Complainant is Wikimedia Foundation, Inc., United States of America (“United States”), represented by Jones Day, United States.
Respondent is Salamuddin Shaikh, India.
The disputed domain name <wikipediaexperts.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2020, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. On July 2, 2020, the Center received an email communication from Respondent, and on July 7, 2020, Complainant requested suspension of the proceeding to explore settlement negotiations. The proceeding was then suspended on July 8, 2020. On August 18, 2020, upon request of Complainant the proceeding was reinstituted.
The Center appointed Marina Perraki as the sole panelist in this matter on September 10, 2020. 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.
Per Complaint, Complainant is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. Complainant was founded in 2003 and today manages 13 free knowledge projects built and maintained by over 123,000 active volunteers. One of the well-known projects managed by Complainant is Wikipedia, which is a free, online encyclopedia, compiled, edited, and maintained by over 123,000 active contributors. Wikipedia is one of the most-visited websites in the world. Complainant’s website, “www.wikipedia.org”, is consistently ranked in the top 10 websites in the world. The WIKIPEDIA mark is well-known worldwide.
Complainant holds trademark registrations consisting of or including the word WIKIPEDIA, such as:
- the United States trademark registration No. 3040722, WIKIPEDIA (word) registered on January 10, 2006, first use in commerce January 13, 2001, for services in international class 41;
- the Indian trademark registration No. 2071101, WIKIPEDIA (word), filed on December 20, 2010, registered on June 16, 2014, for goods and services in international classes 9, 35, 38, 41 and 42;
- the International trademark registration No. 1224858, WIKIPEDIA (word), registered on March 27, 2014, designating inter alia India, for goods and services in international classes 9, 36, 38, 41 and 42; and
- the International trademark registration No. 1226355, WIKIPEDIA (stylized word), registered on April 3, 2014, designating inter alia India, for goods and services in international classes 9, 16, 18, 25, 35, 36, 38, 41 and 42.
Complainant is also the owner of several domain name registrations for WIKIPEDIA, including <wikipedia.com> and <wikipedia.org>.
The Domain Name was registered on March 11, 2017 and at a time close to the filing of the Complaint, it lead to a website (the “Website”) offering paid services for the creation and maintenance of a Wikipedia page, as well as editing of texts for Wikipedia.org. Per the Website: “Navigating the notoriously complex rules of Wikipedia requires extensive expertise. We only accept assignments which meet Wikipedia Notability criteria and our billing rates range from $150 to $1500, depending on complexity of the task. Whereas a few hours of work suffice for creating a short profile based on a few sources, larger assignments involve multiple profiles in multiple languages, based on numerous sources and may add up to hundreds of hours of work”.
Currently, the Domain Name redirects to the website “www.wikieditorsforhire.com”, which appears to be identical to the Website, offering paid Wikipedia.org pages creation and editing services and showing as contact email address, an address consisting of the Domain Name.
On September 24, 2018, Complainant sent a cease and desist letter to Respondent, to which Respondent did not reply.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
In its July 2, 2020 email communication to the Center, Respondent admitted to being unable to pay a settlement fee, claimed to be unaware of any copyright issues related to the Domain Name, and to be in communication with the Registrar to “close” the Domain Name.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name incorporates Complainant’s trademark WIKIPEDIA in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the word “experts” does not avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the WIKIPEDIA mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Name. On the contrary, Respondent admitted to be willing to “close” the Domain Name.
As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notification of the Complaint, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to the Website offering a service which is an adjunct to Complainant’s own services and containing content that suggested falsely that it was that of an affiliated entity or authorized partner of Complainant.
Per Complainant, Respondent is not an affiliated entity or an authorised partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website.
A distributor, reseller or service provider, can make a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wikimedia Foundation, Inc. v. Domain Manager, USA Domain Manager, WIPO Case No. D2014-0920; WIPO Overview 3.0 , section 2.8.1 ): (i) respondent must actually be offering the goods or services at issue; (ii) respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Website did not contain any disclaimer or disclosure of Respondent’s lack of relationship with Complainant; on the contrary, it reproduced, without authorization by Complainant, Complainant’s trademark.
Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; WIPO Overview 3.0 , section 2.5 ).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name 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 that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name 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; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Complainant’s WIKIPEDIA trademark is extremely well-known, as repeatedly recognized (Wikimedia Foundation, Inc. v. Domain Administrator, PrivacyGurdian.org / John Ray, WIPO Case No. D2019-0010; Wikimedia Foundation, Inc. v. Syuzanna Nesterova, WIPO Case No. D2018-1454; Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911; Wikimedia Foundation, Inc. v. Abid Karmali, WIPO Case No. D2018-0708). Because the WIKIPEDIA trademark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name. This also in view of the nature of Complainant’s business, namely an online encyclopedia.
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s marks had goodwill and reputation when the Domain Name was registered.
Furthermore, the Website’s content related to the Domain Name was targeting Complainant’s trademark, as it displayed Complainant’s trademark and offered services adjunct to those of Complainant. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users were likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367). This also further supports knowledge of Complainants and their field of activity.
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a Website, which displayed Complainant’s registered trademark, thereby giving the false impression that it was operated by a company affiliated to Complainant or an authorised partner of Complainant. The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This supports the finding of bad faith use (Wikimedia Foundation, Inc. v. Domain Manager, USA Domain Manager, supra and WIPO Overview 3.0, section 3.1.4).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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 <wikipediaexperts.com> be transferred to Complainant.
Date: September 24, 2020
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