WordPress Foundation v. duanxiangwang / duanxiangwang
Claim Number: FA1504001613675
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is duanxiangwang / duanxiangwang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <worrdpress.org>, <worfpress.com>, <worxpress.com>, <wrordpress.com> and <wwwwordpress.com>, registered with Ename Technology Co., Ltd.
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 April 9, 2015; the Forum received payment on April 14, 2015.
On April 10, 2015, Ename Technology Co., Ltd confirmed by e-mail to the Forum that the <worrdpress.org>, <worfpress.com>, <worxpress.com>, <wrordpress.com> and <wwwwordpress.com> domain names are registered with Ename Technology Co., Ltd and that Respondent is the current registrant of the names. Ename Technology Co., Ltd has verified that Respondent is bound by the Ename Technology Co., 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 April 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@worrdpress.org, postmaster@worfpress.com, postmaster@worxpress.com, postmaster@wrordpress.com, postmaster@wwwwordpress.com. Also on April 24, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 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.
Complainant requests this administrative proceeding be conducted in English rather than Chinese pursuant to UDRP Rule 11(a). The Registration Agreement is in Chinese. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors to be considered are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evidencing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may consider the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). In this case, every page on the disputed websites has English text, except for <worxpress.com> (which does not resolve to any active web pages).
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by the Complainant to suggest Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the balance of the proceedings should be in English.
Complainant requests that the domain names 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, signalling, 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 datexchange between computer users, Hosting computer sites [wesites],Creating and maintaining wesites 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 Disputed Domains violates the Policy.
(a) The Disputed Domains are identical or confusingly similar to the Marks under Policy ¶4(a)(i). Each of Respondent’s Disputed Domains is confusingly similar, on its face, to Complainant’s registered and distinctive WORDPRESS Marks and common-law rights to such Marks existed prior to the creation date of the Disputed Domains. See, Yarnmarket Inc. v. yarndexforyarn, NAF Claim No. FA0910001288402 (2009) (Panel held the “registration of a trademark is not necessary to establish that Complainant has rights in the mark), citing, McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002); and Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
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 Disputed Domains.
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.
Similarly 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 using common QWERTY keyboard typos or, in one case, adding the prefix letters “www”), 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 Disputed Domains website. As in Athanasios, Respondent here uses the Marks in its site’s domain names as well as in the title and body of most of its websites. It only makes sense that if searchers see the Marks listed in the body of the Disputed Domains’ web pages they will be confused and led to believe that Respondent’s websites originate with Complainant or are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the Disputed Domains 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 Disputed Domains. 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 websites under the Disputed Domains are either classic pay-per-click sites or redirected sites displaying links or other websites which divert visitors - likely Complainant’s customers and potential customers - to third-parties 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 any of the Disputed Domains or the name “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 Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain names 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 Disputed Domains, 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 Disputed Domains 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. Respondent was on both actual and constructive notice of Complainant’s rights in the Marks through Complainant’s Trademark Registrations, its common-law trademark rights, and its extensive, global use of the WORDPRESS Marks which predate the creation date of the Disputed Domains. See, e.g., Wordpress Foundation Cezary Brzezinski, WIPO Case No. D2013-2171 (“’The trademark WORDPRESS is so-well know globally for blogging software …’ 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.”), citing WordPress Foundation v. Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-1427. Therefore, Respondent here knowingly and intentionally used the Marks in violation of Complainant’s common-law rights in the Marks.
