WordPress Foundation v. Kulwinder Kaur
Claim Number: FA1603001664561
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Kulwinder Kaur (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpressmaintenanceservices.com>, 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 March 8, 2016; the Forum received payment on March 16, 2016.
On March 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpressmaintenanceservices.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 March 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 6, 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@wordpressmaintenanceservices.com. Also on March 17, 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 April 8, 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 has a trademark registration for the WORDPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,201,424, registered Jan. 3, 2007). The mark is used in connection with Complainant’s business of providing blogging and internet publishing services. The <wordpressmaintenanceservices.com> domain name is confusingly similar to the WordPress trademark because the domain name contains the entire mark with the addition of the generic term “maintenance services,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. Respondent is not commonly known as 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. Respondent is using the disputed domain name to offer products and services related to Complainant’s business in a manner that fails to satisfy the test laid out in Oki Data (WIPO Case No. D2001-0903) for bona fide offering of goods and services of a reseller.
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 knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, WordPress Foundation, has rights in the WORDPRESS mark through registration with the USPTO (Reg. No. 3,201,424, registered Jan. 3, 2007). The mark is used in connection with Complainant’s business of providing blogging and internet publishing services. The <wordpressmaintenanceservices.com> domain name is confusingly similar to the WORDPRESS trademark.
Respondent, Kulwinder Kaur, registered the disputed domain name on July 4, 2015. Respondent has no rights or legitimate interests in the domain name. Respondent uses the <wordpressmaintenanceservices.com> domain name for commercial purposes to compete with Complainant by redirecting Internet traffic seeking Complainant’s website. Respondent is not affiliated with, nor authorized by Complainant to use the <wordpressmaintenanceservices.com> domain. Respondent’s website gives the false impression that it is so affiliated and authorized, with multiple uses of the WORDPRESS marks, and the W logo.
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 (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 under Policy ¶ 4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <wordpressmaintenanceservices.com> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i). The domain name contains the entire mark and makes only minor alterations, such as adding the generic term “maintenance services,” and the gTLD “.com.”
Respondent is not commonly known by the <wordpressmaintenanceservices.com> domain name. Complainant has not authorized or licensed Respondent’s use the WORDPRESS mark. The WHOIS information lists “Kulwinder Kaur” as the registrant of the disputed domain name. Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (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 fails to use the <wordpressmaintenanceservices.com> domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <wordpressmaintenanceservices.com> domain name for commercial purposes to compete with Complainant by redirecting Internet traffic seeking Complainant’s website.
Complainant argues that Respondent has failed to satisfy the first, second, and third prongs of the Oki Data test for establishing reseller rights and legitimate interests in a disputed domain name. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO June 11, 2001). Complainant argues that Respondent; 1) is not actually offering the goods/services of Complainant, 2) is not using the website to sell only the trademarked goods of Complainant, and 3) has not disclosed the relationship between Respondent and Complainant.
Under the Oki Data test, the conduct of a respondent must comply with all of the following requirements:
(1) the respondent must actually be offering the goods of the complainant;
(2) the respondent must use the website to sell only the trademarked goods of the complainant;
(3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and
(4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Under the test, a respondent’s failure to satisfy any one of the four requirements precludes a finding of rights and legitimate interests.
Respondent’s website appears to be impersonating an official “Maintenance Services” site of Complainant. Respondent claims to offer services related to website design using, in certain cases, some components of the WordPress software, without Complainant’s permission and so it is promoting its own services and not primarily offering products or services of Complainant. This may be confusing to users searching for genuine WordPress content, and is a violation of the first prong in Oki Data.
As to the second Oki Data prong, rather than promoting only Complainant’s services, the <wordpressmaintenanceservices.com> site features other services such as security monitoring, data backup, Skype® support, content updates, and others. These services are beyond those offered by Complainant but the website gives the impression that Complainant has licensed, approved of, or is otherwise affiliated with these services when the same is not true. Presumably, Respondent earns revenue from customers who engage these services. Such promotion of one’s own services, beyond those offered under a Complainant’s brand, is outside the boundaries of the second Oki Data prong. See WordPress Foundation v. Purab Kharat, FA 1627109 (Forum Aug. 18, 2015) (no rights or legitimate interest in the domain <wordpressapi.com> where “Respondent’s website offers services related to website design services using, in some cases, components of the WordPress software, without Complainant’s permission.”)
Finally, as to the third Oki Data prong, there is no disclaimer or notice on the <wordpressmaintenanceservices.com> site that in any way discloses the nature of any relationship – or lack thereof – which may exist between Respondent and Complainant. See WordPress Foundation v. Alexander Mooney, FA 1583527 (Forum Nov. 24, 2014) (Oki Data test is not met where Respondent’s website “fails to provide a sufficient disclaimer.”)
The Panel finds that Respondent has failed to satisfy the first three steps of the Oki Data test, and therefore, lacks rights or legitimate interests under the Policy ¶ 4(a)(ii).
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. Respondent is presumably profiting from this behavior. Under the Policy, bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website 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 website or location or of a product or service on the website or location. See Policy ¶ 4(b)(iv).
Respondent had actual knowledge of Complainant's rights in the WORDPRESS mark. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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 <wordpressmaintenanceservices.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 22, 2016
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