WordPress Foundation v. Xiaodong Peng
Claim Number: FA1106001393152
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Xiaodong Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordppress.org>, registered with Melbourne IT Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2011; the National Arbitration Forum received payment on June 18, 2011.
On June 15, 2011, Melbourne IT Ltd. confirmed by e-mail to the National Arbitration Forum that the <wordppress.org> domain name is registered with Melbourne IT Ltd. and that Respondent is the current registrant of the name. Melbourne IT Ltd. has verified that Respondent is bound by the Melbourne IT Ltd. 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 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@wordppress.org. Also on June 21, 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 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <wordppress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <wordppress.org> domain name.
3. Respondent registered and used the <wordppress.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WordPress Foundation, uses its WORDPRESS mark in connection with its self-hosted blogging and Internet publishing tool. Complainant has registered its WORDPRESS mark with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), the European Union Office for Harmonization in the Internal Market (“OHIM”), and the Chinese State Intellectual Property Office (“SIPO”):
USPTO
Reg. No. 3,201,424 issued January 23, 2007;
Reg. No. 3,201,428 issued January 23, 2007;
CIPO
Reg. No. TMA698039 issued October 9, 2007;
OHIM
Reg. No. 005101068 issued November 19, 2008; and
SIPO
Reg. No. 5,579,753 issued August 14, 2009.
Respondent, Xiaodong Peng, registered the <wordppress.org> domain name on December 29, 2009. The disputed domain name hosts a website displaying pay-per-click links that forward visitors to other websites, including some that are not associated with, and some that are potentially competitive with, Complainant.
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 has registered its WORDPRESS mark with the USPTO, the CIPO the OHIM, and the SIPO:
USPTO
Reg. No. 3,201,424 issued January 23, 2007;
Reg. No. 3,201,428 issued January 23, 2007;
CIPO
Reg. No. TMA698039 issued October 9, 2007;
OHIM
Reg. No. 005101068 issued November 19, 2008; and
SIPO
Reg. No. 5,579,753 issued August 14, 2009.
Based on these registrations with trademark authorities around the world, the Panel finds that Complainant has adequately proven rights in the WORDPRESS mark for the purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <wordppress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark because the disputed domain name consists of Complainant’s mark with an additional letter “p” inserted and the generic top-level domain (“gTLD”) “.org.” The Panel concludes that inserting a single extra letter into Complainant’s mark fails to prevent a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The Panel also determines that the attached gTLD has no effect on the Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus concludes that Respondent’s <wordppress.org> domain name is confusingly similar to Complainant’s WORDPRESS mark pursuant to Policy ¶ 4(a)(i).
The Panel holds Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) places the initial burden on Complainant to allege sufficiently that Respondent does not possess rights and legitimate interests in the disputed domain name. Only after Complainant presents a prima facie case against Respondent does the burden of proof shift to Respondent. As Complainant has satisfied this obligation in the instant proceeding, Respondent now must prove its rights and legitimate interests in the disputed domain name. Respondent, however, has failed to respond, leaving the Panel with the inference that Respondent lacks all rights and legitimate interests and that Complainant’s stated allegations are true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nevertheless, in the interest of fairness the Panel will consider the evidence according to the Policy ¶ 4(c) factors to determine Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not commonly known by the <wordppress.org> domain name. Complainant asserts that Respondent does not operate a business or any other organization under this mark or name and does not own any trademark or service mark rights in the WORDPRESS mark. The WHOIS information for the disputed domain names indicates that the registrant is “Xiaodong Peng,” a name which suggests no facial affiliation with the disputed domain name. Accordingly, the Panel holds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant asserts that Respondent’s <wordppress.org> domain name advertises pay-per-click links that redirect Internet users to other websites, including some that are not associated with, and some that are potentially competitive with, Complainant’s website. The Panel holds that Respondent’s use of the disputed domain name to lead consumers to a website advertising other websites through pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent displays a variety of links on the website resolving from the <wordppress.org> domain name. Complainant asserts that, as some of these links offer services that compete with Complainant and divert Complainant’s intending customers to third-party websites, Respondent’s use of the disputed domain name disrupts Complainant’s business. The Panel determines that such disruption and advertising for competitors at the disputed domain name illustrates that Respondent registered and is using the <wordppress.org> domain name in bad faith according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent registered a variation of Complainant’s WORDPRESS mark as the <wordppress.org> domain name in order to attract Internet users seeking Complainant and trade off of Complainant’s fame and recognition. Complainant asserts that the similarity between its mark and the disputed domain name creates a likelihood that Internet users will be confused about the existence of a connection, sponsorship, or affiliation between Complainant and Respondent. Complainant contends that the pay-per-click links are posted on Respondent’s websites to enable Respondent to profit from this traffic diversion by generating click-through fees whenever the links are clicked. The Panel finds that Respondent’s efforts to commercially profit through a misleading and confusion attraction to its website demonstrates Respondent’s bad faith registration and use pursuant to 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordppress.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 14, 2011
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