WordPress Foundation v. Pham Dinh Nhut
Claim Number: FA1502001603156
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States. Respondent is Pham Dinh Nhut (“Respondent”), Ho Chi Minh City, Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wordrpress.org>, registered with April Sea Information Technology Company Limited.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2015; the Forum received payment on February 9, 2015. The Complaint was submitted in both English and Vietnamese.
On February 4, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <wordrpress.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 February 10, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of March 2, 2015 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@wordrpress.org. Also on February 10, 2015, the Vietnamese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. The Complainant has rights to the WORDPRESS Trademarks and makes extensive use of them such that they have become famous.
Complainant Owns The Marks Complainant is the owner of the distinctive and world-famous WORDPRESS trademark and its corresponding logo (the “Marks”). At least as early as March 28, 2003, and long prior to the creation of the <yWordPress.com> domain, Complainant, and its licensee Automattic, Inc., commenced use of the Marks in connection with what has become the largest, self-hosted blogging and internet publishing tool in the world, used on millions of websites and seen by tens of millions of people every day in hundreds of different languages. Since its inception, Complainant has continually used the Marks in commerce and has gained both common-law and registered trademark rights.
The Marks Are Extensively Used, Promoted and Protected. Complainant, on its own and through its licensee, Automattic, Inc., is a leading provider of blogging and internet publishing services and its website <wordpress.com> ranks at No. 25 in visitor traffic on the entire internet according to the metrics used by Quantcast.com. Its <wordpress.org> domain also ranks very high on Quantcast.com. In 2004 and early 2005 Complainant was mentioned in articles on the famous cNet.com technology website as well as the New York Times and the first Wikipedia page discussing Complainant’s services was created. Its reputation at that time was further evident in the number of times the WORDPRESS name was discussed on private blogs and other websites. Even a Google search which limits results to dates between 2003 and 2005 and excludes Complainant’s own websites, shows how extensive was the reputation of the WORDPRESS Mark during Complainant’s early history.
In 2006 WordPress landed the famous news broadcast organization CNN as a client. The WORDPRESS services have also been the subject of national publicity including various news articles, YouTube videos and a book, in the famous “Dummies” series, entitled “WordPress For Dummies.” Complainant has also been the recipient of recognition and awards. In 2007 WordPress won a Packt Open Source CMS Award and in 2009 it won the best Open Source CMS Award. Further, WordPress was featured on the cover of Linux Journal in July of 2008 and in a business section cover story in the San Francisco Chronicle that same month. At that time WordPress was ranked at #31 in the world on the Alexa.com website with 90 million monthly page views. In January of 2009 WordPress appeared in a story in USA Today. By October, 2009, and based on survey evidence, the Open Source CMS Market Share Report reached the conclusion that WordPress enjoys the greatest brand strength of any open source content management system.
Complainant’s <wordpress.com> and <wordpress.org> websites provide information to prospective users and generate significant revenue for Complainant. As a result of Complainant’s long and extensive use and efforts to promote the WORDPRESS Marks, the Marks have gained significant common-law and registered rights and serve to identify and indicate the source of Complainant’s services to the public, and to distinguish its services from those of others. The Marks have become famous and widely recognized by consumers.
Complainant’s WORDPRESS marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns the following:
Mark Goods and Services Reg. No. Reg. Date
WORDPRESS IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201424 (US) January 3, 2007 (Filed: March 1, 2006)
WORDPRESS (Logo) IC 009. US 021 023 026 036 038. G & S: Downloadable software program for use in design and managing content on a website. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328
IC 042. US 100 101. G & S: Software solutions, namely providing use of on-line non-downloadable software for use in enabling internet publishing. FIRST USE: 20030328. FIRST USE IN COMMERCE: 20030328 3201428 (US) January 23, 2007 (Filed: March 1, 2006)
WORDPRESS WARES:
(1) Downloadable software program and hosted software for use in designing and managing content on a website.
SERVICES:
(1) Hosted software solution services, namely providing use of on-line non-downloadable software for use in enabling internet publishing.
Used in CANADA since at least as early as January 2004 TMA698039
(Canada) October 9, 2007 (Filed: August 31, 2006)
WORDPRESS Cl. 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Cl. 35: Advertising; business management services; business administration; office functions.
Cl. 38: Telecommunications.
Cl. 41: Education; providing of training; entertainment; sporting and cultural activities.
