WordPress Foundation v. Marcel Heiniger / HM Consulting
Claim Number: FA1511001646632
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Marcel Heiniger / HM Consulting (“Respondent”), Maldives.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <earnwithwordpress.com>, <superwordpresstrainer.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org>, registered with GoDaddy.com, LLC; and <creer-son-site-wordpress.com> registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 November 11, 2015; the Forum received payment on November 18, 2015.
On November 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the<earnwithwordpress.com>, <superwordpresstrainer.com>, <easywordpressmastery.com>, <oneclickwordpress.org> and <howtoinstallwordpressplugin.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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”).
Also on November 12, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <creer-son-site-wordpress.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 November 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@earnwithwordpress.com, postmaster@superwordpresstrainer.com, postmaster@creer-son-site-wordpress.com, postmaster@easywordpressmastery.com, postmaster@howtoinstallwordpressplugin.com, postmaster@oneclickwordpress.org. Also on November 20, 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 December 17, 2015, 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 names be transferred from Respondent to Complainant.
A. Complainant:
1. Complainant has rights in the WORDPRESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424, registered January 23, 2007). Respondent’s disputed domain names are confusingly similar to the WORDPRESS mark because the disputed domains merely add generic terms and the generic top-level domain names (“gTLD”) “.com” or “.org.” These differences are not sufficient to differentiate the domain from the WORDPRESS mark which is the prominent feature of the domains.
2. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor is there any other evidence in the record to the contrary. Further, Respondent’s use of the disputed domain names earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, and <oneclickwordpress.org>, to resolve to websites promoting various related and unrelated products and services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s inactive use of the <howtoinstallwordpressplugin.com> is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent has registered and is using the disputed domain names in bad faith. Respondent exploits the confusing similarity between the domain names <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, and <oneclickwordpress.org> and Complainant’s WORDPRESS mark to operate websites featuring commercial advertisements. Internet users are confused and attracted to the disputed domains through the use of Complainant’s WORDPRESS mark and are met with commercial advertisements from which Respondent presumably profits. Respondent’s inactive use of the <howtoinstallwordpressplugin.com> is also in bad faith.
B. Respondent:
1. Respondent has failed to submit a Response in this proceeding.
1. Respondent’s <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org> domain names are confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org> domain names.
3. Respondent registered or used the <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org> domain names 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 contends that it has rights in the WORDPRESS mark through its registration with the USPTO (e.g., Reg. No. 3,201,424, registered January 23, 2007). Prior panels have routinely concluded that registration of a mark with the USPTO is sufficient to establish rights in a mark. 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)). The Panel therefore finds that Complainant has rights in the WORDPRESS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the disputed domains <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org> are confusingly similar to the WORDPRESS mark in which Complainant claims to have rights. The disputed domains all include the WORDPRESS mark as well as various generic terms and the gTLDs “.com” and “.org.” The Panel notes, although it is not argued, that according to google translate the terms “creer” “son,” and “site” appear to be French for “create” “its,” and “site.” Panels have held that the addition of the gTLDs “.org” and “.com” is not relevant for a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The addition of generic terms to a mark has been held not to differentiate a disputed domain from the mark to which the generic terms are added. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Taken together, the disputed domain names do not differ from the WORDPRESS mark to an extent that would prevent a finding of confusing similarity 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 not been commonly known by the disputed domain names. According to WHOIS information associated with the disputed domain names Respondent identified as “Marcel Heiniger” which does not appear to resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. 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). The Panel thus finds that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant claims that Respondent’s use of the disputed domain names <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, and <oneclickwordpress.org>, to resolve to websites promoting various related and unrelated products and services, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domains all appear to resolve to blog website that includes links and advertisements for products and services such as “Verizon Fios,” “Capital One Credit Cards,” and “TTS Sketch Maker.” Panels have held that using a domain confusingly similar to complainants mark to display advertisements unrelated to the mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). The Panel concludes that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant also argues that Respondent’s inactive use of the <howtoinstallwordpressplugin.com> may still be considered not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <howtoinstallwordpressplugin.com> as resolved for Complainant does not appear to be in use. Panels have held that inactively using a disputed domain that includes a complainant’s mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See hermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)). The Panel finds that Respondent’s inactive use does not fall under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith. To support this assertion Complainant claims Respondent exploits the confusing similarity between the domain names earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, and <oneclickwordpress.org> and Complainant’s WORDPRESS mark to operate websites featuring commercial advertisements. Complainant believes that Internet users are confused and attracted to the disputed domains through the use of Complainant’s WORDPRESS mark and that Respondent profits from this confusion. Again, Respondent’s domains resolves to domains that include commercial advertisements for various products and services. Panels have found bad faith where a respondent uses a confusingly similar domain to resolve to a website that hosts commercial links and advertisements. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process). This Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant claims that the inactive use of Respondent’s <howtoinstallwordpressplugin.com> domain demonstrates bad faith. The <howtoinstallwordpressplugin.com> resolves to a blank website. Panels have held that a respondent demonstrated bad faith registration and use under Policy for failing to make an active use of a confusingly similar domain. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). This Panel thus finds that Respondent has demonstrated bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <earnwithwordpress.com>, <superwordpresstrainer.com>, <creer-son-site-wordpress.com>, <easywordpressmastery.com>, <howtoinstallwordpressplugin.com>, and <oneclickwordpress.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 30, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page