WordPress Foundation v. Renoo Menard
Claim Number: FA1603001666250
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States. Respondent is Renoo Menard (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpresswebsitecare.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 25, 2016.
On March 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpresswebsitecare.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2016 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@wordpresswebsitecare.com. Also on March 25, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant uses the WORDPRESS mark in connection with a blogging and Internet publishing service. Complainant has registered the WORDPRESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424, registered January 23, 2007), which establishes rights in the mark. Respondent’s <wordpresswebsitecare.com> domain name is confusingly similar to the WORDPRESS mark as it incorporates the mark in its entirety, merely adding the generic terms “website” and “care,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <wordpresswebsitecare.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wordpresswebsitecare.com> domain name. Rather, the domain name resolves to a website featuring related computer services such as security monitoring, data backup, site performance and others through which Respondent presumably makes profit.
3. Respondent is using the <wordpresswebsitecare.com> domain name in bad faith. First, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent had actual knowledge of the WORDPRESS mark and Complainant’s rights therein because of the extensive use and fame of the mark.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <wordpresswebsitecare.com> domain name is confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <wordpresswebsitecare.com> domain name.
3. Respondent registered or used the <wordpresswebsitecare.com> 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 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(f), 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 uses the WORDPRESS mark in connection with the largest, self-hosted blogging and internet publishing services and its website <WordPress.com>. Complainant claims to have registered the WORDPRESS mark with the USPTO (e.g., Reg. No. 3,201,424, registered January 23, 2007), arguing such registrations demonstrate rights in the mark, even where Respondent operates in a different country. Previous panels have found, under such circumstances, that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D 2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). This Panel agrees that Complainant has adequately demonstrated its rights in the WORDPRESS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wordpresswebsitecare.com> domain name is confusingly similar to the WORDPRESS mark as it incorporates the mark in its entirety, merely adding the generic terms “website” and “care,” and the gTLD “.com.” Past Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). 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)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel agrees that Respondent’s domain is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <wordpresswebsitecare.com> domain name. Complainant asserts that Respondent is not commonly known by the domain name. The WHOIS information regarding the disputed domain name lists “Renoo Menard” as registrant. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the whois information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wordpresswebsitecare.com> domain. Rather, Complainant contends that the domain resolves to a website featuring related computer services such as security monitoring, data backup, site performance and others from which Respondent presumably makes profit. See Compl., at Attached Ex. F. Previous panels have found that such use by a respondent evinces neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See WordPress Foundation v. Purab Kharat, FA1507001627109 (Nat. Arb Forum August 18, 2015) (no rights or legitimate interest in the domain name where “Respondent’s website offers services related to website design services using, in some cases, components of the WordPress software, without Complainant’s permission”). Therefore, the Panel agrees that Respondent’s use of its domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant alleges that Respondent, through the disputed domain, offers both Complainant’s services, and other services related to Complainant’s business such as security monitoring, data backup, and site performance. See Compl., at Attached Ex. F. Further, Complainant alleges that Respondent’s use of Complainant’s mark and logo on the webpages that resolve from the disputed domain will confuse Internet users as to the source, sponsorship, affiliation and endorsement of the website. Previous panels have held that a respondent’s use of a disputed domain to offer products and/or services that compete directly with a complainant’s business constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Previous panels have also determined that a respondent’s attempt to pass itself off as a complainant through the use of the complainant’s logo and mark on the webpages that resolve from the respondent’s domain violates Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). For these reasons, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the domain with actual knowledge of Complainant's WORDPRESS mark. Complainant argues that the extensive, global use of the WORDPRESS mark put Respondent on notice of Complainant’s mark and its rights therein. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See 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). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating 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 <wordpresswebsitecare.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 3, 2016
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