Respondent is obtaining commercial gain from its use of the Disputed Domains. When a visitor to one of the Disputed Domains’ websites either clicks on one of the links which appear there or is redirected to the website of a third-party, Respondent receives compensation from the various website owners who are forwarded from the Disputed Domains. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the Disputed Domains. 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 Disputed Domains results from pay-per-click links and/or redirection. This alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain names and websites results in a commercial gain for others by forwarding visitors to 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 Disputed Domains. There is no other rational explanation for Respondent having registered and maintained the Disputed Domains and resolving them to pay-per-click or redirected sites. Respondent’s use of the domain names is commercial because the various companies forwarded from the Disputed Domains 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 Disputed Domains, Respondent is entirely and solely responsible for the content of its websites. 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 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. A number of prior UDRP cases have been successfully brought against DuanXiangwang including the following representative examples:
|
Case No. |
Domain(s) |
Case Name |
Status |
Decision Date |
|
D2013-2174 (WIPO) |
wwwordpress.org |
WordPress v. Foundation duanxiangwang |
Transfer |
18-Feb-2014 |
|
1514444 (NAF) |
istockphotp.com istockphtoo.com istokcphoto.com |
Getty Images (US), Inc. and its subsidiary, Istockphoto LP v. duanxiangwang |
Transfer |
16-Sep-2013 |
|
100614 (ADR.eu) |
alaexa.com amegazon.com alexa2.com [14 MORE] |
Alexa Internet Amazon Technologies, Inc. eBay Inc. Elance, Inc. PayPal, Inc. v. duan xiangwang |
Complaint Accepted |
9-Aug-2013 |
|
1503692 (NAF) |
delllaptops.com |
Dell Inc. v. duanxiangwang |
Transfer |
29-Jul-2013 |
|
100604 (ADR.eu) |
rcoketmail.com rocketmaail.com roccketmail.com [30 MORE] |
Yahoo! Inc. v. duan xiangwang |
Complaint Accepted |
24-Jul-2013 |
|
D2013-0441 (WIPO) |
tymblr.com |
Tumblr, Inc. v. duanxiangwang |
Transfer |
18-May-2013 |
|
D2012-1153 (WIPO) |
viedemerde.com |
Beta et Companie v. Duan Xiang Wang / Huang Kuan You |
Transfer |
31-Aug-2012 |
|
100292 (ADR.eu) |
fragramcex.com fragranccex.com |
FragranceX.com, Inc. v. Duan Xiangwang Duan Xiangwang |
Complaint Accepted |
12-Sep-2011 |
|
1355849 (NAF) |
wpordpress.com |
Automattic Inc. v. Duan Xiangwang
|
Transfer |
7-Dec-2010 |
|
1338496 (NAF) |
wordpresss.com |
Automattic Inc. v. Duan Xiang Wang |
Transfer |
4-Oct-2010 |
|
1269201 (NAF) |
microsoftranslator.com |
Microsoft Corporation v. Duan Xiang Wang |
Transfer |
11-Aug-2009 |
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. In particular, in Brown Shoe Co., Inc and its subsidiary Brown Group Retail, Inc. v. duanxiangwang / duanxiangwang, NAF Claim No. 1520856 (2013), the Panel specifically “finds that prior UDRP decisions ordering Respondent to transfer its domain names provide evidence of Policy ¶4(b)(ii) bad faith.”. See also, 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.”)
Regardless of whether this Panel determines that this demonstrates a pattern of conduct which deprives Complainant the ability to reflect its mark in the .org or .com TLD under Policy ¶4(b)(ii), the facts of ¶4(b) are not exhaustive and this Panel may nevertheless consider Respondent’s past actions as evidence of its state of mind in the present dispute. Commonwealth Bank of Australia v. Howard Johns Consultancy P/L, WIPO Case No. DCO2014-0033 (“The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found…”)
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the Disputed Domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 prove the following three elements to obtain an order cancelling 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 claims rights in the WORDPRESS mark under Policy ¶4(a)(i). Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. no. 3,201,424 registered January 3, 2007). Registration with a governmental authority, such as the USPTO, is sufficient to demonstrate a complainant’s rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). While a complainant is not required to register its marks in a respondent’s home country, this Complainant registered its marks with the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (which is where Respondent resides). Complainant has adequately demonstrated its rights in the WORDPRESS mark under Policy ¶4(a)(i).
Complainant claims Respondent’s disputed domain names are confusingly similar to Complainant’s WORDPRESS mark. Respondent’s domain names include the gTLD “.com” or “.org.” Including a gTLD does not sufficiently differentiate a domain name from a complainant’s mark because domain name syntax requires a gTLD (or a ccTLD). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
Respondent’s <worrdpress.org>, <worfpress.com>, <worxpress.com>, and <wrordpress.com> domain names are minor misspellings of Complainant’s WORDPRESS mark. The domain names <worrdpress.org> and <wrordpress.com> both include an additional “r.” Adding a letter does not sufficiently differentiate a domain name from a complaint’s mark (especially if the added letter does not occur as the domain name’s initial character). 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).”).
