WordPress Foundation v. Above.com Domain Privacy
Claim Number: FA1510001641647
Complainant is WordPress Foundation ("Complainant"), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Above.com Domain Privacy ("Respondent"), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpressw.com>, registered with Above.com Pty Ltd.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2015; the Forum received payment on October 16, 2015.
On October 13, 2015, Above.com Pty Ltd. confirmed by email to the Forum that the <wordpressw.com> domain name is registered with Above.com Pty Ltd., and identified the current registrant of the domain name as Carolina Rodrigues, FCS Holdings, Santiago, Chile. Above.com Pty Ltd. has verified that the registrant is bound by the Above.com Pty Ltd. 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 October 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration (including both the public whois data and that provided in the registrar's verification email) as technical, administrative, and billing contacts, and to postmaster@wordpressw.com. Also on October 16, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 November 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant owns the WORDPRESS trademark, which it licenses for use in connection with blogging and Internet publishing services that are used on millions of websites and seen by tens of millions of people worldwide every day. The mark has been used in connection with these services continuously since at least as early as 2003, and Complainant asserts that the mark has become famous as a result of extensive use and promotion. The mark is registered in the United States and elsewhere.
Complainant contends that the disputed domain name <wordpressw.com>, registered by Respondent in 2013, is identical or confusingly similar to its WORDPRESS mark. Complainant contends further that Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent is not commonly known by the mark or domain name and has not received permission to use Complainant's mark. Complainant states that Respondent is using the domain name for commercial gain by redirecting Internet users to a rotating series of unrelated third-party websites, some of which attempt to install malware on a user's computer. Complainant alleges that this use has tarnished and diluted its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.").
The disputed domain name corresponds to Complainant's registered WORDPRESS mark, adding only the letter W and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Regions Bank v. Above.com Domain Privacy, FA 1600146 (Nat. Arb. Forum Feb. 23, 2015) (finding <regionsw.com> confusingly similar to REGIONS); Baylor Univ. v. Frank Evans, FA 1594975 (Nat. Arb. Forum Jan. 21, 2015) (finding <baylorw.org> confusingly similar to BAYLOR); Allstate Insurance Co. v. Yorkshire Enterprises Ltd., FA 1371276 (Nat. Arb. Forum Mar. 22, 2011) (finding <allstatew.com> confusingly similar to ALLSTATE); WordPress Foundation v. mich delorme / mich d dot tlds, FA 1584295 (Nat. Arb. Forum Nov. 25, 2014) (finding <hellowordpress.com> confusingly similar to WORDPRESS); Automattic Inc. v. Zhiming Yang, FA 1354630 (Nat. Arb. Forum Dec. 4, 2010) (finding <wordpresscom.com> confusingly similar to WORDPRESS). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and Respondent appears to be using the domain name for the sole purpose of redirecting users to unrelated third-party websites, presumably for commercial gain. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using a domain name that incorporates and is nearly identical to Complainant's mark to redirect Internet users to unrelated websites, presumably for affiliate commissions or other commercial benefit, and in some instances these websites attempt to install malware on a user's computer. See, e.g., U.S. Auto Parts Network, INC. v. D-Max Ltd., FA 1433959 (Nat. Arb. Forum May 2, 2012) (finding bad faith where domain name was used to profit from links to third-party websites); Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (finding bad faith based upon use of domain name to redirect Internet users to website containing unrelated advertisements).
Given the fame and distinctiveness of Complainant's mark and the manner in which the domain name has been used, the Panel considers it reasonable to infer that Respondent's initial registration of the domain name was intentionally targeted at Complainant or its mark. The Panel also notes that the domain name was registered through a privacy service in order to conceal the identity of the actual registrant, further supporting an inference of bad faith. See, e.g., J. C. Penney Corp. v. John Bonk / Land Merchandising Corp., FA 1554732 (Nat. Arb. Forum May 21, 2014). In addition, it appears that the person or entity identified by Respondent as the actual registrant of the domain name has been found to have registered domain names in bad faith in several previous proceedings under the Policy, indicating a pattern of bad faith. See, e.g., Banco Bradesco S/A v. Carolina Rodrigues/Privacy Ltd., D2015-0678 (WIPO June 10, 2015); Capital One Financial Corp. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1617685 (Nat. Arb. Forum June 9, 2015); Banco Bradesco S/A v. Carolina Rodrigues, D2015-0445 (WIPO May 4, 2015); Doserno Trading Ltd. and Red Diamond Holdings Sàrl v. Carolina Rodrigues, FCS Holdings Corp., D2012-0506 (WIPO May 2, 2012); Staples, Inc. and Staples the Office Superstores, LLC v. FCS Holdings Corp / Carolina Rodrigues, FA 1428752 (Nat. Arb. Forum Apr. 4, 2012).
Under the circumstances, the Panel concludes that the domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpressw.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 9, 2015
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