WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Michael Goldstein

Case No. D2014-0921

1. The Parties

Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Michael Goldstein of Beverly Hills, California, United States.

2. The Domain Name and Registrar

The disputed domain name <onwikipedia.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2014. On June 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. Respondent sent an informal communication to the Center on June 5, 2014.

The Center appointed Gary J. Nelson as the sole panelist in this matter on July 9, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of at least seven United States trademark registrations for WIKIPEDIA with filing dates and/or registration dates prior to the date the disputed domain name was registered. Specifically, Complainant owns at least the following trademark registrations in the United States:

The disputed domain name was registered on February 3, 2013. The website at the disputed domain name used to feature Complainant’s WIKIPEDIA “Puzzle Globe” and sell services that purportedly allow anyone to “Buy Wikipedia Pages” for $799.

5. Parties’ Contentions

A. Complainant

Complainant is a nonprofit charitable organization dedicated to encouraging the growth, development and distribution of free, multilingual, educational content, and to providing the full content of these wiki-based projects to the public free of charge.

Complainant operates some of the largest collaboratively edited reference projects in the world, including Wikipedia (“www.wikipedia.org”), a top-ten Internet property.

Complainant was established by Jimmy Wales in 2003, two years after creating the Wikipedia website.

The website located at “www.wikipedia.com” has grown rapidly into one of the largest reference websites, attracting 470 million unique visitors monthly. This website has more than 76,000 active contributors working on more than 31 million articles in 285 languages. As of the date the Complaint was filed, this same website is associated with more than 4.5 million articles in English, and attracts hundreds of thousands of visitors from around the world who collectively make tens of thousands of edits and create thousands of new articles to augment the knowledge held by the Wikipedia encyclopedia.

Complainant is the exclusive owner of numerous worldwide trademark registrations for marks that consist of or include the term "wikipedia."

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not formally reply to the Complainant’s contentions, but did send one e-mail directly to the Center posing several informational questions. These e-mails are detailed below.

Email of June 5, 2014:

"Hi Thomas-- What is this email requesting I do? OnWikipedia.com was taken offline as requested. FYI, a 3rd party offered me $1,000 for a quick transfer via sedo to purchase domain name per valuate.com appraisal. Was this offer made by you/your client? Let me know if you have any further questions. //Michael"

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal 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 shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name 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 the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established that it owns prior rights in the WIKIPEDIA mark and the disputed domain name is confusingly similar to Complainant’s WIKIPEDIA mark.

Complainant owns at least seven WIKIPEDIA trademark registrations in the United States. One of these registrations is for United States trademark registration no. 3,040,722. The registration date for this trademark (i.e., January 10, 2006) precedes the date upon which the disputed domain name was registered (i.e., February 3, 2013).

Accordingly, Complainant has established rights in its WIKIPEDIA mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The disputed domain name <onwikipedia.com> is confusingly similar to Complainant’s WIKIPEDIA trademark because the disputed domain name incorporates the entirety of Complainant’s WIKIPEDIA trademark and merely adds a generic descriptive term (i.e., “on”) and the generic Top-Level-Domain (“gTLD”) suffix “.com”. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., the word “on”) simply describes the location of the informational services provided by Complainant (i.e., “on” the “www.wikipedia.com” website). See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).

The addition of the word “on” directly in front of Complainant’s WIKIPEDIA mark is insufficient to avoid a finding of confusing similarity.

Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. SeePavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “on,” “wikipedia” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its WIKIPEDIA mark.

Complainant has provided unrebutted evidence showing that Respondent was operating a website at “www.onwikipedia.com” that featured Complainant’s WIKIPEDIA Puzzle Globe and sold services that purportedly allow anyone to “Buy Wikipedia Pages”. Such use of the disputed domain name to resolve to a website that gives the overall impression of some sort of official connection with Complainant cannot be considered by the Panel as a bona fide offering of goods or services or as a legitimate noncommercial or fair use.

Moreover, Respondent’s decision to add a common descriptive word (i.e., “on”) to a well known trademark does not instill Respondent with legitimate rights in the composite name or mark. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to complainant).

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the WIKIPEDIA trademark. Complainant has alleged, and Respondent has not rebutted, that Respondent was aware of the rights owned by Complainant in WIKIPEDIA when Respondent registered the disputed domain name. Supporting this conclusion is the fact Respondent was directly targeting Complainant on its website as part of the services it offered. The Panel finds this unrebutted allegation to be convincing and sufficient to establish the bad faith registration of the disputed domain name.

Respondent’s awareness of Complainant’s WIKIPEDIA trademark may also be inferred because the mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the WIKIPEDIA trademark is well-known and famous. SeeTrip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see alsoKraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

Furthermore, the Panel finds that the use of the disputed domain name falls within the example of bad faith of paragraph 4(b)(iv) of the Policy. By using the disputed domain name to offer a service which involves creating Wikipedia pages for a fee, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.

The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <onwikipedia.com> be transferred to the Complainant.

Gary J. Nelson
Sole Panelist
Date: July 18, 2014