WordPress Foundation v. Josh Mayorga
Claim Number: FA1601001658734
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Josh Mayorga (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpresstrainingguides.com> ('the Domain Name'), registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2016; the Forum received payment on February 8, 2016.
On January 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpresstrainingguides.com> 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 February 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 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@wordpresstrainingguides.com. Also on February 8, 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 March 2, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
On March 14, 2016 the Panelist asked for clarification of the Complainant's rights which was provided on March 16, 2016.
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's submissions can be summarised as follows:
The Complainant has rights to the WORDPRESS trade marks and makes extensive use of them so that they have become famous. Complainant has registered trade marks for the WORDPRESS name and logo, inter alia, in the USA and has used the mark in relation to the largest, self-hosted blogging and internet publishing tool in the world since 2003. It has web sites wordpress.com and wordpress.org which generate significant revenue for Complainant.
The Domain Name is confusingly similar to the Complainant's WORDPRESS marks and users will be confused into believing there is a connection to the Complainant by its use. The Respondent attracts searchers to its web site by using an identical copy of Complainant's mark and merely adding the words 'training guides' thereby making visitors thing they are being linked to one of the Complainant's legitimate sites. Respondent uses the WORDPRESS mark in the Domain Name and on its site where the blogging services offered on that page are similar to or reference those offered by the Complainant. Searchers will be confused and led to believe the site at the domain name originates with the Complainant or is at least affiliated with endorsed or sponsored by Complainant.
Respondent's actions are not a bona fide offering of goods and services. Use of the Domain Name to give the impression of originating from or being authorised by the Complainant cannot provide the Respondent with any rights or legitimate interests. It is not a reseller of the Complainant’s products as it impersonates an official site of the Complainant and claims to offer services related to WORDPRESS training without Complainant's permission and so is offering its own services, not the products or services of the Complainant. The Respondent's site also collects data from users by taking e mail addresses of users for a non-existent newsletter. There is no explanation of the lack of relationship between the Respondent and the Complainant on the Respondent's site only a notice 'WORDPRESS TRAINING GUIDES (c) 2015' which only enhances confusion with the Complainant.
Respondent is not commonly known by the Domain Name or WORDPRESS and does not own any relevant trade mark rights. An inactive site cannot provide rights or legitimate interests. There is no legitimate non-commercial or fair use due to the confusing use mentioned above.
Bad faith can be found where a Respondent, by using a Domain Name, intentionally attempts to attract, for commercial gain, Internet searchers to its web site or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the web site or location or of a product or service on the web site at that location.
Respondent has no consent to use the WORDPRESS marks from the Complainant and the fact that it is offering services related to the Complainant’s products shown actual knowledge of the Complainant and its rights. Even after receipt of a demand letter the Respondent stayed silent and continued to use the offending domain. Respondent’s use imitates the Complainant’s web site and results in commercial gain for others including collection of visitor information. To the extent that the use is inactive this passive holding is also bad faith.
The Domain Name was registered on December 25, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s WORDPRESS registered trade mark and the generic term 'training guides' which does not serve to distinguish the Domain Name from the Complainant’s WORDPRESS mark. See Am. Online, Inc. v Oxford Univ., FA 114654 (Nat. Arb. Forum Aug 21, 2002)('Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent's domain name into separate and distinct marks for the purpose of a Policy 4(a)(i) analysis.) ; see also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.") The Panelist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark WORDPRESS for the reasons given above and as such the Complainant satisfies para 4(a)(i) of the Policy.
The Panelist has had an opportunity to review the Respondent's web site. It was not clear to the panellist upon a quick review of the site that it was not a site authorised by the Complainant. As such the web site must be considered to be misleading and the Respondent passing itself off as connected with or authorised by the Complainant by its use of the Domain Name. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.) Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of the Complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non-commercial fair use. See Alcon. Inc. v ARanked, FA 1306493 (Nat. Arb. Forum, Mar. 18, 2010). As such the panelist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading customers into believing it is associated with the Complainant the panelist believes that the Respondent is attempting to pass itself off as authorised by the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's WORDPRESS mark as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy and also causing disruption to the Complainant under Para 4 (iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (Nat. Arb. Forum Dec. 28 2005)('Respondent is appropriating Complainant’s mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii). Also Asbury Auto, Group, Inc. v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv). See also MathForum.com, LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by the Complainant under its mark). As such there is no need to consider the addition allegations of bad faith through collecting information of users and the panelist finds that the Domain Name has been registered and used in 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 <wordpresstrainingguides.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 23, 2016
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