WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Not disclosed Not disclosed, PPA Media Services

Case No. D2020-1460

1. The Parties

The Complainant is Wikimedia Foundation, Inc., United States of America (“United States”), represented by Jones Day, United States.

The Respondent is Not disclosed Not Disclosed, PPA Media Services, Chile.

2. The Domain Name and Registrar

The disputed domain name <wikioedia.org> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 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 disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 11, 2020.

The Center verified that the Complaint, together with the amendment to 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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2020.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 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.

4. Factual Background

Founded in 2003, the Complainant is a nonprofit charitable organization dedicated to encouraging the growth, development, and distribution of free, multilingual, educational content. The Complainant manages 13 free knowledge projects including “Wikipedia”, a free online encyclopedia compiled, edited, and maintained by over 123,000 active contributors, and “Wikimedia Commons”, a shared repository of freely usable media. The Complainant provides technological, legal, fundraising, and administrative support for these projects, which together represent some of the most visited web properties in the world. The Complainant oversees a network of organizations around the world, including “Wikimedia chapters”, which support the Complainant’s mission by collecting donations and organizing local events. There are 39 such chapters covering 38 countries including Wikimedia Chile, where the Respondent is based. The Complainant’s predecessor began the “Wikipedia” project on January 13, 2001, with its registration of the domain name <wikipedia.org>. The Complainant acquired said domain name and related assets from its predecessor upon its establishment in 2003 (see: Wikimedia Foundation, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1705).

The Complainant is the owner of a variety of registered trademarks for the marks WIKIPEDIA and WIKIMEDIA. The Complainant’s earliest registered trademark in respect of the WIKIPEDIA mark appears to be international registered trademark no. 839132, registered on December 16, 2004, in international class 41, designated in respect of the European Union. The Complainant is also the owner of United States registered trademark no. 3040722 for the word mark WIKIPEDIA in international class 41, registered on January 10, 2006. The record for this registration features a first use claim in commerce of January 13, 2001. The Complainant is also the owner of United States registered trademark no. 3324924 for the word mark WIKIMEDIA in international classes 35, 38, 41, and 42, registered on October 30, 2007. The Complainant’s later registered trademarks for the WIKIPEDIA and WIKIMEDIA marks, numbering around 400, cover a variety of additional services and a variety of countries including Chile.

The disputed domain name was created on July 28, 2004. The Respondent, PPA Media Services, has featured as respondent in around 60 proceedings under the Policy and has been described as “a serial cybersquatter” (see, for example: W.W. Grainger, Inc. v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2013-1854). Many of these indicate that the Respondent has regularly engaged in a practice known as “typosquatting”, being the registration and use of a domain name which is a common typographical variant of a third party’s domain name and corresponding trademark with a view to benefitting from the Internet traffic intended for the website associated with such third party domain name (see, for example, Nvidia Corporation v. Fundacion Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2013-1361, Tumblr, Inc. v. Fundacion Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0203, and Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098.

According to screenshots produced by the Complainant, the website associated with the disputed domain name points to a security warning and then appears to attempt to initiate a download of what is claimed to be Adobe Flash Player to the visitor’s computer. In a cease and desist letter to the Respondent dated June 12, 2018, the Complainant’s representatives asserted that said website is associated with downloads of malware.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its WIKIPEDIA and WIKIMEDIA trademarks are unique and proprietary to it and represent its distinctive services. The Complainant notes that this is due to the work of the Complainant and thousands of contributors and volunteers in researching and developing the corresponding reference services throughout the world. The Complainant asserts that said trademarks denote unique and well-known identifiers for its services, citing corresponding findings from panels in previous cases under the Policy, such that when consumers see the disputed domain name, they will likely assume the associated website will direct them to one of the Complainant’s websites. The Complainant claims extensive common law rights in said marks, adding that it has acquired distinctiveness in the WIKIPEDIA trademark since its first use in January 2001 and noting that the existence of such rights has been accepted by numerous panels under the Policy.

The Complainant submits that the disputed domain name contains the full WIKIPEDIA mark and full WIKIMEDIA mark with the mere substitution of the letter “o” or “m” for the letter “p” [the Panel notes in passing that the Complainant’s contention on this substitution is not quite correct in that the letter “o” in the disputed domain name is substituted for the letters “m” or “p” in the Complainant’s corresponding marks and the present Decision proceeds on that basis]. The Complainant goes on to assert that the addition, shifting, or removing of a letter has no distinguishing capacity in reference to the Complainant’s mark, citing Wikimedia Foundation, Inc. v. Milen Radumilo, WIPO Case No. D2019-0009.

The Complainant contends that the Respondent is not a licensee of or otherwise affiliated with the Complainant, that the Respondent is not commonly known by the disputed domain name and that the Complainant has never authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain name. The Complainant submits that the Respondent has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use purpose. The Complainant asserts that the Respondent has registered and is using the disputed domain name to capitalize on Internet users’ misspelling of the Complainant’s <wikipedia.org> domain name, adding that this practice, known as “typo-squatting,” does not create rights or legitimate interests in a domain name.

