WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Syuzanna Nesterova

Case No. D2018-1454

1. The Parties

The Complainant is Wikimedia Foundation, Inc. of San Francisco, California, United States of America, internally represented.

The Respondent is Syuzanna Nesterova of Saint-Petersburg, the Russian Federation, self-represented.

2. The Domain Name and Registrar

The disputed domain name <seo-wikipedia.org> (the "Disputed Domain Name") is registered with Regtime Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 4, 2018, the Registrar Regtime Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 6, 2018, the Center sent an email communication to the Parties in Russian and English in regard to the language of the proceedings. The Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The informal Response in Russian was filed with the Center on August 7, 2018. The same day the Center sent an email communication to both the Complainant and the Respondent regarding the possibility of implementation of a settlement agreement between them. No request for suspension was received by the Center. The Center notified the Parties about the Commencement of Panel Appointment Process in English and Russian on August 13, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on August 15, 2018. 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

The Complainant, being founded in 2003, is a nonprofit charitable organization which encourages the growth, development and distribution of free, multilingual, educational content. Today the Complainant manages 13 free knowledge projects online, most of which are edited and maintained by over 70,000 contributors.

The Complainant is the owner of more than 330 WIKIPEDIA trademark registrations ("WIKIPEDIA Trademark") all over the world. For the purposes of its Complaint the Complainant introduces the evidences of number of the WIKIPEDIA Trademark registrations, among which there are some of them:

United States Registration No. 3,040,722 in class 41, registered on January 10, 2006; United States Registration No. 3,505,429 in classes 9, 35, 38, 41, and 42 registered on September 23, 2008;
United States Registration No. 3,773,952 in classes 9, 14, 16, 18, 21, 25, and 28, registered on April 13, 2010;
United States Registration No. 4,070,951 in classes 9, 14, 16, 18, 21, 25, 28, 35, 38, 41,42, registered on December 13, 2011;
International Registration No. 839132 in class 41, registered on December 16, 2004;
International Registration No. 907474 in classes 9, 35, 38, 41, and 42, registered on September 20, 2006;
International Registration No. 1224858 in classes 9, 36, 38, 41, and 42 registered on March 27, 2014.

The Complainant operates a domain name <wikipedia.org> since January 13, 2001. The Complainant also operates number of another domain names which incorporate the WIKIPEDIA Trademark, some of them are <wikipedia.com>, <wikipedia-news.com>, <wikipediaarticles.com>, and <wikipedia.us>.

The Disputed Domain Name was registered on April 6, 2017. The Respondent is using the Disputed Domain Name to offer different articles for websites development and search engine optimization, bearing no relation the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant asserts that that the Disputed Domain Name is confusingly similar to its WIKIPEDIA Trademark in view of the Disputed Domain Name incorporates the WIKIPEDIA Trademark in its entirety. The Complainant notes that addition of the generic term "seo" to the Disputed Domain Name even increases the potential risk of confusion.

The Complainant notes that the WIKIPEDIA Trademarks are unique and have become very valuable assets of the Complainant.

The Complainant further contends that taking account of notoriety of the WIKIPEDIA Trademark, the Disputed Domain Name is likely to cause consumers to believe that the website under it is affiliated with, authorized by, or endorsed by the Complainant.

In addition, the Complainant alleges that the Respondent is not a licensee of or otherwise affiliated with it, the Respondent has never been authorized or consented to registration of the Disputed Domain Name, the Respondent is not commonly known by the Disputed Domain Name, and accordingly the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Complainant further alleges that the Respondent registered and is using the Disputed Domain Name in bad faith since the evidences suggest that the Respondent was well-acquainted with the Complainant's WIKIPEDIA Trademark when it registered the Disputed Domain Name and that by using the Disputed Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website.

The Complainant also pointed that it has sent three cease and desist letters to the Respondent where the Complainant has warned the Respondent that its conduct violates the Policy and infringes the Complainant's rights in WIKIPEDIA Trademark, however the Respondent did not respond that also supports an inference of bad faith.

B. Respondent

The Respondent forwarded an informal response where it indicated that the website under the Disputed Domain Name was created with the purpose of providing the specific information free of charge and that no commercial gain is pursued by the WIKIPEDIA Trademark use in the Disputed Domain Name. The Respondent contends that the resource was created not for traffic interception from the Complainant. The Respondent also noticed that the Disputed Domain Name has been chosen spontaneously and that the Internet users are not misled in any way.

