Wikimedia Foundation, Inc. v. WhoisGuard, Inc.
Claim Number: FA1804001780755
Complainant: Wikimedia Foundation, Inc. of San Francisco, California, United States of America.
Complainant Representative:
Complainant Representative: Wikimedia Foundation, Inc. of San Francisco, California, United States of America.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
Respondent Representative: /
REGISTRIES and REGISTRARS
Registries: Afilias plc
Registrars: NameCheap, 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 Examiner in this proceeding.
Bart Van Besien, as Examiner.
Complainant submitted: April 6, 2018
Commencement: April 9, 2018
Default Date: April 24, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of Facts:
The Complainant submitted evidence of:
· a US “Wikipedia” trademark (service mark) with registration number 3,040,722, registered on 10 January 2006;
· a US “Wikipedia” trademark (service mark) with registration number 3,505,429, registered on 23 September 2008;
· a US “Wikipedia” trademark with registration number 3,773,952, registered on 13 April 2010;
· a US “Wikipedia” trademark (service mark) with registration number 4,970,951, registered on 13 December 2011;
· a US “Wikipedia” trademark (service mark) with registration number 4,382,204, registered on 13 August 2013;
· a US “Wikipedia” trademark (service mark) with registration number 4,382,205, registered on 13 August 2013;
· a US “Wikipedia” trademark with registration number 4,445,992, registered on 10 December 2013;
· a US “Wikipedia” trademark (service mark) with registration number 4,607,920, registered on 23 September 2014; and
· a US “Wikipedia” trademark (service mark) with registration number 4,780,015, registered on 28 July 2015.
Complainant has submitted evidence of use of its trademark(s).
Complainant claims that it is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, and educational content, notably through its free online encyclopedia “Wikipedia”, hosted at <Wikipedia.org>. Complainant claims that its “Wikipedia” encyclopedia offers over 47 million articles in nearly 300 languages and is accessed more than 15 billion times each month on nearly 500 million unique devices. Over 200,000 editors contribute to Wikipedia every month. Complainant further claims that its Wikipedia website is consistently ranked among the ten most popular web properties in the world, and that, as a result, the WIKIPEDIA mark is distinctive and well-known worldwide.
These claims are not refuted by the Respondent.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
Legal findings:
[URS 1.2.6.1] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
URS 1.2.6.1 (i) covers the domain name at issue in this case. The domain name consists of Complainant’s registered word mark paired with the generic top level domain “.kim”. Complainant submitted evidence of its earlier “WIKIPEDIA” word mark and submitted evidence of actual use of this mark.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant claims that the Registrant (i.e., Respondent) does not have rights or legitimate interests in the disputed domain name.
Respondent did not refute Complainant’s claim. Respondent did not provide evidence of legitimate rights or interests in the disputed domain name. There is no evidence of any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence of any similar or identical trademarks owned by Respondent. There is no indication of any authorization to use Complainant’s trademark. There is no indication that Respondent is otherwise related to Complainant’s business. There is no evidence of Respondent being commonly known as “WIKIPEDIA” prior to the registration of the disputed domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
Determined: Finding for Respondent.
Complainant argues that it has a long and well-established reputation in the “WIKIPEDIA” mark through its exclusive use in connection with its free online encyclopedia throughout the world.
Complainant further argues that, by using the disputed domain name, Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. Complainant argues that Registrant is using the disputed domain name to run advertising, and that Registrant is creating a mirror of the Complainant’s site without appropriate disclaimer or attribution and using Complainant’s trademarks on the site without consent or license.
The Respondent did not refute the Complainant’s claims.
The Examiner emphasizes that URS Procedure 8.2 stipulates: “The burden of proof shall be clear and convincing evidence.”
The Examiner further emphasizes that URS Procedure 9.1 stipulates: “There will be no discovery or hearing; the evidence will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire record used by the Examiner to make a Determination”.
URS Procedure 9.3 stipulates: “If the Complainant does not satisfy the burden of proof, the URS proceeding is terminated and full control of the domain name registration shall be returned to the Registrant.”
The Examiner notes that URS Procedure 1.2.6.3 requires Complainant to prove, by clear and convincing evidence, that the domain name was registered and is being used in bad faith.
Complainant argues that Registrant uses the domain name to run advertising, that Registrant created a mirror of the Complainant’s site without disclaimer or attribution, and that Registrant uses Complainant’s trademarks on the site without consent or license.
The Examiner deplores the fact that the Complainant has not submitted any evidence supporting its claim of bad faith use and registration. The Examiner would have expected the Complainant to provide evidence of, for instance, the website associated with the disputed domain name. The Examiner notes that the Complainant submitted a screenshot of its own website (associated with its own domain name <Wikipedia.org>), but not of the Respondent’s website (associated with the disputed domain name <Wikipedia.kim>).
The Examiner notes also that URS Procedure 1.2.4 requires Complainant to include a copy of the currently available Whois information and a description and copy, if available, of the offending portion of the website content associated with each domain name that is the subject of the Complaint. Section 3 (b) of the Rules also mentions that the Complaint shall include a copy of the currently available Whois information and a copy, if available, of the offending portion of the website content associated with each domain name that is the subject of the complaint. However, Complainant did not submit any such copies with its Complaint.
URS Procedure 9.1 is very clear in the sense that the evidence is limited to the materials submitted with the Complaint and the Response, and that these materials are the entire record that can be used by the Examiner to make a Determination.
Therefore, the Examiner finds that the Complaint did not satisfy the standards of URS Procedure 1.2.6.3 in the sense that the Complaint did not provide any evidence of bad faith use and registration of the domain name.
After reviewing the Complainant’s submissions, the Examiner determines that
Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of the Respondent.
Bart Van Besien, Examiner
Dated: April 26, 2018
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