WordPress Foundation v. Harutomo Deyama
Claim Number: FA1406001566119
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Harutomo Deyama (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sordpress.org>, registered with Go Montenegro Domains, LLC (R1556-LROR).
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 electron-ically on June 23, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 24, 2014, Go Montenegro Domains, LLC (R1556-LROR) confirmed by e-mail to the National Arbitration Forum that the <sordpress.org> domain name is registered with Go Montenegro Domains, LLC (R1556-LROR) and that Respond-ent is the current registrant of the name. Go Montenegro Domains, LLC (R1556-LROR) has verified that Respondent is bound by the Go Montenegro Domains, LLC (R1556-LROR) 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 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@sordpress.org. Also on June 24, 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 techni-cal, 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 21, 2014, 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
Complainant has been using the WORDPRESS trademark in commerce since 2003 in connection with the sale of downloadable software to help manage website contents.
Complainant has a valid registration, on file with the United States Patent and Trademark Office (“USPTO”) for the WORDPRESS trademark and service mark (Registry No. 3,201,424, registered January 23, 2007).
Respondent registered the domain name <sordpress.org> on or about Septem-ber 17, 2013.
The domain name is confusingly similar to the WORDPRESS trademark in which Complainant has rights.
Respondent has not been commonly known by the disputed domain name.
Respondent is using the disputed domain name to resolve to a web page that is devoted to adult-oriented content, from the operation of which Respondent seeks to obtain commercial gain.
Respondent’s use of the domain name cannot be considered a bona fide offering of goods and services or as a legitimate noncommercial or fair use.
Internet users who are drawn to the resolving website are likely to be confused and to believe that Respondent’s website originates with Complainant or is affiliated with or sponsored by Complainant.
Respondent has neither any rights to nor any legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the WORDPRESS mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
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."
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal 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 reason-able inferences of fact in the allegations of a UDRP 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 has rights in the WORDPRESS trademark and service mark for pur-poses of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Japan). See, for example, KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (finding that it does not matter, for purposes of Policy ¶ 4(a)(i), whether a UDRP complainant’s mark is registered in a country other than that of a respondent’s place of business).
Turning to the central question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that the domain name <sordpress.org> is confusingly similar to Complainant’s WORDPRESS trademark and service mark. The domain name employs the entire mark, with only the substitution of “s” for “w” and the addition of the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save the result from the realm of con-fusing similarity under the standards of the Policy. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a UDRP complainant's BELKIN mark be-cause the domain name merely replaced the letter “i” in that complainant's mark with the letter “e”).
See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com,” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine 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.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not commonly known by the <sordpress.org> domain name. We also note that there is nothing in the record to suggest that Respond-ent is affiliated with Complainant or that Complainant has given Respondent permission to use its WORDPRESS mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Harutomo Deyama,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), a panel there finding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relavant WHOIS information identified the registrant as “Andrew Kaner c/o Elec-tromatic a/k/a Electromatic Equip't,” which did not resemble the domain name there in issue, and where there was no other evidence in the record to suggest that that respondent was commonly known by those domain names.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <sordpress.org> domain name to resolve to a web page that is devoted to explicit content, and that Respondent seeks to profit from the operation of that web page. In the circumstances here presented, we con-clude that Respondent employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii) . See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <sordpress.org> domain name, which is confusingly similar to Complain-ant’s WORDPRESS trademark and service mark, is an attempt to profit from the confusion caused among Internet users as to the possibility of Complainant’s affiliation with or sponsorship of the resolving web page. This stands as evi-dence that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003):
Respondent has attempted to commercially benefit from the mis-leading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to com-mercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
We are also convinced by the evidence that Respondent’s use of the domain name as alleged in the Complaint tarnishes Complainant’s business reputation, and that this too stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that a respondent’s tarnishing use of disputed domain names, which were confusingly similar to the mark of a UDRP complainant, to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Finally under this head of the Policy, we conclude from the record that Respond-ent knew of Complainant and its rights in the WORDPRESS trademark and ser-vice mark when it registered the contested domain name. This is independent proof of Respondent’s bad faith in the registration of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith under the Policy where a respondent was "well-aware of” a UDRP com-plainant's YAHOO! mark at the time of its registration of a domain name that was confusingly similar to that mark).
For these reasons, the Panel finds that Complainant has met 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 <sordpress.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 24, 2014
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