Wikimedia Foundation v. WhoisGuard, Inc.
Claim Number: FA1805001785303
Complainant: Wikimedia Foundation of San Francisco, California, United States of America.
Respondent: WhoisGuard, Inc. of Panama, Panama.
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.
Peter Müller, as Examiner.
Complainant submitted: May 7, 2018
Commencement: May 7, 2018
Default Date: May 22, 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").
The Complainant requests that the disputed domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the 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.
[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.
The Complainant provided documentary evidence that it is inter alia registered owner of the United States trademark registration no. 3,040,722 Wikipedia, which was registered on January 10, 2006 covering various services in class 41 as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the Complainant’s Wikipedia Mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the Complainant’s Wikipedia Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Respondent has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has no legitimate rights or interests in the disputed domain name as it is not commonly known by the disputed domain name, as it is not a licensee or affiliate of the Complainant, and as the Complainant has never authorized or consented to the Respondent’s registration of the disputed domain name. In addition, the Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or any legitimate non-commercial or fair use purpose but only to mirror the Respondent’s website content for advertising purposes.
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant contends that the Respondent is using the disputed domain name in bad faith pursuant to URS Policy 1.2.6.3.(d). The Complainant argues that, as the Respondent is using the disputed domain name to run advertising, it is clear that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by using the Wikipedia Mark in a manner likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of Registrant’s site. The Complainant finally states that the Respondent is creating a mirror of the Complainant’s website without appropriate disclaimer or attribution and is using the Complainant’s trademarks on the site without consent or license.
The Examiner accepts that the Respondent must have been aware of the Complainant’s highly distinctive and well-known Wikipedia Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith. As to bad faith use, by fully incorporating the Wikipedia Mark into the disputed domain name and by using this domain name in connection with a mirror of the Complainant’s website, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out in URS Procedure 1.2.6.3.d.
The Examiner finds that the disputed domain name was registered and is being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<wikipedia.kim>
Peter Müller, Examiner
Dated: May 25, 2018
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