Cl. 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services. 005101068
(European CTM) November 19, 2008 (Filed: May 29, 2006)
WORDPRESS Cl. 9 Establishment of an Internet blog site with a downloadable computer software; for the Internet electronic publications downloadable computer software. 5579753 (China) August 14, 2009 (Filed: September 1, 2006)
WORDPRESS Cl. Realtime connection service for data exchange between computer users, Hosting computer sites [websites],Creating and maintaining websites for others, Computer programming, Rental of computer software, Computer system design, Computer software (Maintenance of -),Computer programs (Duplication of -), 5633949 (China) October 21, 2009 (Filed: September 27, 2006)
Respondent’s registration of the <WordrPress.org> domain violates the Policy.
(a) The <WordrPress.org> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <WordrPress.org> domain is confusingly similar, on its face, to Complainant’s registered and distinctive WORDPRESS Marks. Many applications for the Marks were filed, and the Marks became globally famous long prior to the creation date of the <WordrPress.org> domain. WordPress Foundation v. Cezary Brzezinski, WIPO Case No. D2013-2171 (“The Panel finds that the notoriety of the Mark has been determined in WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427 (“The trademark WORDPRESS is so-well known globally for blogging software …”) and that it makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the Mark prior to acquiring the disputed domain name.”)
Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name <WordrPress.org>.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark, possibly against the same Respondent as in the present dispute). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id.
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a nearly identical copy of Complainant’s Marks (merely adding an additional letter “r”), thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <WordrPress.org> website. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <WordrPress.org> web page and the blogging services offered on that page are also similar to or reference those offered by Complainant, searchers will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the domain name <WordrPress.org> Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <WordrPress.org> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <WordrPress.org> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the name <WordrPress.org> or “WORDPRESS” nor does Respondent 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. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <WordrPress.org> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s WORDPRESS services, who used the domain name <WordrPress.org>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing services. Such use cannot be considered fair.
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide services not associated with or related to Complainant’s quality branded services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent Registered The <WordrPress.org> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Ad noted, supra, Respondent was on actual notice of Complainant’s rights in the Marks through the extensive, global use and fame of the WORDPRESS Marks which predate the creation date of the <WordrPress.org> domain. In fact, since the term “wordr” is not a word in any known language, the domain <WordrPress.org> makes no sense on its own other than as a typo-squat and it could only have been copied from Complainant’s WORDPRESS Marks. Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s common-law rights in the Marks.
Respondent is obtaining commercial gain from its use of the <WordrPress.org> website. When a visitor to the <WordrPress.org> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the <WordrPress.org> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <WordrPress.org> domain. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <WordrPress.org> domain results from pay-per-click links or, in some cases, from the third-party, commercial websites which result when such links are followed. This alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <WordrPress.org> domain. There is no other rational explanation for Respondent having registered and maintained the <WordrPress.org> domain and resolving it to a pay-per-click site. Respondent’s use of the domain name is commercial because the various companies forwarded from the <WordrPress.org> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <WordrPress.org> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Further, it must be noted that should the true party behind the currently privacy service be an entity called Pham Dinh Nhut, then Respondent is a well-known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Over 20 prior UDRP cases have been successfully brought against Pham Dinh Nhut including the following representative examples:
Case No. Domain(s) Case Name Status Decision Date
D2014-2095 WIPO hotelomm.com ESTEVA OOMMM, S.L. v. Pham Dinh Nhut / Vietnam Domain Privacy Services Transfer 27-Jan-2015
1593447 NAF navyferderal.org Navy Federal Credit Union v. Pham Dinh Nhu Transferred 15-Jan-2015
1582274 NAF mufico.com
myfco.com Fair Isaac Corporation v. Pham Dinh Nhut Transferred 12-Nov-2014
1573513 NAF charlotterisse.com Charlotte Russe Merchandising, Inc. v. Pham Dinh Nhut Transferred 23-Sep-2014
1575330 NAF universalnutritionsupply.com Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Pham Dinh Nhut Transferred 25-Set-2014
1556334 NAF angelhourglass.com Hourglass Angel, LLC v. Pham Dinh Nhut Transferred 12-Jun-2014
These prior decisions against Respondent are highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others and deprive Complainant of a common typo of its Mark and a valuable defensive domain registration in the .org TLD. See, e.g., Tyco Fire & Security GmbH v. Domain Admin, NAF Claim No. FA 1550683 (2014) (“Respondent’s litany of adverse UDRP decisions suggests Respondent acted in bad faith in the instant case under Policy ¶4(b)(ii)”); Picanol, Naamloze Vennootschap (N.V.) v. Keyword Marketing, Inc., WIPO Case No. D2008-0651 (“based on the evidence presented to it, the Panel finds that Respondent has engaged in a pattern of registering domain names that infringe trademarks of third parties.”)
