails to negate confusing similarity. Accordingly, the Panel finds that the addition of descriptive terms and a gTLD fail to distinguish the <wordpresswebsitebuilder.org> domain name from the WORDPRESS mark, and therefore the Panel finds confusing similarity pursuant to Policy ¶ 4(a)(i).
Respondent argues that the <wordpresswebsitebuilder.org> domain name is not confusingly similar to the WORDPRESS mark. Although there may be circumstances in which the disputed domain name might qualify as supportive of the mark rather than exploitative of the mark, this Panel disagrees here that the two additions of the terms “website” and “builder” sufficiently distinguish the name from Complainant’s protected mark. The overall impression of the domain name here may be to build a WORDPRESS website; but then Respondent provides hosting at a competing site. Complainant satisfied Policy ¶ 4(a)(i). But See Broadcom Corp. v. Smoking Domains, FA 137037 (Nat. Arb. Forum Feb. 11, 2003) (finding that the <broadcommunications.com> domain name was not confusingly similar to the complainant’s BROADCOM mark because the overall impression of the domain name was not similar to the complainant's mark and the domain name was “different, generic, and not likely to confuse the public”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 that Respondent is not affiliated with, nor authorized by, Complainant to use the WORDPRESS mark in the disputed domain name. Further, Complainant urges that Respondent is not commonly known by the <wordpresswebsitebuilder.org> domain name. The Panel notes that the WHOIS record identifies “Alexander Mooney” as registrant, and that this individual made no claim to be commonly known by the disputed domain name in its response. As such, the Panel finds no basis to hold that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In so arguing, Complainant cites the test formulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO June 11, 2001). Pursuant to Oki Data, in order for a reseller to make a bona fide offering of goods or services, the respondent must comply with four requirements, namely: i) the site must actually be offering the goods of the complainant; ii) the respondent must use the site to sell only the trademarked goods of the complainant; iii) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and iv) the respondent must not try to corner the market in all domain names depriving the owner from reflecting its own mark in a domain name. Id. Complainant claims that Respondent fails the first, second, and third prongs. Complainant iterates that Respondent is promoting and providing its own services, not merely those facilitated by Complainant. Further, the disputed landing page promotes the hosting services of another company apart from Complainant, namely “HostGator.” See Compl., at Attached Ex. F1-5. Additionally, Complainant urges that the disputed domain name resolves to a website giving the false impression that it is affiliated with Complainant given multiple uses of the WORDPRESS mark, as well as the blue-and-white color scheme employed on Complainant’s own <wordpress.com> website, with no disclaimer. See id. In its Additional Submission, Complainant explains that the screen grab offered by Respondent of the disputed website was altered after the initiation of this dispute to include a disclaimer, and argues that such subsequent conduct should not be rewarded by this Panel. See Add’l. Sub., at Ex. A. The Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to the Oki Data test, as Respondent’s website does not solely promote Complainant’s offerings, features other hosting services, and/or fails to provide a sufficient disclaimer. In so deciding, the Panel makes special note that a disclaimer added after the initiation of a dispute does not cure the initial deficiency.
Complainant’s Additional Submission maintains that it is possible for others to use the WORDPRESS mark in a legitimate way; however, here, Complainant sets out specifically that it does not authorize the commercial use of its mark in any company or domain names, especially where the use is confusing. In Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003), the panel held that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Given Respondent’s similar expropriation of Complainant’s protected mark, the Panel supplements its Oki Data analysis with such additional precedent in finding that Respondent has no Policy ¶ 4(a)(ii) rights and protections in this case.
The Panel notes that although case authority challenges Complainant’s prima facie showing that Respondent lacks rights and legitimate interests under similar circumstances dealing with a Policy ¶ 4(a)(ii) question, this case is distinguished by Respondent’s specific opportunistic use of Complainant’s own mark to obtain commercial gain utilizing another hosting service, namely HostGator. But SeeTerminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Despite Respondent’s assertions of bona fide use and good faith along with claims of legitimate interests through the claimed consensus view of WIPO that corresponds with the tests detailed in Oki Data, Respondent overlooks its own efforts to disguise itself in Complainant’s colors; to divert others to another hosting service, HostGator; to add a disclaimer after the fact; and to offer goods and services through the disputed website that capitalize on Complainant’s protected mark without permission. See Resp., at Attached Ex. A. Respondent claims to use the disputed domain name to market WordPress website design services, and urges that WordPress is a free content management system. The Panel finds that Respondent did not satisfy the requirements of Oki Data, and that Respondent did not show a bona fide offering, and therefore has no rights to or legitimate interests in the disputed domain name <wordpresswebsitebuilder.org> that contains Complainant’s protected mark in its entirety.
