WordPress Foundation v. mich delorme / mich d dot tlds
Claim Number: FA1410001584295
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is mich delorme / mich d dot tlds (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hellowordpress.com>, registered with DomainSite, Inc.
The undersigned certifies that she has 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 10, 2014; the National Arbitration Forum received payment October 16, 2014.
On October 14, 2014, DomainSite, Inc. confirmed by e-mail to the National Arbitration Forum that the <hellowordpress.com> domain name is registered with DomainSite, Inc. and that Respondent is the current registrant of the name. DomainSite, Inc. verified that Respondent is bound by the DomainSite, Inc. 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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@hellowordpress.com. Also on October 16, 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 November 12, 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. 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.
Complainant makes the following allegations in this proceeding:
Complainant holds Policy ¶ 4(a)(i) rights in the WORDPRESS mark as demonstrated by its valid trademark registrations with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,201,424, registered Jan. 23, 2007). Complainant uses the WORDPRESS mark in connection with self-hosted blogging and Internet publishing tools. The <hellowordpress.com> is confusingly similar to the WORDPRESS mark as the name incorporates the mark in full while adding the generic term “hello” as well as the extension “.com.”
Respondent is not commonly known by the <hellowordpress.com> domain name as demonstrated by the WHOIS record. Further, Respondent has no authorization to use the WORDPRESS mark in a domain name. Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a website that appears to be hosting links to other websites at which WordPress plugins, themes, and templates may be found, as well as links unrelated to Complainant. Respondent generates revenue from the linked pages.
Respondent’s bad faith is demonstrated on two bases. First, Respondent attempted to mislead Internet users as to Complainant’s affiliation with the disputed domain name and resolving content in an effort for self commercial gain. Respondent relies on the WORDPRESS mark as well as third-party links to generate click-through revenue. Second, Respondent had full knowledge of Complainant and its rights in the WORDPRESS mark at the time the <hellowordpress.com> domain name was registered. Respondent’s registration despite such knowledge is indicative of bad faith.
Respondent’s Contentions:
Respondent failed to submit a Response. The disputed domain name was registered February 22, 2010, some three years after Complainant’s registration.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant claims Policy ¶ 4(a)(i) rights in the WORDPRESS mark, as demonstrated by valid trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,201,424, registered Jan. 23, 2007). Complainant purports to use the WORDPRESS mark in connection with self-hosted blogging and Internet publishing tools. The Panel agrees that Complainant’s valid USPTO registration evidences rights in the WORDPRESS mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <hellowordpress.com> is confusingly similar to the WORDPRESS mark as the name incorporates the mark in full while adding the generic term “hello” as well as the extension “.com.” Complainant correctly argues that the addition of the generic top-level domain “gTLD” is irrelevant to the confusing similarity analysis. Further, the Panel agrees that addition of the generic tem “hello” is insufficient to distinguish the domain name from the wholly included WORDPRESS mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, the Panel may find the <hellowordpress.com> is confusingly similar to the WORDPRESS mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
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 and 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 argues that Respondent is not commonly known by the <hellowordpress.com> domain name as demonstrated by the WHOIS record. The Panel notes that the WHOIS record identifies “mich delorme / mich d dot tlds” as registrant, which provides no Policy ¶ 4(c)(ii) nexus. Further, Complainant maintains that Respondent has no authorization to use the WORDPRESS mark in a domain name. Given the lack of affirmative evidence to support rights and legitimate interests in the disputed domain name, the Panel finds that Respondent is not commonly known by the <hellowordpress.com> domain 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).
In addition, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Complainant claims the disputed domain name resolves to a website that appears to be hosting links to other websites at which WordPress plugins, themes, and templates may be found, as well as links unrelated to Complainant. Complainant presumes that Respondent generates revenue from the linked pages. The Panel notes that the resolving webpage features links to third-party products and services such as “Chinesewomendate.com” (a dating service), “Pantheon” (a website launching service), and “Egnyte” (a file sharing service). See Compl., at Attached Ex. F. The Panel agrees that the use of the <hellowordpress.com> domain name to promote commercial hyperlinks unrelated to Complainant does not amount to a Policy ¶ 4(c)(i) bona fide offering, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), although Respondent is using the resolving page to, in part, promote Complainant’s own offerings. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (an authorized dealer may use the complainant’s trademark if the respondent is 1) selling the products at issue; 2) selling only the complainant’s products; 3) accurately disclosing the relationship between the complainant and the respondent; and 4) has not attempted to register all domain names incorporating the complainant’s mark, thus preventing the complainant from reflecting its mark in a domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant first argues that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith. Complainant urges that Respondent attempted to mislead Internet users as to Complainant’s affiliation with the disputed domain name and resolving content in an effort to commercially gain. Complainant explains that Respondent relies on the WORDPRESS mark as well as third-party links to generate click-through revenue. See Compl., at Attached Ex. F. Previous panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent is using a confusingly similar domain name to generate commercial revenue via click-through links. For example, in T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel held that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constituted bad faith under Policy ¶ 4(b)(iv). The Panel agrees that Respondent’s reliance of Complainant’s WORDPRESS mark and services in connection with unrelated click-through links supports findings of ICANN Policy ¶ 4(b)(iv) bad faith.
Second, Complainant asserts that Respondent had full knowledge of Complainant and its rights in the WORDPRESS mark at the time Respondent registered the <hellowordpress.com> domain name. Complainant argues that Respondent’s registration, in the presence of such knowledge, is indicative of bad faith. Previous panels have found evidence of bad faith where actual knowledge could be inferred. To illustrate, the panel in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), explained, “[a]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hellowordpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 25, 2014
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