WordPress Foundation v. Bairov Chinigiz
Claim Number: FA1106001392555
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Bairov Chinigiz (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worfpress.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 14, 2011.
On June 8, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <worfpress.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 June 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 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@worfpress.org. Also on June 15, 2011, 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 July 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the WORDPRESS trademark and service mark, which it employs in connection with the marketing of its self-hosted blogging and Internet publishing tools business.
Complainant owns registrations for its WORDPRESS trademark and service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,201,424, issued January 23, 2007).
Complainant also owns the <wordpress.com> domain name, which it likewise uses in connection with the marketing of its services.
Respondent registered the disputed domain name on January 17, 2007.
The disputed domain name fails to resolve to an active website.
Respondent’s disputed <worfpress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.
Respondent is not commonly known by the <worfpress.org> domain name.
Respondent does not 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.
Respondent does not have any rights to or legitimate interests in the domain name <worfpress.org>.
Respondent registered and uses the <worfpress.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its WORDPRESS trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding a complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of a disputed domain name sufficient to prove that that complainant had rights in the mark pursuant to Policy ¶ 4(a)(i)).
The disputed <worfpress.org> domain name is confusingly similar to Complainant’s WORDPRESS trademark and service mark. The domain name merely replaces the letter “d” in the mark with a letter “f” and adds the generic top-level domain (“gTLD”) “.org.” These alterations of the mark in forming the domain name are insufficient to distinguish the domain from the mark so as to avoid a finding of confusingly similarity between them under Policy ¶ 4(a)(i). See The 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 … domain name from the … mark under Policy ¶ 4(a)(i).
See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant first make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden then shifts to Respondent to come forward with affirmative evidence that it has such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has established a prima facie case under this head of the Policy, while Respondent, by failing to submit a Response, has not only failed to meet its burden but has permitted the Panel to infer, without more, that Respondent lacks rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we elect to examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
In this connection, we first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <worfpress.org> domain name, and that Respondent does not 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. Moreover, the WHOIS information for the disputed domain name identifies the registrant of the domain name only as “Bairov Chinigiz,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have rights to or legitimate interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name, where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We also note that Complainant alleges, without objection from Respondent, that Respondent’s domain name fails to resolve to a website featuring any active content. Respondent’s failure to make an active use of the disputed domain name compels us to conclude that the disputed domain name is not being used in connection with 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA 702527 (Nat. Arb. Forum June 21, 2006) (finding that a respondent’s failure to use a disputed domain name meant that its use did not involve 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)).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The examples of bad faith registration and use laid out in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that constitute evidence of registration and use of a domain name in bad faith) Thus we may find bad faith beyond the perimeters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000): “[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”
Respondent’s <worfpress.org> domain name resolves to a website with no active content. This situation appears to have prevailed for all of the more than four years since the domain was registered. This failure to make an active use of the disputed domain name is evidence of Respondent’s bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See, for example, Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes evidence of bad faith registration and use under Policy ¶ 4(a)(iii); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that holding a contested domain name without active use can, in appropriate circumstances, constitute use in bad faith).
Furthermore, it is evident on this record that Respondent had either actual or constructive notice of Complainant’s rights in the WORDPRESS mark when it registered the disputed <worfpress.org> domain name. This is an indication of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See, for example, Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002):
[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.
See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that a respondent had actual or constructive notice of a complainant’s EXXON mark, so that that respondent must have registered a competing domain name in bad faith).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <worfpress.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 13, 2011
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