In addition, Respondent also claims that the disputed domain name is merely descriptive of the subject of Respondent’s services, namely to design WordPress websites, and a line of cases support Respondent’s claims if they were accurate. See, e.g., Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked any rights or legitimate interests in the disputed domain name). Further, previous panels have found Policy ¶ 4(c)(i) rights where the respondent uses the disputed domain name to provide information or services relating to a complainant. See, e.g., Secondary Sch. Admission Test Bd., Inc. v. Severino & Hosko, FA 408094 (Nat. Arb. Forum Mar. 24, 2005) (holding that the respondent’s use of the <prepssat.com> domain name was a legitimate use because respondent provided services designed to help students prepare for the SSAT, also the complainant’s mark). This Panel disagrees that this Respondent is using the disputed domain name solely to describe content of the website, or to provide information or services relating to Complainant. The Panel finds instead that Respondent, before it made a disclaimer, presented itself in a manner suggestive that it had Complainant’s support and permission, which Complainant insists that while one could get it, Respondent has no such consent to use the mark.
Though already covered in the Oki Data analysis, the Panel specifically questions value of Respondent’s late disclaimer. While panels have generally concluded that a conspicuous disclaimer may still fail to mitigate confusion, prior panels have relied on the presence of a disclaimer in considering Policy ¶ 4(a)(ii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that the respondent’s website contained an express disclaimer of any affiliation with the complainant, and that the respondent had rights or legitimate interests in the <best-of-vanguard.com> domain name and did not register it in bad faith); contra AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”). Inasmuch as Respondent elected to add the disclaimer after filing of this Complaint, the Panel declines to reach this result here.
The Panel finds that Respondent lack rights or legitimate interests in the disputed domain name containing in its entirety, Complainant’s protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent uses the disputed domain name <wordpresswebsitebuilder.org> to mislead users as to Complainant’s affiliation with the resolving content in hopes of generating commercial gain. Complainant maintains that Respondent relies on a website giving the false impression of affiliation with Complainant given multiple uses of the WORDPRESS mark, as well as the blue-and-white color scheme employed on Complainant’s own <wordpress.com> website. See Compl., at Attached Ex. F1-5. Further, Complainant urges that Respondent impermissibly promotes its own services for commercial gain at the disputed domain name, and also promotes a “HostGator” link, from which click-through fees are likely generated. See id. Previous panels have found evidence of Policy ¶ 4(b)(iv) bad faith where the respondent attempted to mislead Internet users as to the complainant’s affiliation with the disputed domain name and resolving website in an effort to generate commercial revenue. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Accordingly, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith.
Further, Complainant argues that Respondent’s actual knowledge of Complainant’s rights in the WORDPRESS mark at the time the domain name was registered evidences bad faith. The Panel notes that Respondent references the WORDPRESS mark and related services on the disputed landing page. See Compl., at Attached. Ex. F. Prior panels have held that a respondent’s registration of a disputed domain name incorporating a mark is illustrative of Policy ¶ 4(a)(iii) bad faith where the respondent had actual knowledge of the complainant’s mark and rights therein at the time of registration. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”). This Panel agrees that Respondent knew of Complainant and its mark at the time of registration and finds that such knowledge supports findings of Policy ¶ 4(a)(iii) bad faith.
Complainant’s Additional Submission takes issue with the screen grab available in Respondent’s Exhibit A, which Complainant claims shows a website that has been modified since the inception of this dispute. Notably, Complainant notes that a “Disclaimer” now appears at the bottom of the page, explaining that the site is not endorsed by WordPress. Further, Complainant claims Respondent’s screen grab fails to show the link to third-party hosting services as shown in Complainant’s screen grab. Complainant argues that such post-dispute alterations evidence bad faith. Complainant cites to ER Marks, Inc. and QVC, Inc. v. Stuart Mckenzie, FA 1375844 (Nat. Arb. Form Mar. 30, 2011), in which the panel wrote, “Respondent’s intentional attempt to mislead the Panel in this proceeding indicates bad faith in both registering and using the domain name.” See also Vaga-lume Midia Ltda v. Kevo Ouz d/b/a/Online Marketing Realty, FA 1287151, (Nat. Arb. Forum Dec. 7, 2009) (Respondent’s prevarication is sufficient grounds for finding bad faith registration and use.). This Panel finds that Respondent’s conduct supports findings of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent urges that he registered the disputed domain name in good faith to market his WordPress website design services. Respondent claims the domain name was not registered for the purpose of selling, renting, or transferring, and that Respondent never intended to create confusion as to Complainant’s business. This Panel finds that Respondent’s conduct speaks louder than Respondent’s assertions.
Reverse Domain Name Hijacking
Complainant satisfied the elements of Policy ¶ 4(a), and has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpresswebsitebuilder.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 24, 2014
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