WordPress Foundation v. OLCAY BAL
Claim Number: FA1507001627108
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is OLCAY BAL (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpress.ink>, registered with FBS Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 7, 2015.
On July 13, 2015, FBS Inc. confirmed by e-mail to the Forum that the <wordpress.ink> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 July 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2015 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@wordpress.ink. Also on July 14, 2015, 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 August 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant owns and operates the largest self-hosted blogging and Internet publishing service in the world at <wordpress.com>. Complainant has rights in the WORDPRESS mark through its registration with the United States Patent and Trademark Ofiice (“USPTO”) (Reg. No. 3,201,424, registered on January 23, 2007). Respondent’s <wordpress.ink> is identical to the WORDPRESS mark because it entirely contains the mark, and is differentiated by only the top-level domain (“TLD”) “.ink.” In addition, the TLD, “.ink,” increases the likelihood that Internet users will believe the <wordpress.ink> domain name is associated with Complainant.
(ii) Respondent is not commonly known by the <wordpress.ink> domain name because the available WHOIS information lists “OLCAY BAL” as Registrant and because Respondent has failed to offer any evidence to indicate being commonly known by <wordpress.ink>. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains an inactive holding.
(iii) Respondent registered and uses the <wordpress.ink> domain name in bad faith because Respondent created the domain with actual or constructive knowledge in Complaint’s rights in the WORDPRESS mark and because Respondent’s use of the resolving website constitutes an inactive holding.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <wordpress.ink> domain name was created on September 10, 2014.
The Panel notes that Complainant makes requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Turkish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Turkish language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Turkish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, especially in the absence of Response and objection to Complainant’s requests that the language of this administrative proceeding proceed in the English language, the Panel decides that the proceeding should be in English.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
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 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.”).
Complainant alleges it has rights in the WORDPRESS mark through its registration with the USPTO (Reg. No. 3,201,424, registered on January 23, 2007). Complainant has provided documentation of this registration in Exhibit E, along with several international registrations of the mark, including registration in Turkey. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel may find that Complainant has rights in the WORDPRESS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <wordpress.ink> domain name is identical to the WORDPRESS mark because it entirely contains the mark, and is differentiated by only the TLD “.ink.” Past panels have considered marks and domain names identical under similar circumstances. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). In addition, Complainant argues that the TLD, “.ink,” increases the likelihood that Internet users will believe the <wordpress.ink> domain name is associated with Complainant because of the association between publishing and ink. Past panels have agreed with similar reasoning in regards to similarly descriptive TLDs. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Therefore, the Panel finds that Respondent’s <wordpress.ink> domain name is identical to Complainant’s 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 alleges that Respondent is not commonly known by the <wordpress.ink> domain name. The Panel notes that the WHOIS information lists “OLCAY BAL” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Accordingly, the Panel finds that Respondent is not commonly known by the <wordpress.ink> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the domain to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains an inactive holding. Complainant has provided a screenshot of the resolving website in Exhibit F, which contains nothing except for Turkish words, which allegedly translate to “Under Construction.” Past panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [failure to make an active use] of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”). As the Panel finds that Respondent has failed to use the <wordpress.ink> domain name, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant does not make any arguments that Respondent registered and uses the <wordpress.ink> domain name that are specifically enumerated under Policy ¶ 4(b). However, past panels have found that the enumerated arguments provided by Policy ¶ 4(b) are not the exclusive means by which bad faith can be found. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the [<euro-tunnel.com>] domain name in issue was registered in and is being used in bad faith.”).
Complainant alleges that Respondent registered the <wordpress.ink> domain name with actual and/or constructive knowledge of Complainant’s rights in the WORDPRESS mark. Complainant argues it has made marketed the WORDPRESS mark extensively such that it is a famous mark, and that this fame, combined with Respondent’s choice to register the <wordpress.ink> domain name, suffices to show that Respondent had actual or constructive knowledge of Complainant’s rights in the WORDPRESS mark.
Past panels have found that constructive knowledge is not sufficient to support a finding of bad faith. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration). However, past panels have also found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of an identical domain name is done in bad faith under Policy ¶ 4(a)(iii). 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). As the Panel infers due to the fame of Complainant’s mark and the association between Complainant’s business ‘publishing’ and TLD ‘ink’ of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the WORDPRESS mark at the time of registration, the Panel finds that Respondent registered the <wordpress.ink> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent’s current use of the <wordpress.ink> domain name constitutes an inactive holding, which shows bad faith. Complainant has provided a screenshot of the resolving website in Exhibit F, allegedly displaying the Turkish words for “Under Construction.” Past panels have found a failure to make an active use of a domain name to show bad faith in use and registration under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i)Complainant’s WORDPRESS trademark has a good reputation and is widely known, as evidenced by the fact that Complainant it had a long and well established reputation in connection with the provision of the largest self-hosted blogging and Internet publishing service in the world at the time of Respondent’s registration, ii) the association between Complainant’s business ‘publishing’ and TLD ‘ink’ and iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith. Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith under 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 <wordpress.ink> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 13, 2015
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