6. Discussion and Findings

6.1. Language of Proceedings

In accordance with paragraph 11 of the Rules unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Russian.

The Complainant filed a request for the English language proceeding, submitting the following arguments:

1) the content of the website under the Disputed Domain Name is featured with English letters;

2) the Disputed Domain Name consists of the English language letters as well as the WIKIPEDIA Trademark is also in English language that evidences of the Respondent's familiarity with the English language;

3) English is the primary language of the Complainant;

The Respondent noted in his informal response that presenting the response in the English language would be impossible in view of the absence of linguistic skills and resources for it. The Respondent did not file any submissions with respect to the Complainant's language request provided to him by the proper Center's English and Russian communications. However having regard to the content of the Respondent's informal response it is apparent that the Respondent understood the main points of the Complaint.

Paragraph 10(c) of the Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.

The Complainant is not obviously able to communicate in Russian and if the Complainant must submit all documents in Russian, this UDRP proceeding will be unduly delayed. Previous UDRP panels decided that the choice of language of the proceedings should not create an undue burden for the parties (see, e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

Taking into consideration the specific circumstances cited above of this case, the Panel considers it would be unfair to ask the Complainant to bear additional expenses and to delay the proceeding. Therefore, the Panel concludes that English shall be the language of the proceeding.

6.2. Substantive Matters

A. Identical or Confusingly Similar

The Complainant has a protection for its WIKIPEDIA Trademark in a large number of jurisdictions and, following on from the evidences provided by the Complainant it is obvious that the WIKIPEDIA Trademark is a well-known trademark. Also previous UDRP panels have acknowledged the WIKIPEDIA Trademark as well-known, see e.g., The Wikimedia Foundation, Inc. v. Abid Karmali, WIPO Case No. D2018-0708; Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911.

The Panel notes that the Complainant's WIKIPEDIA Trademark has been a subject to abusive domain names registrations, see e.g. Wikimedia Foundation, Inc. v. Gwinel Madisse, WIPO Case No. D2017-1250; Wikimedia Foundation, Inc. v. Mildred Valentine / Domain Hostmaster, WIPO Case No. D2014-2283; Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911; Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.

The Complainant's well-known WIKIPEDIA Trademark is included in the Disputed Domain Name in its entirety in combination with the hyphen, common word "seo" and the generic Top-Level-Domain ("gTLD") suffix ".org". The gTLDs are typically not taken into account for the purposes of determining whether a mark and a domain name are identical or confusing similar under the Policy. Also the use of hyphen in the Disputed Domain Name is irrelevant in a finding of confusing similarity, see e.g.Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 ("It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name").

The term "seo" is an abbreviation of "search engine optimization" and means the process of affecting the online visibility of a website or a web page in a web search engine's unpaid results. Apparently, the addition of such common term to the well-known WIKIPEDIA Trademark cannot give the distinctive character to the Disputed Domain Name and accordingly cannot change the impression of the dominant element in it, namely "wikipedia". Conversely, the presence of the above common term behind the well-known WIKIPEDIA Trademark may only make it clear that the Disputed Domain Name is indeed connected with this Trademark and/or with the Complainant. The Internet users, accessing the Disputed Domain Name, would very likely presume that it is a special separate online project of the Complainant with advices on websites promotion and optimization.

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's WIKIPEDIA Trademark. Therefore paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, in view of the following: the Respondent has not been licensed by or somehow affiliated with the Complainant, it has never been permitted by the Complainant to use the Complainant's well-known WIKIPEDIA Trademark and it is not commonly known by the Disputed Domain Name.

The Respondent registered the Disputed Domain Name long after the Complainant had acquired its trademark rights. The Panel finds that the Respondent, who is a natural person, is not commonly known by the Disputed Domain Name, that demonstrates a lack of rights or legitimate interests in accordance with paragraph 4(c)(ii) of the Policy.

