WordPress Foundation v. Berat Berisha
Claim Number: FA1601001657211
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Berat Berisha (“Respondent”), Albania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plugins-wordpress.org>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2016; the Forum received payment on January 27, 2016.
On January 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <plugins-wordpress.org> 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 January 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@plugins-wordpress.org. Also on January 27, 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 February 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WORDPRESS mark (Reg. No. 3,201,424, registered Jan. 23, 2007). The mark is used in connection with Complainant’s business of providing blogging and internet publishing services. The <plugins-wordpress.org> domain name is confusingly similar to the WORDPRESS trademark because the domain name contains the entire mark and makes only minor alterations, such as adding the generic term “plugins,” a hyphen, and the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use. While the domain name at one point resolved to a webpage that tried to imitate a webpage of Complainant, the domain name now resolves to Complainant’s own webpage.
Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion. Further, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, WordPress Foundation, owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WORDPRESS mark (Reg. No. 3,201,424, registered Jan. 23, 2007). The mark is used in connection with Complainant’s business of providing blogging and internet publishing services. The <plugins-wordpress.org> domain name is confusingly similar to the WORDPRESS trademark.
Respondent, Berat Berisha, registered the <plugins-wordpress.org> domain name on December 12, 2015. While the domain name at one point resolved to a webpage that tried to imitate a webpage of Complainant, the domain name now resolves to Complainant’s own webpage. Respondent has no rights or legitimate interests in respect of the domain name.
Respondent is attempting to commercially profit from a likelihood of confusion. The domain name has been registered and is being 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(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 owns rights in the WORDPRESS mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <plugins-wordpress.org> domain name is confusingly similar to the WORDPRESS trademark under Policy ¶ 4(a)(i). The domain name contains the entire mark and makes only minor alterations, such as adding the generic term “plugins,” a hyphen, and the gTLD “.org.”
Respondent is not commonly known by the <plugins-wordpress.org> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the WORDPRESS mark in domain names. The WHOIS information lists “Berat Berisha” as the registrant of record for the disputed domain name. 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).
Respondent’s use of the <plugins-wordpress.org> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. At one point, the domain name resolved to a webpage that mimicked Complainant’s own website. After sending numerous demand letters, Complainant claims that Respondent acted by changing the resolving webpage to Complainant’s own webpage. A resolving webpage that tries to imitate a webpage of a complainant fails to provide rights or legitimate interests. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Where the domain name resolves to the complainant’s own website, panels have declined to establish such use as a bona fide offering or a legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
Respondent has engaged in bad faith registration and use of the <plugins-wordpress.org> domain name. First, Respondent has displayed bad faith under Policy ¶ 4(b)(iv). Internet users who view the resolving webpage are likely to believe that it is sponsored by or affiliated with Complainant and its business. Further, Respondent is presumably profiting from this behavior. In similar cases where the domain name in dispute resolves to the complainant’s own webpage, prior panels have found bad faith. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Second, Respondent had actual knowledge of Complainant's rights in the WORDPRESS mark. The content which Respondent displayed at the resolving webpage shows that Respondent had actual knowledge of Complainant's mark and rights. Therefore, Respondent registered the <plugins-wordpress.org> domain name in bad faith under 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plugins-wordpress.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 1, 2016
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