DECISION

 

WordPress Foundation v. Karl Delgadillo / Creative Web Design 123

Claim Number: FA1603001667562

PARTIES

Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Karl Delgadillo / Creative Web Design 123 (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wordpress-toronto.com> and <wordpress-support.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Ho Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 28, 2016; the Forum received payment on April 1, 2016.

 

On March 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wordpress-toronto.com> and <wordpress-support.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 April 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@wordpress-toronto.com, and postmaster@wordpress-support.com.  Also on April 1, 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 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) 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). Respondent’s <wordpress-toronto.com> and <wordpress-support.com> domain names are confusingly similar to the WORDPRESS mark because the dominant portion of each domain is the mark, with only the generic term “support” or the geographic term “toronto,” hyphens, and the generic top-level domain (“gTLD”) “.com” appended.

 

ii) Respondent is not commonly known by the <wordpress-toronto.com> and <wordpress-support.com> domain names because Respondent is not affiliated with Complainant and because the available WHOIS information identifies Respondent as “Karl Delgadillo / Creative Web Design 123.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name is used to pass off as being affiliated with Complainant while offering services both related and unrelated to complainant for commercial gain.

 

iii) Respondent uses the <wordpress-toronto.com> and <wordpress-support.com> domain names in bad faith because it has offered to sell them to Complainant in excess of its registration costs and because the resolving websites are used to profit commercially through the creation of confusion. Respondent registered the <wordpress-toronto.com> and <wordpress-support.com> domain names in bad faith because it did so with actual knowledge of Complainant’s rights in the WORDPRESS mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

The Panel notes that the <wordpress-toronto.com> domain name was created on January 2, 2012 and the <wordpress-support.com> domain name was created on April 10, 2012.

 

FINDINGS

 

Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainants protected mark.

 

Respondent has no rights to or legitimate interests in the disputed domain names.

  

Respondent registered and used the disputed domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the WORDPRESS mark through its registration with the USPTO (Reg. No. 3,201,424, registered on January 23, 2007). Complainant has provided evidence for this registration, as well as documentation of rights by assignment to and from “Automatic Inc.” Further, Complainant has provided registration documentation for the mark in Canada, where Respondent is located. Accordingly, the Panel finds that Complainant has rights in the WORDPRESS mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Remithome Corp v. Pupalla, FA 1124302 (Nat. Arb. Forum Feb. 21, 2008) (finding the complainant held the trademark rights to the federally registered mark REMITHOME, by virtue of an assignment).

 

Complainant alleges that Respondent’s <wordpress-toronto.com> and <wordpress-support.com> domain names are confusingly similar to the WORDPRESS mark because the dominant portion of each domain is the mark, appended by only the terms “toronto” or “support,” and the gTLD “.com.” The Panel notes that each domain also contains a hyphen. Complainant maintains that generic terms and gTLDs cannot differentiate domain names and trademarks under Policy ¶ 4(a)(i). As the Panel agrees, it finds that the <wordpress-toronto.com> and <wordpress-support.com> domain names are confusingly similar to the WORDPRESS mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Doosan Corporation v. philippe champain, FA 1636675 (Nat. Arb. Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent is not commonly known by the <wordpress-toronto.com> and <wordpress-support.com> domain names because Respondent is not affiliated with Complainant and because the available WHOIS information identifies Respondent as “Karl Delgadillo / Creative Web Design 123.” As the Panel finds this argument sufficient, it finds that Respondent is not known by the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant contends that Respondent fails to use the <wordpress-toronto.com> and <wordpress-support.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each domain name is used to pass off as being affiliated with Complainant while offering services both related and unrelated to Complainant for commercial gain. Complainant urges that the <wordpress-toronto.com> domain name is used to create the impression that it is a dedicated page of Complainant’s for Internet users in Toronto, Canada, while the <wordpress-support.com> domain name creates the impression of being an official service website of Complainant’s. Complainant has provided screenshots of the resolving websites to demonstrate this use. Complainant urges that these screenshots show that the websites display false statements meant to associate Respondent with Complainant, such as “© Copyright 2015 Toronto WordPress Web Design. Creative Web Design 123. WordPress Support Toronto / Sponsoring,” and that each website references the WORDPRESS mark. Complainant has also provided screenshots of its own websites to illustrate that the disputed domain names appear to mimic Complainant’s color scheme. Further, Complainant maintains that Respondent is likely profiting through the operation of these websites through the offer of services both related to using WORDPRESS run websites, as well as other, non-related Internet development services through Respondent’s own website, which is purportedly linked to from the disputed domain names. As the Panel finds this evidence sufficient to show that Respondent is passing itself off as Complainant, competing with Complainant, or otherwise appropriating Complainant’s mark to profit through unrelated services, the Panel finds that Respondent fails to use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Registration and Use in Bad Faith

 

Complainant posits that Respondent uses the <wordpress-toronto.com> and <wordpress-support.com> domain names in bad faith because it has offered to sell them to Complainant in excess of its registration costs. Complainant has provided e-mail correspondence between Complainant and Respondent beginning with a Demand Letter from Complainant requesting transfer of ownership of the disputed domain names. In this Exhibit, the final response from Respondent contains an offer to sell the domain names to Complainant for $10,000.00. Complainant maintains that this is proof of bad faith as an offer for sale in excess of registration costs under Policy ¶ 4(b)(i). As the Panel agrees, it finds that Respondent uses the domain names in bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).

 

Complainant claims that Respondent uses the <wordpress-toronto.com> and <wordpress-support.com> domain names in bad faith because the resolving websites are used to profit commercially through the creation of confusion. Complainant alleges that when Internet users contact Respondent through the resolving websites, Respondent then offers them commercial services both related and unrelated to Complainant, and Complainant implies that Respondent intentionally designed the websites and chose the domain names in order to create confusion for consumers. Complainant has provided screenshots of the resolving websites to demonstrate this use. As the Panel finds this evidence sufficient to show that Respondent has intentionally sought to profit from confusion of Internet users, the Panel finds it uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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 website that offered similar services offered by the complainant under its mark).

 

Complainant maintains that Respondent registered the <wordpress-toronto.com> and <wordpress-support.com> domain names in bad faith because it did so with actual knowledge of Complainant’s rights in the WORDPRESS mark. Complainant urges that Respondent’s actual knowledge is inferable through Complainant’s extensive global use of the WORDPRESS mark as well as through Respondent’s specific use of the domain names, described above. As the Panel infers this sufficient due to the manner of use of the disputed domain names by Respondent to show Respondent was actually, and not merely constructively, aware of Complainant’s rights in the WORDPRESS mark at the time of registration, it finds that Respondent did so in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the<wordpress-toronto.com> and <wordpress-support.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Ho Hyun Nahm, Esq., Panelist

Dated:  May 2, 2016

 

 

 

 

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