WooCommerce, Inc. v. vikram singh
Claim Number: FA2110001970930
Complainant is WooCommerce, Inc. (“Complainant”), represented by James R. Davis, II of Perkins Coie LLP, District of Columbia, USA. Respondent is vikram singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wooexperts.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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2021. The Forum received payment on October 28, 2021.
On October 28, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wooexperts.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 November 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2021 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@wooexperts.com. Also on November 2, 2021, 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.
A timely Response was received and determined to be complete on November 4, 2021.
At the joint request of the parties, an order was made on November 4, 2021 to stay the administrative proceeding until December 19, 2021. On December 17, 2021, at the Request of Complainant, an order was made to lift the stay.
Also on December 17, 2021 the Forum received an Additional Submission from Complainant and on December 17 and 19, 2021 the Forum received Additional Submissions from Respondent.
On December 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, WooCommerce, Inc., provides a customizable, open-source eCommerce platform, built on WordPress, to empower small- and medium-sized businesses to build eCommerce websites and make sales online. Complainant operates the WooExperts program, where developers are trained to provide assistance and advice to customers.
Since at least as early as 2008 Complainant and its predecessor have used a family of Woo-based marks, including the WOOEXPERTS and WOOEXPERT marks (collectively “the WOO Marks”), to provide software and website developer services.
Complainant has rights in the WOO marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <wooexperts.com> domain name is identical to Complainant’s WOO marks.
Respondent’s use of the coined and inherently distinctive WOOEXPERTS mark in the domain name is likely to create consumer confusion as to the source of the services promoted at Respondent’s website.
Respondent lacks rights or legitimate interests in the <wooexperts.com> domain name. Respondent is not commonly known by the domain name and Complainant has not authorized Respondent to use the WOO marks. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to confuse consumers by featuring the WOO marks and logos on the domain name’s resolving website.
Respondent registered the <wooexperts.com> domain name in bad faith with actual knowledge of Complainant’s rights in the WOO marks since WOOEXPERT is a coined term. Respondent uses the domain name in bad faith to confuse consumers by suggesting an affiliation with Complainant by featuring Complainant’s WOO marks on the resolving website and offering competing software services for sale. Respondent’s registration and use of the domain name constitutes opportunistic bad faith.
B. Respondent
Respondent, Vikram Singh, has been a WordPress and WooCommerce developer since 2010. Respondent uses the <wooexperts.com> domain name in connection with Respondent’s business offering themes and plugin software development services for Complainant’s open-source software. Respondent’s registration of the domain name predates Complainant’s registration of the WOO marks.
C. Additional Submissions
Complainant
Respondent admits that he is “an individual Wordpress/woocommerce developer” and that he registered and is using the <wooexperts.com> domain name for commercial purposes.
Respondent has therefore acknowledged Complainant’s prior trademark rights, admitted that he had knowledge of Complainant’s prior rights when he registered the domain name, and that is why he registered the domain name. In addition, he admits that he registered the domain name for commercial purposes to profit off the WooCommerce platform, name and WOO-formative trademarks. That is the definition of cybersquatting.
Respondent is not legally entitled and does not need to use a domain name that infringes Complainant’s family of distinctive WOO trademarks to operate a website. As set forth in the complaint and exhibits, Respondent is using the <wooexperts.com> domain name with a website that makes prominent, misleading and deceptive use of Complainant’s name, trademarks and logos to falsely suggest that Respondent is Complainant or is affiliated with Complainant.
For the sake of clarity, while Respondent may develop software using open-source code, he is not certified as a “WooExpert” and Complainant has not licensed him to use WOOEXPERT or any WOO-formative marks and does not endorse and is not affiliated in any way with Respondent (as is falsely suggested by his infringing domain name and website).
There is a long line of UDRP cases holding that registration and use of domain names in situations like this violate the UDRP, e.g., Wikimedia Foundation, Inc. v. Salamuddin Shaikh, D2020-1456, (Sept. 24, 2020) (“WikipediaExperts.com” carries the risk of implied affiliation); Qualcomm Incorporated v. Stanislav Grigorev / Private Person, FA2003001888381 (Forum Apr. 14, 2020) (“The fact that the Respondent has used the Complainant’s QUALCOMM and SNAPDRAGON word and logo marks and refers to the Complainant’s products on the site attached to the Domain Name shows that the Respondent has actual knowledge of the Complainant, its rights and business.”); The Linux Foundation v. Daniel Elmore, FA1707001742130, (Forum Aug. 30, 2017) (“Using a domain name containing the trademark of another to attract Internet traffic to one’s own web site offering similar or competing services has never been held to constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a domain name.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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).”).
Complainant therefore respectfully submits that in his response Respondent has conceded that he violated the UDRP when he registered and used the <wooexperts.com> domain name to operate an infringing and commercial website.
Respondent
WooCommerce is an open-source e-commerce plugin for WordPress. Respondent is a WordPress freelancer working on the WordPress and WooCommerce platforms since 2010, providing IT-related services.
The WooCommerce plugin was launched in 2011 and Respondent started working with and providing services in it. When Respondent registered the <wooexperts.com> domain name in 2014, Complainant had no WOO trademark and “Woo” was not linked with Complainant or its brand. Respondent did all research before registering the domain name. Complainant registered the trademark in 2016-17.
