Automattic Inc. v. Zhiming Yang
Claim Number: FA1354630
Complainant is Automattic Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Zhiming Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpresscom.com>, registered with Go China Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2010; the National Arbitration Forum received payment on November 1, 2010.
On October 26, 2010, Go China Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <wordpresscom.com> domain name is registered with Go China Domains, Inc. and that Respondent is the current registrant of the name. Go China Domains, Inc. has verified that Respondent is bound by the Go China Domains, 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 November 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 2010 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@wordpresscom.com. Also on November 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <wordpresscom.com> domain name is confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <wordpresscom.com> domain name.
3. Respondent registered and used the <wordpresscom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Automattic Inc., is the exclusive licensee of the WORDPRESS mark. The WORDPRESS mark is registered with the United States Patent and Trademark Office (“USPTO”). (Reg. No. 3,201,424 issued January 3, 2007). Complainant offers self-hosted blogging and Internet publishing services under the mark.
Respondent, Zhiming Yang, registered the disputed domain name <wordpresscom.com> on January 25, 2009. The disputed <wordpresscom.com> immediately redirects Internet users arriving there to another website, <sutu.com>, an Internet gaming website.
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."
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.”).
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 asserts sufficient rights in the WORDPRESS mark and evidences its assertion by supplying the marks USPTO registration number (Reg. No. 3,201,424 issued January 3, 2007). Many previous panels have held this evidence meets the burden required of a plaintiff pursuing a domain name transfer claim. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding 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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Previous panels have also determined that it is irrelevant whether a complainant holds a trademark registration for a mark in the country where the respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that, based on Complainant’s registration of the mark with the USPTO, Complainant has established rights in its WORDPRESS mark under Policy ¶ 4(a)(i).
Respondent’s full incorporation of its mark, repetition of the generic-top-level domain (“gTLD”) “.com” in the second level domain, and necessary addition of the gTLD “.com,” fail to distinguish Respondent’s domain name from Complainant’s mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). The “com” in the second-level domain, as well as in addition to gTLD also fail to establish distinction. The repeated “com” amounts to an added generic term, which also provides no distinctive value. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s addition of the equivalent of a top-level domain name within the disputed second-level name is … unable to create a distinction capable of overcoming a finding of confusing similarity.”). Previous panels have also held that the repetition is based upon a typographical error and thus also renders the domain name confusingly similar. See Boarder Properties, Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term, in this case BORDERS. Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). The final, and most insignificant, addition is the addition of the gTLD “.com.” Previous panels have held that this addition is irrelevant to the confusingly similar analysis because the gTLD is required for a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). For the above reasons, the Panel finds that Respondent’s <wordpresscom.com> is confusingly similar to Complainant’s WORDPRESS mark.
The Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <wordpresscom.com> domain name. The burden shifts to Respondent to prove that the respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <wordpresscom.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel notes that there is a lack of evidence indicating that Respondent is commonly known by the disputed domain name. The WHOIS information does not indicate that Respondent is known by the disputed domain names nor has Respondent provided information otherwise. This evidences the fact that the registrant is not commonly known by the domain name. 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); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds this to be an indication that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the disputed domain name to redirect Internet users to a website at <sutu.com>. The <sutu.com> domain name offers Internet gaming, unrelated to Complainant’s offerings in the Internet publishing industry. This use of the disputed domain name indicates neither 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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. 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)); see also 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).”).
For the reasons above, the Panel finds Policy ¶ 4(a)(ii) is met.
Complainant alleges, and the Panel infers, that Respondent profits from its redirection of Internet users to <sutu.com>. Respondent is attempting to profit by using a confusingly similar domain name to attract Internet users bound for Complainant’s web presence. Once Respondent has attracted these users, it presumably receives a financial benefit from doing so through either sponsored links or click-through fees. This action indicates a bad faith registration and use by Respondent. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpresscom.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 4, 2010
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