WordPress Foundation v. clive clint
Claim Number: FA1806001793887
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is clive clint (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpresssupport.online>, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on June 26, 2018; the Forum received payment on July 5, 2018.
On June 28, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpresssupport.online> 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 July 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2018 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@wordpresssupport.online. Also on July 6, 2018, 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 July 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is the creator of the largest self-hosted blogging and internet publishing tool in the world. It uses its WORDPRESS mark to provide and market its products and services. Complainant registered its WORDPRESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,201,424) on January 23, 2007. Respondent’s <wordpresssupport.online> domain name (the “Domain Name”) is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, altering it only by adding the generic term “support” and the “.online” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the Domain Name. Respondent is not permitted or licensed by Complainant to the WORDPRESS mark and is not commonly known by the Domain Name. Respondent does not use the Domain Name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the Domain Name to impersonate Complainant and to offer products that compete directly with Complainant.
Respondent registered and is using the Domain name in bad faith in that it is passing itself off as Complainant, or as an affiliate or authorized agent of Complainant, and offering goods and services for sale that may be Complainant-related products but which are also goods and services of itself or others that complete with Complainant. This disrupts Complainant’s business and in addition is an attempt to attract, for commercial gain, Internet users to the Respondent’s web site by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site. Finally, Respondent had actual knowledge of Complainant’s WORDPRESS mark prior to registering the Domain Name.
B. Respondent
Respondent did not 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 registered its WORDPRESS mark with the USPTO (Reg. No. 3,201,424) on January 23, 2007. See Complaint Exhibit E. Registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s Domain Name is confusingly similar to Complainant’s WORDPRESS mark as it incorporates that mark in its entirety, altering it only by adding the generic or descriptive term “support” and the gTLD “online.” The addition of a generic or descriptive term and a gTLD to a complainant’s mark does not distinguish a domain name from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy), Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the WORDPRESS mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Name, (ii) it is not commonly known by the Domain Name, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services. These allegations are discussed below.
The WHOIS information submitted as Complaint Exhibit B identifies “clive clint” as the registrant of the Domain Name. This name bears no resemblance to the Domain Name. UDRP panels have consistently held that WHOIS information showing a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its WORDPRESS mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Additionally, the Domain Name resolves to a web site whose pages offer the goods and services of an entity named “Wordpress Support Online.” According to the web site, this entity offers “Online Wordpress Support,” using the phrase “Get WordPress help right away.” The specific services include “Manage Updates, Plugins & Themes,” “Website Backup,” “Security Check,” “Analytics,” “Website Clone,” “Email Support,” “Client Reports” and the like. See, Complaint Exhibit F-1. The “About Us” page (Complaint Exhibit F-3) contains statements such as “WordPress Support LLC, the leading website design & development company of USA and UK is offering internet marketing & development services to small & medium enterprises from last eight years [sic].” While it makes ample use of Complainant’s WORDPRESS mark throughout, Respondent’s web site does not feature Complainant’s registered logo. The imagery and general layout of the two sites are fairly distinct from each other, and from the screenshots furnished as Complaint exhibits it appears to the Panel as unlikely that an Internet user would likely believe that Respondent’s web site is that of Complainant. Although Complainant asserts that the web site impersonates Complainant, the evidence does not support that claim. The issue arises, then, whether the Domain Name simply describes the nature of Respondent’s business, i.e., supporting Complainant’s software, and is not an attempt to confuse Internet users into believing that the resolving web site is owned or somehow affiliated with or endorsed by Complainant.
Anticipating a possible nominative fair use defense, Complainant cited the seminal Oki Data case (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) and discussed the test for determining rights and legitimate interests articulated by the panel in that case, which is as follows: In order for a respondent to demonstrate that it is using a confusingly similar domain name in connection with a bona fide offering of goods or services and thus have a legitimate interest in the domain name, it must establish the following four elements:
(1) the respondent must actually be offering the goods or services at issue,
(2) the respondent must use the web site to sell only the trademarked goods,
(3) the web site 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 the ability to reflect its own mark in a domain name.
The Oki Data case involved a reseller of the complainant’s goods. While the instant case does not in the strictest sense involve a reselling of Complainant’s goods, the Domain Name does imply something very close, being support for Complainant’s goods or services. Those services consist of furnishing web software its customers can use to create their own web sites or blogs. See, Complaint Exhibit D-2. While the purported name of Respondent’s business, Wordpress Support LLC, implies, and the rhetoric on the web site claims that it supports Wordpress software, there is no evidence before the Panel that Respondent actually does so. The evidence does establish, however, that Respondent is offering services other than support for Complainant’s software. The website backup, security check, analytics, and client report services advertised by Respondent on its web site are clearly not in support of Complainant’s software but are materially different from and in addition to any support it might offer in that regard. Finally, nowhere does Respondent’s web site describe its relationship with Complainant as the owner of the mark at issue here. On this evidence the Panel finds that there is no basis for a finding of legitimate rights or interests in the Domain Name based upon some kind of nominative fair use theory. On the contrary, the evidence is clear that by incorporating Complainant’s well-known mark into the Domain Name, Respondent is attempting to attract Internet users to its web site for its own economic advantage by creating confusion as to the source, sponsorship, affiliation or endorsement of its web site by Complainant. Using a confusingly similar domain name in order to attract traffic to one’s web site for one’s own business purposes does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web site within the meaning to Policy ¶ 4(b)(iv). Panels have consistently held this to be evidence of bad faith under Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent’s conduct has created confusion and other customer relations problems for Complainant, as evidenced by the letter to Complainant from a customer who apparently contracted with Respondent for Wordpress support services thinking he was dealing with an agent or affiliate of Complainant. The letter complains about the poor quality and cost of the service and appears to hold Complainant responsible. See, Complaint Exhibit H. It appears from the evidence that Respondent registered the Domain Name primarily to attract traffic to its web site rather than to disrupt the business of Complainant as a competitor as contemplated by Policy ¶ 4(b)(iii), but Respondent’s conduct nevertheless disrupts Complainant’s business and given the non-exclusive nature of Policy ¶ 4(b), the Panel finds that this disruption, which is eminently foreseeable on account of the close similarity between the Domain Name and Complainant’s mark, is evidence of bad faith registration and use of the Domain Name for the purposes of Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark is sufficient. Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). WORDPRESS is not a common or dictionary term; it is whimsical and arbitrary and is not a name that would normally occur to a person seeking a name or a domain name for a technical support business it is organizing. Given the world-wide notoriety of Complainant and its mark, the length of time it has been in business, and the fact that Respondent's website displays the WORDPRESS mark alongside products that are similar or identical to some of Complainant’s products, it is obvious that Respondent had actual knowledge of Complainant and its WORDPRESS mark when it registered the Domain Name on July 18, 2017. (See, Complaint Exhibit B for date of registration.) The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <wordpresssupport.online> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 2, 2018
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