Further according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.5.2 beyond looking at the domain name and the nature of any additional terms appended to it (whether descriptive, laudatory, derogatory, etc.), panels assess whether the overall facts and circumstances of the case support a claimed fair use. To facilitate this assessment, panels have found the following factors illustrative: (i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent's benefit, (ii) whether the respondent reasonably believes its use (whether referential, or for praise or criticism) to be truthful and well-founded, (iii) whether it is clear to Internet users visiting the respondent's website that it is not operated by the complainant, (iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties, (v) where appropriate, whether a prominent link (including with explanatory text) is provided to the relevant trademark owner's website, (vi) whether senders of email intended for the complainant but (because of user confusion) directed to the respondent are alerted that their message has been misdirected, (vii) whether there is an actual connection between the complainant's trademark in the disputed domain name and the corresponding website content, and not to a competitor, or an entire industry, group, or individual, and (viii) whether the domain name registration and use by the respondent is consistent with a pattern of bona fide activity (whether online or offline).

The Complainant has provided an evidence (Annex 9 of the Complaint) that shows that the Respondent is operating a website at "www.seo-wikipedia.org" which contains the Complainant's WIKIPEDIA Puzzle Globe and the Complainant's slogan "WIKIPEDIA The Free Encyclopedia". At the same time according to the information available on the abovementioned website the Respondent describes his website as a "unique seo wikipedia for free reading". Such use of the Disputed Domain Name creates strong impression of connection with the Complainant; however the website under the Disputed Domain Name does not contain any information regarding the relationship with the Complainant. Accordingly the Panel cannot consider such use of the Disputed Domain Name as bona fide offering goods or services, as well as a legitimate noncommercial or fair use.

In spite of the fact that the Respondent submitted informal response, he did not indicate in it any circumstances that he could demonstrate any rights or legitimate interests in respect of the Disputed Domain Name in accordance with paragraph 4(c) of the Policy.

Furthermore the evidences show that the Respondent has registered and is using the Disputed Domain Name for drawing attention of Internet users to his website and, correspondingly, to take advantages of the notoriety of the Complainant's WIKIPEDIA trademark. The Respondent's decision to add a common word "seo" (which is the abbreviation of "search engine optimization") to the well-known WIKIPEDIA Trademark enhances the association with the Complainant and does not vest the Respondent with rights or legitimate interests in the Disputed Domain Name, see e.g.Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 ("use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name").

In view of the above the Panel finds that the Complainant has satisfied the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that the Complainant's first use and first registration of the WIKIPEDIA Trademark significantly predates the registration of the Disputed Domain Name and the WIKIPEDIA Trademark has acquired global fame also before the registration of the Disputed Domain Name. Additionally, the Complainant registered its domain name and began operating its website at "www.wikipedia.org" in 2001 which is long before the Respondent registered the Disputed Domain Name. See e.g.Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 "where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred".

In accordance with section 3.2.2 of the WIPO Overview 3.0 noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark. The manner of use of the Disputed Domain Name by the Respondent, namely displaying on website "www.seo-wikipedia.org" the Complainant's WIKIPEDIA Puzzle Globe and slogan "WIKIPEDIA The Free Encyclopedia", attests to the fact that the Respondent was well aware of the Complainant's activity and the Complainant's WIKIPEDIA Trademark when he registered the Disputed Domain Name.

Moreover, taking into consideration the fact that the Complainant's website "www.wikipedia.org" is ranking in the fifth place in worldwide traffic and that the Complainant has online presence only, displaying the Complainant's WIKIPEDIA Puzzle Globe and slogan on the website under the Disputed Domain Name shall not leave any doubts for the Internet users that the Disputed Domain Name is indeed connected with the Complainant. Therefore the Panel concludes that the use of the well-known WIKIPEDIA Trademark for attracting the Internet users to the website under the Disputed Domain Name cannot be considered as fair use.

The Respondent's indication in the informal response about his "spontaneous" choice of the Disputed Domain Name cannot be also considered as truthful in view of extreme worldwide notoriety of the Complainant's WIKIPEDIA Trademark.

In addition, in spite of the fact that the Respondent noted in his informal response that there had not been any intention to obtain any benefit from use of the prefix "wikipedia" while registering the Disputed Domain Name, it may be presumed that the sole purpose of this registration was creation a likelihood of confusion with the Complainant's well-known Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

Furthermore, the Respondent did not respond to the Complainant's three cease and desist letters in which the Complainant warned the Respondent about his infringement and requested to stop using the Disputed Domain Name, accordingly the Respondent ignored the Complainant's attempts to settle this dispute without initiation of this proceeding. Such Respondent's behavior as well gives to the Panel the grounds for conclusion that the Respondent has registered and is using the Disputed Domain Name in bad faith.

Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <seo-wikipedia.org> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: August 28, 2018