WordPress Foundation v. Bernat Lubos
Claim Number: FA1504001613444
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Bernat Lubos (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worspress.org>, registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (R76-LROR).
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2015; the Forum received payment on April 14, 2015.
On April 8, 2015, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (R76-LROR) confirmed by e-mail to the Forum that the <worspress.org> domain name is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (R76-LROR) and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (R76-LROR) has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA (R76-LROR) 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 April 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2015 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 email@example.com. Also on April 16, 2015, 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 May 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
1. The Complainant has rights to the WORDPRESS Trademarks and makes extensive use of them such that they have become famous.
Complainant Owns The Marks Complainant is the owner of the distinctive and world-famous WORDPRESS trademark and its corresponding logo (the “Marks”). At least as early as March 28, 2003, and long prior to the creation of the <WordPress.com> domain, Complainant, and its licensee Automattic, Inc., commenced use of the Marks in connection with what has become the largest, self-hosted blogging and internet publishing tool in the world, used on millions of websites and seen by tens of millions of people every day in hundreds of different languages. Since its inception, Complainant has continually used the Marks in commerce and has gained both common-law and registered trademark rights.
The Marks Are Extensively Used, Promoted and Protected. Complainant, on its own and through its licensee, Automattic, Inc., is a leading provider of blogging and internet publishing services and its website <wordpress.com> ranks at No. 25 in visitor traffic on the entire internet according to the metrics used by Quantcast.com. Its <wordpress.org> domain also ranks very high on Quantcast.com. In 2004 and early 2005 Complainant was mentioned in articles on the famous cNet.com technology website as well as the New York Times and the first Wikipedia page discussing Complainant’s services was created. Its reputation at that time was further evident in the number of times the WORDPRESS name was discussed on private blogs and other websites. Even a Google search which limits results to dates between 2003 and 2005 and excludes Complainant’s own websites, shows how extensive was the reputation of the WORDPRESS Mark during Complainant’s early history.
In 2006 WordPress landed the famous news broadcast organization CNN as a client. The WORDPRESS services have also been the subject of national publicity including various news articles, YouTube videos and a book, in the famous “Dummies” series, entitled “WordPress For Dummies.” Complainant has also been the recipient of recognition and awards. In 2007 WordPress won a Packt Open Source CMS Award and in 2009 it won the best Open Source CMS Award. Further, WordPress was featured on the cover of Linux Journal in July of 2008 and in a business section cover story in the San Francisco Chronicle that same month. At that time WordPress was ranked at #31 in the world on the Alexa.com website with 90 million monthly page views. In January of 2009 WordPress appeared in a story in USA Today. By October, 2009, and based on survey evidence, the Open Source CMS Market Share Report reached the conclusion that WordPress enjoys the greatest brand strength of any open source content management system.
Complainant’s <wordpress.com> and <wordpress.org> websites provide information to prospective users and generate significant revenue for Complainant. As a result of Complainant’s long and extensive use and efforts to promote the WORDPRESS Marks, the Marks have gained significant common-law and registered rights and serve to identify and indicate the source of Complainant’s services to the public, and to distinguish its services from those of others. The Marks have become famous and widely recognized by consumers.
Complainant’s WORDPRESS marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns the following:
Mark Goods and Services Reg. No. Reg. Date
WORDPRESS IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201424 (US) January 3, 2007 (Filed: March 1, 2006)
WORDPRESS (Logo) IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328
IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201428 (US) January 23, 2007 (Filed: March 1, 2006)
(1) Downloadable software program and hosted software for use in designing and managing content on a website.
(1) Hosted software solution services, namely providing use of on-line non-downloadable software for use in enabling internet publishing.
Used in CANADA since at least as early as January 2004 TMA698039
(Canada) October 9, 2007 (Filed: August 31, 2006)
WORDPRESS Cl. 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Cl. 35: Advertising; business management services; business administration; office functions.
Cl. 38: Telecommunications.
Cl. 41: Education; providing of training; entertainment; sporting and cultural activities.
Cl. 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services. 005101068
(European CTM) November 19, 2008 (Filed: May 29, 2006)
WORDPRESS Cl. 9 Establishment of an Internet blog site with a downloadable computer software; for the Internet electronic publications downloadable computer software. 5579753 (China) August 14, 2009 (Filed: September 1, 2006)
WORDPRESS Cl. Realtime connection service for data exchange between computer users, Hosting computer sites [websites],Creating and maintaining websites for others, Computer programming, Rental of computer software, Computer system design, Computer software (Maintenance of -),Computer programs (Duplication of -), 5633949 (China) October 21, 2009 (Filed: September 27, 2006)
2. Respondent’s registration of the <WorsPress.org> domain violates the Policy.
(a) The <WorsPress.org> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <WorsPress.org> domain is confusingly similar, on its face, to Complainant’s registered and distinctive WORDPRESS Marks. Many applications for the Marks were filed, and the Marks became globally famous long prior to the creation date of the <WorsPress.org> domain. WordPress Foundation v. Cezary Brzezinski, WIPO Case No. D2013-2171 (“The Panel finds that the notoriety of the Mark has been determined in WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427 (“The trademark WORDPRESS is so-well know globally for blogging software …”) and that it makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name.”)
Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name <WorsPress.org>.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark, possibly against the same Respondent as in the present dispute). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a nearly identical copy of Complainant’s Marks (merely substituting the letter “s” for the letter “d” which are very close on a standard QWERTY computer keyboard), thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <WorsPress.org> website. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <WorsPress.org> web page and the blogging services offered on that page are also similar to or reference those offered by Complainant, searchers will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the domain name <WorsPress.org> Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <WorsPress.org> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <WorsPress.org> domain is mostly blank except for the words “The best WordPress” followed by a reference to “TRAVELING.COM” and then a changing pay-per-click advertisement which links and diverts visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that using a trademark to lead consumers who are searching for a particular business, to a site where services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), Respondent is listed as “Bernat, Lubos” and, upon information and belief, Respondent is not commonly known by the name <WorsPress.org> or “WORDPRESS” nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the WORDPRESS name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <WorsPress.org> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s WORDPRESS services, who used the domain name <WorsPress.org>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were at an advertising-supported page featuring links to other websites offering a variety of other services. Such use cannot be considered fair.
Lastly, Respondent’s use has tarnished and diluted the WORDPRESS Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide services not associated with or related to Complainant’s quality branded services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent Registered The <WorsPress.org> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that 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 intentionally used the Marks without consent from Complainant. As noted, supra, Respondent was on actual notice of Complainant’s rights in the Marks through the extensive, global use and fame of the WORDPRESS Marks which predate the creation date of the <WorsPress.org> domain. In fact, since the term “worspress” is not a phrase in any known language, the domain <WorsPress.org> makes no sense on its own other than as a typo-squat and it could only have been copied from Complainant’s WORDPRESS Marks. If there is any doubt, this is confirmed by Respondent’s mention of the WORDPRESS Marks in the proper spelling on its website. Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s registered and common-law rights in the Marks.
Respondent is obtaining commercial gain from its use of the <WorsPress.org> website. When a visitor to the <WorsPress.org> website clicks on one of the advertisements which appear there, Respondent receives compensation from the various website owners who are forwarded from the <WorsPress.org> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <WorsPress.org> domain. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <WorsPress.org> domain results from pay-per-click advertisements or, in some cases, from the third-party, commercial websites which result when such ad links are followed. This alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <WorsPress.org> domain. There is no other rational explanation for Respondent having registered and maintained the <WorsPress.org> domain and resolving it to an advertising supported site. Respondent’s use of the domain name is commercial because the various companies forwarded from the <WorsPress.org> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <WorsPress.org> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <WorsPress.org> domain in bad faith.
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 uses the WORDPRESS mark in connection with its business as a provider of blogging and internet publishing services. Complainant has rights in the WORDPRESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,201,424 registered January 23, 2007), inter alia. Evidence of a registration with the USPTO (or other governmental authority) is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant need only prove it has some rights, not that Complainant’s rights are superior to Respondent’s rights. Complainant need not prove it has rights in the same country where Respondent resides. This Panel concludes Complainant has rights in the WORDPRESS mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s <worspress.org> domain is confusingly similar to Complainant’s WORDPRESS mark because the disputed domain is nearly identical to Complainant’s mark (the letter D in Complainant’s mark is replaced with the letter S in the disputed domain name). On a standard QWERTY keyboard, the letters “s” and “d” are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶4(a)(i).”). Respondent includes the generic top-level domain (“gTLD”) “.org”. Domain name syntax requires the use of a gTLD or ccTLD. For this reason, gTLDs are not relevant to determining whether or not the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). To hold otherwise would eviscerate the UDRP. The <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <worspress.org> domain name or the WORDPRESS mark. Respondent does not obviously operate a bona fide business under the disputed domain name or the WORDPRESS mark. The WHOIS information lists the registrant for the disputed domain name as “Bernat Lubos.” There is no obvious connection between that name and the disputed domain name. Since there is no response in the record from Respondent, there is no evidence to support a finding Respondent is commonly known by the disputed domain name. A respondent is not commonly known by a disputed domain name where the WHOIS information, as well as other information in the record, gives no indication that the respondent is commonly known by the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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 is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Respondent uses the disputed domain name to resolve to a website hosting a pay-per-click advertisement for Respondent’s benefit. Respondent’s website displays the heading “WordPress” (Complainant’s correct mark) and under that “The best. WordPress.” Under those headings are a pay-per-click advertisement and a reference to “TRAVELING COM.” The pay-per-click advertisement on Respondent’s domain diverts visitors, who are Complainant’s customers or potential customers, to sites not associated with Complainant. Generally speaking, diverting users for the benefit of Respondent is not a bona fide offering of goods or services. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Respondent is not obviously offering any goods or services. It seems obvious Respondent is commercially profiting from its use of the disputed domain name. Therefore, Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is acting in bad faith by attracting and confusing users for commercial profit pursuant to Policy ¶4(b)(iv). Respondent uses the confusingly similar domain name for commercial profit by hosting pay-per-click advertisements (while listing Complainant’s correct mark on the website). It seems obvious in light of the famous nature of Complainant’s mark that Respondent knows about Complainant and its mark. The phrase “worspress” is not a phrase in any known language. Respondent intends to mislead and attract users to Respondent’s website for commercial gain. Using a similar domain name for commercial gain is evidence of bad faith under Policy ¶4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)). Respondent acted in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent must have had actual notice of Complainant’s rights in the WORDPRESS mark when it registered the disputed domain name because of the global use and fame of the WORDPRESS marks. This Panel agrees. It seems apparent Respondent’s primary intention was to disrupt Complainant’s business. This means Respondent registered the <worspress.org> domain name in bad faith according to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶4(a)(iii).")."
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <worspress.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 21, 2015
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