WordPress Foundation v. Niklas Schroeder
Claim Number: FA1509001638571
Complainant is WordPress Foundation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Niklas Schroeder (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nulledwordpress.org>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2015; the Forum received payment on September 28, 2015.
On September 21, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <nulledwordpress.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 September 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@nulledwordpress.org. Also on September 28, 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 October 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has rights in the WORDPRESS mark through registration with the United States Patent and Trademark Office. The rights date back to at least 2006. The mark is used 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 around the globe. The mark is famous. The disputed domain name is confusingly similar to Complainant’s mark because the domain merely adds the generic term “nulled” and the generic top-level domain (“gTLD”) “.com.” These additions do not create a distinction sufficient to prevent a finding of confusing similarity. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to offer and promote plugins and third-party products which, when installed, deliver malware to unsuspecting internet users, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from using the disputed domain name to redirect users to third party malware websites when they click on links at the top of website; Respondent likely obtains revenue from these click-throughs. Respondent also offers themes and plugins for Complainant’s products that compete with Complainant’s own products and services. Finally, Respondent had knowledge of Complainant’s rights in the WORDPRESS mark at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the registered trademark WORDPRESS. This mark is famous.
The disputed domain name was registered in 2014, well after Complainant registered its mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to redirect users to a web site that promotes plugins and third-party products that compete with those of Complainant, and links to websites that deliver malware to unsuspecting Internet users.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the WORDPRESS mark through registration in the US dating back to 2006. The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the mark and merely adds the generic term “nulled” and the gTLD “.org.” Panels have held that adding a generic term to a domain name does not distinguish a domain from a mark when determining confusing similarity. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Similarly, Panels have held that the addition of a gTLD to a domain is not relevant to a confusing similarity analysis. See 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). Consequently, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant is not commonly known by the disputed domain name: WHOIS information linked to the disputed domain name lists the registrant as “Niklas Schroeder,” which does not resemble the disputed domain name. Panels have held a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds, based on WHOIS information and a lack of contradictory information, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to resolve to a website that promotes plugins and third-party competing products and links to websites that deliver malware to unsuspecting Internet users. Panels have held that using a domain that is confusingly similar to a complainant’s mark for the purposes of delivering malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of 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)”). Accordingly, the Panel finds that Respondent’s use of the disputed domain name does not fall within the parameters of ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, D2002-0701 (WIPO Sept. 6, 2002); see also AltaVista Company v. Saeid Yomtobian, D2000 0937 (WIPO Oct. 13, 2000) .
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Respondent has shown bad faith through offering themes and plugins for Complainant’s products that compete with Complainant’s own products and services. Respondent’s website that resolves from the disputed domain name displays multiple download links for WordPress themes and plugins that are not affiliated with Complainant’s legitimate products or services. Panels have held that advertising products that compete with a complainant’s own products on a disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel concludes that Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Respondent’s bad faith is evident from using the disputed domain name to redirect users to third party websites when they click on links at the top of website. Presumably, Respondent receives some sort of financial incentives for delivering users these third party websites. Buttons labeled “WordPress Themes” and “WordPress Plugins” both lead to third party websites which are infected with malware. Panels have found bad faith where respondent used a disputed domain to direct users to sites hosting malware. See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). The Panel finds that Respondent has acted in bad faith through directing users to websites containing malware under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nulledwordpress.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 27, 2015
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