WPEngine, Inc. v. Daniel Hall
Claim Number: FA1404001557024
Complainant is WPEngine, Inc. (“Complainant”), represented by Matt Schneller of Bracewell & Giuliani LLP, Washington, USA. Respondent is Daniel Hall (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wp-engine.com>, registered with 1api GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 2, 2014, 1api GmbH confirmed by e-mail to the National Arbitration Forum that the <wp-engine.com> domain name is registered with 1api GmbH and that Respondent is the current registrant of the name. 1api GmbH has verified that Respondent is bound by the 1api GmbH 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 May 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@wp-engine.com. Also on May 2, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
i. Complainant, WPEngine, Inc., was founded in 2010, and has offered website hosting and related services continuously and exclusively under its WP ENGINE mark.
ii. Complainant has common law rights in the WP ENGINE mark.
iii. Complainant has filed a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WP ENGINE mark (US Serial No. 86102192, filing date October 25, 2013).
iv. The disputed domain name is confusingly similar to Complainant’s WP ENGINE mark.
v. Respondent has no rights or legitimate interests in the disputed domain name.
vi. Respondent is not commonly known by the disputed domain name.
vii. The disputed domain name resolves to the websites of Complainant’s direct competitors.
viii. Respondent has registered and is using the disputed domain name in bad faith.
ix. The disputed domain name resolves to the websites of Complainant’s direct competitors.
x. Respondent registered the <wp-engine.com> domain name on April 14, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the WP ENGINE mark and has filed a trademark registration with the USPTO. Respondent’s domain name is confusingly similar to Complainant’s WP ENGINE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wp-engine.com> domain name, and that Respondent registered and uses the domain name 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."
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 was founded in 2010, and has offered website hosting and related services continuously and exclusively under its WP ENGINE mark. Complainant contends that it has common law rights in the WP ENGINE mark. Complainant argues that it was founded in 2010, and that its services have been widely used since that time. Complainant claims that its services are very well-known. Complainant cites widespread media from publications such as the Phoenix Business Journal and Mashable. Further, Complainant asserts that its sales exceeded $1,000,000 in its first year of operations and have continued to grow at least 25% each quarter thereafter. Complainant argues that it has over 17,000 users worldwide, and over 750 users in the United Kingdom host their websites using WP ENGINE hosting services. Complainant filed a trademark registration with the USPTO for the WP ENGINE mark (US Serial No. 86102192, filing date October 25, 2013). In Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006), the panel held that complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where complainant had been continuously and extensively promoting a real estate development under the mark for several years. Accordingly, the Panel finds that, based on the uncontradicted record, Complainant’s evidence minimally shows that the WP ENGINE mark has acquired secondary meaning and that for the purpose of this proceeding, Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wp-engine.com> domain name is confusingly similar to Complainant’s WP ENGINE mark. Respondent adds a hyphen and the generic top-level domain (“gTLD”) “.com” to Complainant’s WP ENGINE mark to create the disputed domain name. Respondent’s inclusion of a hyphen and a gTLD does nothing to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel finds that Respondent’s <wp-engine.com> domain name is confusingly similar to Complainant’s WP ENGINE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known by the <wp-engine.com> domain name. Complainant argues that the WHOIS information for the disputed domain name makes no mention of the domain name or the mark as Respondent’s name or nickname. The WHOIS record states that “Daniel Hall” is listed as the registrant of the disputed domain name. Furthermore, Respondent has not provided any evidence showing that it is known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known under the <wp-engine.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims that Respondent’s <wp-engine.com> domain name resolves to the websites of Complainant’s direct competitors. Complainant asserts that Respondent’s disputed domain name resolves to a direct competitor of Complainant in the business of webpage hosting. Complainant argues that the domain name redirects to the specific URL <http://mediatemplate.net/#a_aid=5267d7c5119b6>. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services. Accordingly, the Panel finds that Respondent is not using the <wp-engine.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s disputed domain name resolves to a direct competitor of Complainant, whose website is <www.mediatemple.net>. A respondent’s use of a disputed domain name to resolve to a competing website evidences bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel holds that Respondent’s use of the <wp-engine.com> domain name to provide a competing website for which it may commercially benefit shows bad faith use and registration 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 <wp-engine.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 9, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page