DECISION
The New York Times Company v. Zhalgas Abishev
Claim Number: FA2405002096513
PARTIES
Complainant is The New York Times Company ("Complainant"), represented by Jordan LaVine of Flaster Greenberg PC, Pennsylvania, USA. Respondent is Zhalgas Abishev ("Respondent"), Kazakhstan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wordlegame.org> and <wordle.game>, registered with Namecheap, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Kateryna Oliinyk and Paul M. DeCicco as Panelists and Alan L. Limbury as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on May 6, 2024. Forum received payment on May 6, 2024.
On May 6, 2024, Namecheap, Inc. confirmed by e-mail to Forum that the <wordlegame.org> and <wordle.game> domain names are registered with Namecheap, Inc. and that Respondent is the current registrant of the names. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, 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 May 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2024 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@wordlegame.org, postmaster@wordle.game. Also on May 7, 2024, 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.
A timely Response was received and determined to be complete on May 28, 2024.
That day, Complainant submitted a Reply to the Response.
On June 4, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Kateryna Oliinyk and Paul M. DeCicco as Panelists and Alan L. Limbury as Chair.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, The New York Times Company, is a global media company first established in 1851, now employing over 5,800 employees, and is known for publishing the internationally renowned The New York Times newspaper, its associated publications, and other media properties. In January 2022, Complainant acquired all rights, including all intellectual property rights, in the popular digital word game known as "Wordle," including the common-law trademark rights in the WORDLE trademark, the copyright in the game, and the trade dress associated with the game, i.e., the "get-up" or "look and feel" of the game. Complainant's acquisition of the game was extensively reported in widely available news sources.
Wordle started as a web-based word game created and developed by software engineer Josh Wardle ("Wardle"). In the Wordle game, players have six attempts to guess a five-letter word, with feedback given for each guess in the form of colored tiles indicating when letters match or occupy the correct position. Wordle has a single daily solution, with all players attempting to guess the same word.
Wardle initially created the Wordle game for himself and his partner to play before making it publicly available in October 2021. The game gained enormous popularity in December 2021, after Wardle added the ability for players to copy their daily results as emoji squares, which were widely shared on social media sites such as Twitter and Facebook. It was around this time in December 2021 that articles about Wordle began appearing in widely distributed media and newspapers such as The Guardian, The New York Times, and countless others, e.g., "What is Wordle? The new viral word game delighting the internet" published in The Guardian on December 23, 2021, "Wordle Is a Love Story" published January 3, 2022 in The New York Times, and "Wordle: why the inventor of the fiendishly addictive online game doesn't want your money," published in The Guardian on January 4, 2022.
Complainant has rights in the WORDLE mark both at common law and through numerous trademark registrations, including with the United Kingdom Intellectual Property Office ("UKIPO"). Respondent's <wordlegame.org> and <wordle.game> domain names are confusingly similar to Complainant's WORDLE mark.
Respondent lacks rights or legitimate interests in the <wordlegame.org> and <wordle.game> domain names. It is impossible for Respondent to be commonly known by the domain names. Respondent only registered them after Complainant's predecessor, Mr. Wardle, acquired rights in the WORDLE mark at common law, and after the game had received substantial recognition and renown in December and very early January, 2022. Further, the websites located at the domain names contain a nearly identical game to Complainant's official Wordle game in an attempt to benefit from Complainant's valuable goodwill in the WORDLE mark. There is no other legitimate explanation for why Respondent would have registered the domain names when he did.
Respondent is not commonly known as "Wordle" or any variation thereof. There is no evidence of any connection between Respondent and the domain names. Moreover, Respondent has no relationship with Mr. Wardle or Complainant, and neither Mr. Wardle nor Complainant has authorized, licensed, or endorsed Respondent's use of his WORDLE mark in the domain names or otherwise.
The websites to which the domain names resolve display an identical or substantially similar word game to Complainant's official Wordle game, and the websites prominently show Complainant's WORDLE mark as well as the initials NYT for New York Times.
The entirety of the evidence demonstrates that Respondent illegitimately registered the domain names in an apparent attempt to confuse consumers and siphon Mr. Wardle's and then Complainant's goodwill in the WORDLE mark.
Respondent's adoption and use of the domain names is in bad faith and is a willful infringement of Complainant's prior rights. Respondent has attempted to take commercial advantage of Complainant's WORDLE mark and commercial reputation with the purpose of trading on Complainant's valuable goodwill. Respondent clearly had Mr. Wardle's Wordle game in mind when registering the <wordlegame.org> and <wordle.game> domain names on 5 and 11 January 2022, very soon after the Wordle game began receiving widespread attention in global media outlets and when the Wordle game was being played daily by hundreds of thousands of persons, with their results being shared across widely used social media platforms.
Respondent uses the domain names in bad faith to resolve to websites which prominently display Complainant's WORDLE mark in connection with a nearly identical word game that copies Complainant's official Wordle game.
Respondent also concealed its true identity by registering the domain names through a privacy service.
