WordPress Foundation v. Whois Privacy Protection Service by VALUE-DOMAIN
Claim Number: FA1404001552718
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Whois Privacy Protection Service by VALUE-DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordpress.info>, registered with eNom, Inc. (R126-LRMS).
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2014; the National Arbitration Forum received payment on April 10, 2014.
On April 7, 2014, eNom, Inc. (R126-LRMS) confirmed by e-mail to the National Arbitration Forum that the <wordpress.info> domain name is registered with eNom, Inc. (R126-LRMS) and that Respondent is the current registrant of the names. eNom, Inc. (R126-LRMS) has verified that Respondent is bound by the eNom, Inc. (R126-LRMS) 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2014 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.info. Also on April 10, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant has rights in the <wordpress.info> domain name under Policy ¶ 4(a)(i).
a. Complainant owns the WORDPRESS mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,424 filed March 1, 2006, registered January 3, 2007); Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 6,980 filed August 31, 2006 registered October 9, 2007); China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 5,579,753 filed September 1, 2006 registered August 14, 2009); and with the Japanese Patent Office (“JPO”) (Reg. No. 5,049,965 filed August 31, 2006 registered May 25, 2007).
b. Respondent’s <wordpress.info> domain name is identical or confusingly similar to Complainant’s WORDPRESS mark.
c. Respondent adds the generic top-level domain (“gTLD”) “.info” to Complainant’s WORDPRESS mark.
2. Respondent has no rights or legitimate interests in the <wordpress.info> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. The original creation date for the disputed domain name is listed as February 11, 2004 in the WHOIS information, however, the WHOIS history indicates that the disputed domain name has been under Respondent’s ownership only since October 30, 2007.
ii. Respondent does not operate a business or other organization under the WORDPRESS mark or <wordpress.info> domain name, and has no trademark rights in the WORDPRESS name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent makes no active use of the disputed domain name.
ii. Respondent has tarnished and diluted Complainant’s mark. Respondent’s inactive use of the disputed domain name leads consumers to believe that the failure of the <wordpress.info> domain name to resolve to a website indicates that either Complainant has gone out of business or it has failed to devote attention to its services.
3. Respondent registered and is using the <wordpress.info> domain name in bad faith.
a. Respondent has a pattern of cybersquatting behavior. Complainant cites a prior UDRP decision that was successfully brought against Respondent. See Yahoo! Inc. v. Value Domain/Digirock, Inc. DigiRock, Inc. / Yuuki Yoshizawa; DIGIROCK, INC. / VALUE DOMAIN; DIGIROCK, INC. / VALUE DOMAIN, NAF Claim No. FA1205001446020 (2012).
b. Respondent is inactively holding the disputed domain name as there is no website connected with the disputed domain name.
c. Respondent has actual and constructive notice of Complainant’s rights in the WORDPRESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is WordPress Foundation of San Francisco, CA, USA. Complainant is the owner of domestic and international registrations for the mark WORDPRESS which it has continuously used since at least as early as its first registration date in 2006, in connection with its provision of internet blogging and publishing services. Complainant states that its date of first use was in 2003.
Respondent is Whois Privacy Protection Service by Value-Domain of Osaka, Japan. Respondent’s registrar’s address is listed as Kirkland, WA, USA. The listed creation date of the disputed domain name is February 11, 2004 but it is unknown when Respondent actually took ownership of the domain name. Complainant asserts that Respondent took ownership in 2007.
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(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.”).
Complainant asserts that it has rights in the <wordpress.info> domain name under Policy ¶ 4(a)(i). Complainant claims that it owns the WORDPRESS mark through its registrations with the USPTO (e.g., Reg. No. 3,201,424 filed March 1, 2006, registered January 3, 2007); CIPO (Reg. No. TMA 6,980 filed August 31, 2006 registered October 9, 2007); SAIC (e.g., Reg. No. 5,579,753 filed September 1, 2006 registered August 14, 2009); and JPO (Reg. No. 5,049,965 filed August 31, 2006 registered May 25, 2007). Panels have found that registering a trademark with a recognized trademark authority is sufficient to establish rights in a given mark. See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). Additionally, previous panels have found that rights in a registered mark date back to the date of filing with the trademark authority. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel here finds that Complainant has rights in the WORDPRESS mark dating back to March 1, 2006.
The Panel notes that the WHOIS information for the <wordpress.info> domain name lists a creation date of February 11, 2004, which predates Complainant’s earliest filing date for the WORDPRESS mark. Complainant therefore asserts that it has continually used the WORDPRESS mark in commerce and has gained both common law and registered trademark rights. Complainant states that it is the owner and leading provider of blogging and Internet publishing services. Complainant contends that its <wordpress.com> domain name ranks at number 25 in visitor traffic on the entire Internet, according to the metrics used by <quantcast.com>. Complainant states that in 2004 and 2005 Complainant was mentioned on the famous cNet.com technology website as well as the New York Times and Wikipedia. Complainant further argues that in 2006 it landed the famous news broadcast organization CNN as a client. Complainant asserts that its <wordpress.com> and <wordpress.org> websites provide information to prospective users and generate significant revenue for Complainant. Prior panels have found that a complainant has common law rights in a trademark where it has gained a level of popularity allowing complainant to generate success, recognition and substantial revenue. See Williams v. WhoisGuard Protected, FA 1043246 (Nat. Arb. Forum Sept. 11, 2007) (finding that a complainant had sufficiently established common law rights where the popularity of complainant’s website identical to complainant’s trademark had allowed complainant to generate substantial revenue from advertisements featured on the site). The Panel here finds that Complainant has common law rights in the WORDPRESS mark dating back to Complainant’s first use of the WORDPRESS mark in commerce on March 28, 2003.
Complainant further contends that Respondent’s <wordpress.info> domain name is identical to Complainant’s WORDPRESS mark. Complainant states that Respondent adds the gTLD “.info” to Complainant’s WORDPRESS mark. Past panels have concluded that adding a gTLD to a domain name that features a complainant’s mark in its entirety makes the disputed domain name identical to the registered mark. See Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“). The Panel here finds that Respondent’s <wordpress.info> domain name is identical to Complainant’s WORDPRESS mark under Policy ¶ 4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in the <wordpress.info> domain name. Complainant elaborates, contending that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant argues that the original creation date for the disputed domain name is listed as February 11, 2004 in the WHOIS information, however, the WHOIS history indicates that the disputed domain name has been under Respondent’s ownership only since October 30, 2007. Additionally, Complainant claims that Respondent does not operate a business or other organization under the WORDPRESS mark or <wordpress.info> domain name, and has no trademark rights in the WORDPRESS name. Prior panels, such as the panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) have concluded that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record when the record does not suggest a relationship between respondent and the disputed domain name. The Panel here finds, based on the WHOIS information for the <wordpress.info> domain name, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent makes no active use of the disputed domain name which Complainant claims has tarnished and diluted Complainant’s mark. Complainant also states that Respondent’s inactive use of the disputed domain name leads consumers to believe that the failure of the <wordpress.info> domain name to resolve to a website indicates that either Complainant has gone out of business or it has failed to devote attention to its services. Panels have found that failing to make an active use of a disputed domain name does not convey rights or legitimate interests to a respondent. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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 here finds that Respondent has no rights or legitimate interests in the <wordpress.info> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent is inactively holding the disputed domain name and there is no website connected with the disputed domain name. As Respondent has not provided any response to the instant proceeding and thus no evidence of an active website, the Panel finds that Respondent’s inactive use of the <wordpress.info> domain name indicates bad faith use and registration. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wordpress.info> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 19, 2014
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