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <WordrPress.org> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent apparently sent Complainant the following email:
Dear Sir,
In receipt of the complaint regarding <wordrpress.org>, our client, Mr. Pham Dinh Nhut is willing to transfer the name to you or your client to forgo the proceeding which will save time and money on both sides. This can be done easily by asking the Forum to suspend the proceeding so that the current registrar can transfer the name to your registrar. Please let us know your thoughts. Thank you.
Regards,
Account Administrator.
Since the email was not sent directly to the National Arbitration Forum, it must be disregarded in light of the gravity of the situation.
(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.
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 Complainant must prove three elements to obtain an order canceling or transferring a domain name:
(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 uses the WORDPRESS mark to identify itself as the creator of an internet blogging publishing tool. Complainant registered WORDPRESS with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,201,414, registered Jan. 23, 2007). Such registrations by a national trademark authority normally satisfy the requirement of Policy ¶4(a)(i), regardless of where Respondent resides. Complainant need only prove some rights to the mark at this point, not that Complainant’s rights are superior to Respondent’s rights. There is no reason to conclude otherwise in this case. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO).
Complainant claims the <wordrpress.org> domain name is confusingly similar to the WORDPRESS mark because the domain name simply adds an “r” to the mark as well as the generic top-level domain (“gTLD”) “.org”. The addition of a single letter (especially not in the first character space) does not adequately distinguish the domain name from the mark. In addition, the gTLD must be ignored when determining if the domain name is confusingly similar to the mark under Policy ¶4(a)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 claims Respondent has no rights or legitimate interests in the <wordrpress.org> domain name. Respondent is not commonly known by the disputed domain name or any variant of WORDPRESS. The present WHOIS information merely lists “Pham Dinh Nhut” as registrant. Before this proceeding was brought, the domain name was registered using a privacy service. Since there is no evidence to the contrary supplied by Respondent, there is no basis in the record to find Respondent is commonly known by the disputed domain name in accordance with Policy ¶4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant claims Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. The disputed domain name resolves to a dynamic parking page displaying various links to third party websites. A respondent normally is compensated for hosting such links, even if only by getting free hosting. Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users for respondent’s own commercial gain does not constitute a bona fide offering of goods or services per Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See 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)). Respondent’s use of a confusingly similar domain name resolving to a website with click-through links to presumably generate revenue, while directing Internet users to websites which may be in direct competition with Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Respondent used a privacy service to register the domain name. This means Respondent acquired no rights by actually registering the disputed domain name because Respondent did not publicly associate itself with the domain name. Therefore, Respondent could not acquire any rights.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is a well-known cybersquatter and has engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which Respondent has no rights. Complainant cites prior UDRP cases brought against Respondent where Respondent has lost. See; e.g., Navy Federal Credit Union v. Pham Dinh Nhu, FA 1593447 (Nat. Arb. Forum Jan. 15, 2015); Fair Isaac Corp. v. Pham Dinh Nhut, FA (Nat. Arb. Forum Nov. 12, 2014). That may well be. However, a respondent is allowed to litigate each case on its merits. Policy ¶4(b)(ii) provides bad faith will be found if a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. Complainant cannot make that case here because Complainant owns <WordPress.com>, even though Respondent has improperly registered several domain names in the past. This claim must fail.
Complainant claims Respondent’s use of pay-per-click links constitutes bad faith attraction for commercial gain in accordance with Policy ¶4(b)(iv). The disputed domain name resolves to promote links apparently in competition with Complainant’s internet publishing services, including “West Chester Web Design,” “Build Website on Google,” and “Create Your Own Website.” The disputed domain name has been intentionally designed to attract Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has done this for commercial gain (through pay-per-click links). See 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).”). Using pay-per-click links to divert Internet users to websites arguably in competition with Complainant constitutes attraction for commercial gain in accordance with Policy ¶4(b)(iv).
Complainant claims Respondent’s use of the disputed domain name constitutes typo-squatting behavior. That may be true. However, typosquatting is not an enumerated basis for finding bad faith registration and use under the UDRP. It may be a shorthand way of referring to some of the elements for finding bad faith. However, it does not ipso facto justifying a finding of bad faith. Complainant did not state Respondent is disrupting Complainant’s business under Policy ¶4(b)(ii). Therefore, the Panel will not find bad faith on that basis.
Respondent registered the domain name using a privacy service. This Panel has repeatedly held privacy registrations in the commercial context give rise to a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, bad faith must be found on this basis alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wordrpress.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 12, 2015
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