WooCommerce is open-source plugin and any individual who works with WooCommerce or WordPress can call himself or herself an expert. Respondent started using the term wooexperts to represent himself as a WooCommerce expert developer, and registered the name Wooexperts under "Ministry of micro small and medium enterprises India" and obtained the registration number RJ17D0136445.
Respondent respects the WordPress and WooCommerce business and has no intention to harm them, their business or their brand but every individual on this planet has the right to earn and the right to use his or her mind, so Respondent is developing his own plugins and selling them. Recently he noticed they copied Respondent’s plugin called “Wc Cancel Order Pro” and started selling it on woocommerce.com. When Respondent raised the issue, they said it’s open source and they have the right to sell.
Complainant has failed to establish all the elements entitling it to relief.
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.
Complainant has shown that it has rights in a family of WOO marks based on registration of the marks with the USPTO, including the WOO word mark, Reg. No. 5561425, registered Sept. 11, 2018 claiming first use in commerce in 2008; the WOOCOMMERCE word mark, Reg. No. 5561428, registered Sept. 11, 2018 claiming first use in commerce in 2011; the SILVER WOOEXPERT WOO WWW.WOOTHEMES.COM word and design mark, Reg. No. 5167442, registered March 21, 2017 claiming first use in commerce in 2015; and the GOLD WOOEXPERT WOO WWW.WOOTHEMES.COM word and design mark, Reg. No. 5167444, registered March 21, 2017 claiming first use in commerce in 2015.
The Panel finds Respondent’s <wooexperts.com> domain name to be confusingly similar to Complainant’s WOO word mark since the domain name merely adds to that mark the descriptive word “experts”, which is insufficient to distinguish the domain name from the mark, and the inconsequential gTLD “.com”, which may be ignored.
Complainant has established this element. It is unnecessary to decide whether the domain name is identical or confusingly similar to any of the other marks in Complainant’s family of WOO marks. The Panel notes that Complainant has provided no evidence to support its claim that it has rights in the marks WOOEXPERTS and WOOEXPERT standing alone.
Given the Panel’s finding in relation to the third element, it is unnecessary to address this element.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The <wooexperts.com> domain name was registered on December 2, 2014, several years before the registration of Complainant’s marks. Although those registration applications claimed first use in commerce before Respondent registered the domain name, as was held in Franki Global Inc. v. Privacy service provided by Withheld for Privacy ehf / Golden Dream, The Stay Gold Co / Samantha Jurashka, WIPO Case No. D2021-2901 (December 13, 2021):
“… the date of first use in commerce claimed on a trademark application is of limited evidentiary value in administrative proceedings brought under the Policy. For the purposes of the present proceeding, this date amounts to a mere assertion which would still require to be suitably evidenced. Absent additional supporting evidence, which is lacking on the present record, the Panel is not prepared to find that the Complainant had unregistered trademark rights in a relevant trademark at the material time.”
Complainant has exhibited examples of its use of the WOO marks (Complaint Exhibit C) but the only one bearing a date is dated 2021. Hence there is no evidence before the Panel that Complainant or its predecessor had acquired unregistered trademark rights prior to Respondent’s registration of the domain name.
Respondent has not provided evidence that he registered the name Wooexperts under "Ministry of micro small and medium enterprises India".
As to the UDRP cases cited by Complainant holding that registration and use of domain names in situations like this violate the UDRP, namely Wikimedia Foundation, Inc. v. Salamuddin Shaikh, D2020-1456, (Sept. 24, 2020), Qualcomm Incorporated v. Stanislav Grigorev / Private Person, FA2003001888381 (Forum Apr. 14, 2020) and The Linux Foundation v. Daniel Elmore, FA1707001742130, (Forum Aug. 30, 2017), in each of those cases the domain name was registered after the complainant registered its trademark.
Respondent explains that he was aware of the WooCommerce open-source software since 2011 before he registered the domain name in 2014 and that he did so in order to attract customers to his business offering themes and plugin software development services for that open-source software. In the context of that open-source software, the meaning of the <wooexperts.com> domain name is consistent with this explanation.
Complainant asserts that Respondent registered the <wooexperts.com> domain name in bad faith with actual knowledge of Complainant’s rights in the WOO marks since WOOEXPERT is a coined term. Complainant says it operates the WooExperts program, where developers are trained to provide assistance and advice to customers. There is no evidence establishing when that program was introduced. The 2015 claimed first use date of Complainant’s SILVER WOOEXPERT WOO WWW.WOOTHEMES.COM and GOLD WOOEXPERT WOO WWW.WOOTHEMES.COM word and design marks suggests that this program was likely introduced after Respondent registered the domain name in 2014.
Accordingly, the Panel is not satisfied that Complainant has established that the domain name was registered in bad faith.
Even if, as claimed by Complainant, “Respondent is currently using the domain name to resolve to a website that makes prominent, misleading and deceptive use of Complainant’s name, trademarks and logos to falsely suggest that Respondent is Complainant, or is affiliated with Complainant”, as to which the Panel makes no finding, such current use in bad faith does not outweigh the evidence that the domain name was not registered in bad faith.
Complainant has failed to establish this element.
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wooexperts.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: December 27, 2021
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