WPEngine, Inc. v. md monir uddin
Claim Number: FA2009001911283
Complainant is WPEngine, Inc. (“Complainant”), represented by Brian A. Hall of Traverse Legal, PLC, Texas, USA. Respondent is md monir uddin (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wp-engine.net>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2020; the Forum received payment on September 3, 2020.
On September 3, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <wp-engine.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2020 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@wp-engine.net. Also on September 4, 2020, 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 September 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, WPEngine, Inc. provides website hosting and related services under the WP ENGINE mark.
Complainant has rights in the WP ENGINE mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <wp-engine.net> domain name is confusingly similar to Complainant’s mark because it incorporates the entire WP ENGINE mark and merely adds a hyphen and the “.net” generic top level domain (“gTLD”) to form the at-issue domain name.
Respondent does not have rights or legitimate interests in the <wp-engine.net> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized Respondent to use the WP ENGINE mark. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the at-issue domain name to provide affiliate marketing and offer WordPress plugins and themes for sale. Respondent’s use of the domain name also confuses consumers as to the affiliation of the domain with Complainant.
Respondent registered and uses the <wp-engine.net> domain name in bad faith. Respondent offered to sell the at-issue domain name to Complainant and listed it for sale in the marketplace. Additionally, Respondent uses the at-issue domain name to offer competing goods including WordPress plugins and themes and attempts to confuse consumers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the WP ENGINE mark.
Respondent has not been authorized to use any of Complainant’s trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in WP ENGINE.
Respondent offers the at-issue domain name for sale.
Respondent uses the confusingly similar at-issue domain name to offer goods competing with offerings by Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its WP ENGINE mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The at-issue domain name contains Complainant’s WP ENGINE trademark with its space replaced by a hyphen, all followed with the top level domain name “.net.” The differences between the <wp-engine.net> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <wp-engine.net> is confusingly similar to Complainant’s WP ENGINE trademark. See 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); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <wp-engine.net> shows that “md monir uddin” is the domain name’s registrant. Additionally, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <wp-engine.net> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s confusingly similar <wp-engine.net> domain name addresses a website providing affiliate marketing offering products for sale that compete with Complainant’s offering. Respondent’s use of the <wp-engine.net> for such purpose is not indicative of any bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See 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).”); see also Compaq Info. Techs. Group v Jones, FA 99091 (Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor); see additionally Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <wp-engine.net> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent asked Complainant if it wanted to purchase the domain name and provided a link to a third party listing service offering the <wp-engine.net> domain name for $10,000. The listing was made only eight days after the domain name’s registration. Respondent’s offer to sell the domain name to Respondent indicates Respondent’s bad faith pursuant to Policy ¶ 4(b)(i). See Towmaster, Inc. v. Hale, FA 973506 (Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Furthermore and as mentioned above regarding rights and legitimate interests, Respondent uses or has used its confusingly similar <wp-engine.net> domain name to offer goods for sale that directly compete with goods offered by Complainant. To wit, Respondent offers WordPress plugins and themes for sale on its <wp-engine.net> website. Respondent’s use of its <wp-engine.net> domain name in this manner confuses consumers as to the source of the offerings made thereon and is indicative of bad faith under Policy ¶ 4(b)(iv). See 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 website that offered similar services to offerings made under complainant’s mark). Additionally, Respondent’s use of its confusingly similar domain name to imply an affiliation with Complainant in order to attract consumers for commercial gain also constitutes bad faith per Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the false impression that the complainant endorsed and sponsored the respondent’s website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wp-engine.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 30, 2020
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