The domain names <worfpress.com> and <worxpress.com> substitute the letter “d” in the WORDPRESS mark with either “f” or “x” which are geographically near to the letter “d” on a standard QWERTY keyboard. Generally speaking, minor typographical error do not diminish the confusing similarity between a complainant’s mark and a disputed domain name. See 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).
Respondent’s <wwwwordpress.com> domain name is identical to Complainant’s mark with the addition of the prefix letters “www.” Adding “www” in a domain name immediately before a complainant’s mark does not diminish confusing similarity. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar).
Respondent’s <worrdpress.org>, <worfpress.com>, <worxpress.com>, <wwwwordpress.com> and <wrordpress.com> domain names are confusingly similar to Complainant’s WORDPRESS mark under Policy ¶4(a)(i).
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 is not commonly known by any of the disputed domain names. WHOIS information shows all of Respondent’s disputed domain names were registered by “duanxiangwang.” A respondent is not commonly known by a disputed domain name when the WHOIS registrant bears no obvious relationship to the domain name. 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.”). Under the record in this case, Respondent is not commonly known by any of the disputed domain names under policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent uses the similarity between the disputed domain names and Complainant’s mark to resolve to (i) websites parking pages pay-per-click sites (worrdpress.org) (ii) redirect to other websites that are not associated with Complainant (wrordpress.com and wwwwordpress.com), (iii) induce a user to download malware or (<worfpress.com>)(iv) a non-active web site (<worxpress.com>). A respondent using a complainant’s mark to redirect users or offer advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Likewise, trying to download malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). Completely failing to use a website at the domain name is also not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). Therefore, this Panel finds Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶4(c)(i) and 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has shown a pattern of bad faith registration through being a party in multiple domain name disputes. Complainant included a list of 11 successful UDRP cases brought against Respondent as registrant of disputed domain names dating from August 2009 to February 2014. This Panel is loathe to infer bad faith because a respondent was a party to other UDRP cases and lost. Each case should be defended on its merits as a general proposition. Since it is not necessary to find bad faith on these grounds, the Panel declines to do so.
Similarly, it is clear Respondent has not met the requirements of Policy ¶4(b)(ii), which requires a respondent to have registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided respondent has engaged in a pattern of such conduct. There is no claim Complainant is unable to reflect its mark in a domain name…because Complainant owns the <WordPress.com> domain (inter alia).
Complainant claims Respondent’s disputed domain names create a likelihood of confusion in the mind of users who access the (worrdpress.org) domain name. Respondent uses the confusion to generate commercial profit through redirecting users and the presence of pay-per-click advertisements. This Panel agrees. There is bad faith registration and use when a respondent uses the similarity between a disputed domain name and a complainant’s mark for the purpose of commercial gain. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶4(b)(iv)). Respondent has engaged in bad faith under Policy ¶4(b)(iv) regarding <worrdpress.org>.
Respondent uses the <worfpress.com> domain name induce a user to download malware. Such actions clearly indicate bad faith registration and use.
Respondent is not using the <worxpress.com> web site at all, even though it was registered on December 12, 2008. Holding a domain name for that period of time without using it suggests bad faith registration and use…something Respondent apparently does not dispute. Therefore, this Panel finds there was bad faith registration and use regarding the <worxpress.com> domain name.
The <wrordpress.com> <worfpress.com> and <wwwwordpress.com> domain names are listed for sale to the public. This constitutes bad faith registration and use under Policy ¶4(b)(i).
Finally, the wrordpress.com and wwwwordpress.com simply forward to a parking page (although without links to other sites). Under the circumstances of this case, it seems clear these domain names were registered and used in bad faith under the penumbra of Policy ¶4(b).
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 <worrdpress.org>, <worfpress.com>, <worxpress.com>, <wrordpress.com> and <wwwwordpress.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 1, 2015
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