Respondent registered the domain names for what appears to be an attempt to siphon the goodwill and reputation of Mr. Wardle and then Complainant in the WORDLE mark. Such registration and use of the domain names is in and of itself a form of opportunistic bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, on May 28, 2024, Respondent informally communicated to Forum by email as follows:
"My domains wordlegame.org and wordle.game were registered on January 5 and 11, 2022, several weeks before the NYT acquired the rights to the Wordle game and long before the "Wordle" trademark was registered. Accordingly, when registering these domains, I could not have known about NYT's intention to buy the rights to the game, as well as register the "Wordle" trademark.
At the moment, both domains don't contain a website at their address, therefore there are no violations of The New York Times Company trademarks.
Also, I have not found any information about the existence of the "WordLeGame" trademark or its affiliation with The New York Times Company. Because my domain names have exactly this phrase: wordlegame.org and wordle.game
I consider this complaint to be unfounded for the reasons mentioned above."
C. Complainant's Reply to the Response
Respondent does not contest Complainant's factual background; does not attempt to specifically rebut Complainant's factual and legal grounds for its Complaint and does not deny that he acquired the domain names after the Wordle game and the WORDLE trademark had become widely known across the world.
Respondent also does not claim that the assignment of the trademark and game from Mr. Wardle to Complainant was invalid in any way.
Respondent's statement that he did not know about Complainant's intention to acquire the rights does not legitimize Respondent's registration of the domain names or diminish Respondent's bad faith in registering and using domain names that are confusingly similar to the trademark of Complainant's predecessor-in-interest.
Finally, that Respondent has temporarily removed content from the websites associated with the domain names does not mean that Respondent will not place content at such domains in the future. Only a transfer of the domain names will prevent Respondent from again putting content at the websites associated with such domains and from taking future bad faith use of the domain names.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the WORDLE mark through numerous registrations, including with the UKIPO (e.g., Reg. No. UK00003749710, registered on May 27, 2022, upon application filed on February 1, 2022).
It is accepted by the panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.
Ignoring the gTLDs ".org" and ".game" for the purposes of this element, the Panel finds Respondent's <wordle.game> domain name to be identical to Complainant's mark and Respondent's <wordlegame.org> domain name to be confusingly similar to Complainant's mark, only differing by the addition to the mark of the word "game", which does nothing to distinguish the domain name from the mark, while referring to Complainant's Wordle game.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The WORDLE trademark does not constitute a dictionary term and has not any dictionary meaning, albeit it hints at or suggests the nature of a product or one of its attributes without actually describing such a product.
The <wordle.game> and <wordlegame.org> domain names were registered respectively on January 5 and January 11, 2022, only days after Complainant has shown that the game, which then belonged to Mr. Josh Wardle and which apparently had been launched in mid-October 2021, had received widespread publicity in the Guardian and the New York Times, and some 2 weeks before Complainant acquired the rights to the game from Mr. Wardle. The domain names resolved to websites which invited Internet users to play the Wordle game. They presently do not resolve to active websites. Such use can never confer rights or legitimate interests on Respondent.
The composition of the disputed domain names, wholly incorporating Complainant's WORDLE trademark and utilizing the term "game", cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <wordlegame.org> and <wordle.game> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent does not specifically address Complainant's contentions relating to this element, instead stating that he could not have known about Complainant's intention to buy the rights to the game, as well as register the WORDLE trademark, because the domain names were registered several weeks before Complainant acquired the rights to the Wordle game and long before the WORDLE trademark was registered.
This indicates that Respondent was aware of the Wordle game when he registered the domain names. There is no evidence of any circumstances within paragraph 4(c) of the Policy.
Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The WIPO Jurisprudential Overview 3.0, section 3.8 provides:
"3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.8.1 Domain names registered before a complainant accrues trademark rights
Subject to scenarios described in 3.8.2 below, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. (This would not however impact a panel's assessment of a complainant's standing under the first UDRP element.)
…
3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application."
One example of bad faith being found in anticipation of nascent trademark rights is General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 (January 15, 2004).
Given the structure of the domain names (both adding the word "game" to Complainant's mark) and the timing of their registration, only days after the significant media attention given to the game, the Panel is satisfied that Respondent had the Wordle game in mind when registering the domain names. Although Complainant had not then acquired its rights in the game and had not then applied to register its WORDLE trademark, that publicity shows that Mr. Wardle had invented the name of the game and that its popularity was likely to give rise to trademark rights, whether registered or at common law, even if it is unclear whether such rights existed when the domain names were registered.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Mr. Wardle's nascent rights in the WORDLE mark when Respondent registered the <wordlegame.org> and <wordle.game> domain names and that Respondent's intent in registering the domain names was to unfairly capitalize on Complainant's predecessor's then nascent trademark rights. This demonstrates registration and use in bad faith.
That the domain names do not presently resolve to active websites does not alter this conclusion, since there is no use to which they could be put which would not take unfair advantage of Complainant's registered trademark rights.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wordlegame.org> and <wordle.game> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Chair
Dated: June 13, 2024
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