The Complainant contends that the Respondent did not adopt the disputed domain name in ignorance of the Complainant’s trademarks but was well acquainted with these when the disputed domain name was created in 2004, adding that the Respondent’s failure to reply to the Complainant’s concerns as noted in its cease and desist letter is an indicator of bad faith. The Complainant asserts that the Respondent is trading on the value of the Complainant’s trademarks by typosquatting, adding that numerous Panels have found that this constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

The Complainant notes that the disputed domain name redirects to a security warning purporting to detect viruses and compelling users to download and install software, adding that as the Respondent uses the disputed domain name to redirect to third party websites, the Panel may reasonably infer that the Respondent receives a fee for such redirection. The Complainant points out that a search on WIPO UDRP decisions shows around 60 complaints filed against the Respondent, adding that the Respondent has a history of registration and use of domain names in bad faith and that this is the third UDRP complaint filed by the Complainant against the Respondent involving the sixteenth disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of 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

The Panel is satisfied that the Complainant has rights in the WIKIPEDIA and WIKIMEDIA trademarks, based upon its citation of the registered marks described in the factual background section above. Comparing these to the disputed domain name on a straightforward side-by-side basis, it may be seen that the second level of the disputed domain name is alphanumerically identical to such marks with the exception of a single letter change from “p” to “o” or “m” to “o”, depending upon which trademark one uses for the comparison. The generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and, as such, is disregarded under the first element of the Policy.

Based upon this comparison, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks. The single letter difference does not prevent the finding of confusing similarity, as the Complainant’s marks are still recognizable within the disputed domain name. In these circumstances, the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant.

For the purposes of the first element analysis under the Policy, the Complainant need only show rights in a trademark which are in existence at the time of filing the Complaint. However, it is worth noting that in the present case, the creation date of the disputed domain name pre-dates the Complainant’s portfolio of registered trademarks. As this may be relevant to the analysis in respect of the second and third elements which follow, it is convenient at this point to consider the Complainant’s claim to common law trademark rights in the WIKIPEDIA mark dating from January 2001.

Beyond asserting the existence of such common law rights and mentioning the claimed first use in commerce date of the Complainant’s WIKIPEDIA mark, the Complainant provides no supporting information about the manner in which its common law rights are said to have been established prior to the creation of the disputed domain name on July 28, 2004. It merely asserts that many panels under the Policy have accepted the existence of these rights in cases which it has brought under similar circumstances. An example of such a case is found in Wikimedia Foundation, Inc. v. Milen Radumilo, WIPO Case No. D2019-0009. In that matter, the domain name concerned, <vikipedia.com>, was another single letter variant of the Complainant’s WIKIPEDIA mark, the creation date of which was October 11, 2004. Having set out the various dates and discussed the Complainant’s claim to first use in commerce, the panel stated that it accepted the Complainant’s claim to common law rights preceding the domain name concerned based both on the findings of numerous previous panels in cases involving the Complainant, and the fact that the WIKIPEDIA mark was inherently distinctive, being the original juxtaposition of two words with a different genealogy. The present Panel notes in passing that the term “Wikipedia” appears to have been coined by the Complainant’s predecessor on or before the registration date of its domain name <wikipedia.org> on January 13, 2001.

The panel in Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098, likewise reached a similar conclusion. This case also involved the present Respondent. Five domain names, which were typographical variants of the Complainant’s WIKIPEDIA mark, were the subject of the case. Three of these had been registered before the Complainant’s registered trademark rights came into existence. The panel in that matter observed that the fact that the respondent so obviously sought to “ape” the “Wikipedia” name for commercial purposes itself confirmed the existence of the Complainant’s claimed common law rights at the date of registration of said domain names, adding that it was inconceivable that anyone would have registered any of these were it not the case that at the date(s) of registration there was already in existence a significant reputation and goodwill in respect of the name “Wikipedia”.

In the present case, the Panel is content to adopt the reasoning of the panels in the above-noted decisions, along with those other previous decisions under the Policy involving the Complainant relevant to this issue, as cited in the Complaint, and therefore finds that the Complainant had established common law rights in the WIKIPEDIA mark prior to the date of creation of the disputed domain name.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based on its principal assertion that the Respondent is engaged in a practice known as “typo-squatting”, whereby it has registered and is using the disputed domain name to capitalize on Internet users’ misspelling of the Complainant’s <wikipedia.org> domain name. The Panel agrees with the Complainant’s assertion that such a practice does not create rights or legitimate interests in a domain name.

The Respondent has not engaged with the present administrative proceeding and therefore has put forward no rebuttal of the Complainant’s said prima facie case. On the record before it, the Panel cannot conceive of any submission which the Respondent might have made which would have satisfied the Panel that it had rights or legitimate interests in the disputed domain name. In all of these circumstances, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

It is widely accepted among UDRP panels that for bad faith registration and use to be made out there must be a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743). The existence of such targeting is readily apparent to the Panel in the present case, as likewise is the Respondent’s prior knowledge of the Complainant’s rights in its coined and distinctive WIKIPEDIA trademark. The record shows the Respondent’s selection of a typographical variant of the Complainant’s mark in the disputed domain name, followed by its use to induce visitors to download software upon the display of an alleged security alert. The Panel has no reason to disbelieve the Complainant’s assertion in its cease and desist letter that such software contains malware. In the Panel’s opinion, this constitutes prototypical cybersquatting. What is more, it is clear from numerous previous decisions under the Policy involving the Respondent, as cited by the Complainant, that the Respondent has a lengthy history of abusive domain name registration and use, including having directly targeted the Complainant in a similar manner in the past (see, for example, the conduct described in Wikimedia Foundation, Inc. v. Domain Administrator, Fundacion Private Whois / Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-0967, Wikimedia Foundation, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1098, and Wikimedia Foundation, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2015-1705).

The Respondent has not replied to the Complainant’s allegations of bad faith conduct, nor can the Panel identify any likely case which the Respondent might have put forward to indicate that its registration and use of the disputed domain name was consistent with any good faith activity. Accordingly, in all of the above circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.

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 <wikioedia.org> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: July 24, 2020