WordPress Foundation v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1408001577167
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workdpress.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2014; the National Arbitration Forum received payment on September 2, 2014.
On August 28, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <workdpress.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@workdpress.com. Also on September 4, 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 September 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant owns rights in the WORDPRESS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No 3,201,424 registered Jan. 3, 2007, filed Mar.1, 2006). Complainant has used the WORDPRESS mark since March 2003 to provide blogging and Internet publishing services.
The true Respondent in this case is Keyword Marketing, Inc.
The <workdpress.com> domain name is confusingly similar to the WORDPRESS mark.
Respondent lacks rights in the disputed domain name. Respondent is not commonly known by the <workdpress.com> name. Further, Respondent resolves the domain name to a pay-per-click site displaying links to third-parties, some of which compete with Complainant. Such use does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii).
Respondent’s bad faith is demonstrated by prior UDRP findings against Respondent. Further, Respondent is obtaining commercial gain from the pay-per-click links featured on the landing page in violation of Policy ¶ 4(b)(iv). Respondent had actual knowledge of Complainant’s rights in the WORDPRESS mark at the time of domain registration. Further, the term “workd” is not a word in any language, and therefore must be a typosquat of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WORDPRESS mark through its registration of such mark with the USPTO.
The true Respondent in this case is Keyword Marketing, Inc.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its WORDPRESS trademark.
Respondent uses the at-issue domain name to address a landing page displaying pay-per-click links to third parties including some that compete with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the WORDPRESS trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue <workdpress.com> domain name Respondent inserts the letter “k” into Complainant’s WORDPRESS trademark and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s WORDPRESS trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <workdpress.com> domain name is confusingly similar to Complainant’s WORDPRESS mark. See DIRECTV, Inc v. Digi Real Estate Foundation v. Guaranteed Direct Marketing, Inc. / James O’Brien, FA 1439237 (Nat. Arb. Forum May 14, 2012) (finding “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark).”
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Domain Admin / Private Registrations Aktien Gesellschaft” as the domain name registrant. Complainant suggests the true Respondent is “Keyword Marketing, Inc.” Further, there is nothing in the record that otherwise suggests Respondent is commonly known by the <workdpress.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to TLD Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent’s at-issue domain name addresses a pay-per-click webpage displaying links to third-parties, some of which compete with Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007)(finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above Complainant shows that the true owner of the at-issue domain name is Keyword Marketing, Inc. acting behind a privacy service. There are at least six prior UDRP cases in which Keyword Marketing, Inc. was the respondent and the at-issue domain name was transferred to the complainant. Respondent’s pattern of domain abuse suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Second, as also mentioned above Respondent uses the confusingly similar <workdpress.com> domain name to benefit from pay-per-click links to third parties, including some who compete with Complainant. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (finding “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).”
Third, Respondent registered the <workdpress.com> domain name knowing that Complainant had trademark rights in the WORDPRESS mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt reference to the WORDPRESS trademark in forming the at-issue domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign purpose. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <workdpress.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent’s <workdpress.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with a targeted trademark and thereby be directed to a web presence controlled by the domain name’s registrant. Here, Respondent simply inserts a letter “k” into Complainant’s trademark to form the typosquatted domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <workdpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 30, 2014
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