Wikimedia Foundation, Inc. v Ahmed Ali, Mercury Digital
WIPO Case No. D2024-5078
•05-02-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Wikimedia Foundation, Inc. v. Ahmed Ali, Mercury Digital; Mercury Digital;
Joseph Lewis, Ecommerce Company; Andrew Ellis, WikiMakers;
Muhammad Ali Khalid; Muhammad Ali Khalid, WikiExperts
Case No. D2024-5078
1. The Parties
The Complainant is Wikimedia Foundation, Inc., United States of America (“U.S.”), represented by Zacco
Sweden AB, Sweden.
The Respondents are Ahmed Ali, Mercury Digital, U.S. (the “First Respondent”); Mercury Digital, U.S. (the
“Second Respondent”); Joseph Lewis, Ecommerce Company, U.S. (the “Third Respondent”); Andrew
Ellis, WikiMakers, Pakistan (the “Fourth Respondent”); Muhammad Ali Khalid, Pakistan (the “Fifth
Respondent”); Muhammad Ali Khalid, WikiExperts, Pakistan (the “Sixth Respondent”).
2. The Domain Names and Registrars
The disputed domain names <thewikieditors.net>, <thewikipublisher.com>, and <thewikistudio.net> are registered with GoDaddy.com, LLC.
The disputed domain name <thewikistudio.co> is registered with NameCheap, Inc.
The disputed domain names <wiki-experts.com>, <wikiexpertsinc.net>, and <wikiexpertsinc.org> are registered with Squarespace Domains II LLC.
The disputed domain name <wikiexpertsinc.com> is registered with Dominet (HK) Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. Also on December 10, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY/PRIVACY SERVICE PROVIDERS) and contact information in the Complaint.
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The Center sent an email communication to the Complainant on December 13, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amendment to the Complaint on December 18, 2024.
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 Respondents of the Complaint, and the proceedings commenced on December 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2025. On December 28, 2024, the Center received a submission by J.C. regarding the former disputed domain name <wikiexperts.com>, essentially enquiring about the proceeding. On January 4, 2025, the Complainant requested the former disputed domain name <wikiexperts.com> to be withdrawn from this proceeding. The Respondents did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on January 20, 2025.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on January 22, 2025. 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 is a nonprofit charitable organization focused on the growth, development, and distribution of free, multilingual, educational content. The Complainant was founded in 2003 and currently manages 14 free knowledge projects built and maintained by many thousands of volunteers, including Wikipedia (an
online encyclopedia), Wikimedia Commons (a shared media repository), and Wikinews (a new source). The organizations, and 146 user groups in over 38 countries. The Complainant operates a number of domain names that incorporate its WIKIPEDIA marks, including <wikipedia.org> and <wikipediaarticle.org>.
The Complainant owns a large international trademark portfolio for “WIKIPEDIA”, which, according to its
statements, comprises 111 jurisdictions around the world, including, but not limited to the following
registrations: U.S. Trademark Registration for the mark WIKIPEDIA, registration number 3040722,
registered on January 10, 2006; U.S. Trademark Registration for the mark WIKIPEDIA, registration number
3505429, registered on September 23, 2008 and U.S. Trademark Registration for the mark WIKIPEDIA,
registration number 3773952, registered on April 13, 2010. The Complainant also cited a number of prior
UDRP panel decisions finding the WIKIPEDIA marks to be distinctive and well known (e.g., Wikimedia
Foundation, Inc. v. Salamuddin Shaikh, WIPO Case No. D2020-1456, and Wikimedia Foundation, Inc. v.
Milen Radumilo, WIPO Case No. D2019-0009).
The disputed domain names relevant to this proceeding (namely <thewikistudio.co>, <thewikistudio.net>,
<thewikieditors.net>, and <thewikipublisher.com>, see paragraph 6.1 below), were registered between May
23, 2024 and July 16, 2024. At the time of filing the Complaint, the disputed domain names (apart from
<thewikistudio.co>) resolved to various websites prominently displaying the WIKIPEDIA marks and offering
different types of commercial branding and reputation services relating to the Complainant’s WIKIPEDIA-
branded encyclopedia platform. At the time of filing the Complaint, the disputed domain name
<thewikistudio.co> did not direct to an active website.
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5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
Notably, the Complainant contends that it is the owner of a number of registered trademarks consisting of WIKIPEDIA and that it has a strong worldwide reputation for its services offered under this trademark. The Complainant asserts that the disputed domain names are confusingly similar to the abovementioned trademarks since they each contain the dominant and distinctive elements of such trademarks, being “wiki”. The Complainant also argues that the Respondents have no rights or legitimate interests in respect of the disputed domain names as there is no indication that the Respondents are commonly known by the disputed domain names, nor do the Respondents have a license or any sort of permission from the Complainant to use the Complainant’s marks in domain names. Additionally, the Complainant argues that the Respondents are not making legitimate noncommercial or fair use of the disputed domain names, essentially because the disputed domain names direct Internet users to webpages offering commercial services by reference to the Complainant’s marks, without using any appropriate disclaimer as to the lack of connection or origin of those services. The Complainant also contends that the facts of this case mean that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or location or of a product or service on such website or location. The Complainant effectively argues that such use of the disputed domain names does not confer rights or legitimate interests on the Respondents and constitutes registration and use in bad faith of the disputed domain names.
B. Respondent
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Consolidation: Multiple Respondents
The amendment to the Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the
multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
In the present case, the Complainant essentially argues that the disputed domain names are under common control based on the following factual elements: some of the disputed domain names are owned by a company named “Mercury Digital”. The Complainant adds that the remaining disputed domain names are connected to different registrants, even though some share an email address and two are owned by the same individual, namely Muhammad Ali Khalid. However, the Complainant also states that all but
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<wikiexpertsinc.com> redirect to the same website, namely <wikiexperts.com>. The Complainant therefore argues that these are likely connected to each other. Furthermore, the Complainant essentially argues that as to the relationship between the disputed domain names containing a variation on “wiki experts” and the
domains owned by Mercury Digital, these are likely under common control as well. The Complainant
highlights that first of all, all of them use “wiki” and have at some point referred to very similar paid editing
services relating to the Complainant’s mark and website. Furthermore, several of them use similar fake
addresses in California. On this basis, the Complainant argues that it is likely that the disputed domain
names are under common control.
However, the Panel finds that these factors, considered alone or in combination, do not sufficiently support
the Complainant’s claim that there is common control being exercised by the Respondents over all of the
disputed domain names, but rather some of them. The Panel particularly notes the following facts: there
are very few similarities amongst the websites to which the disputed domain names direct, apart from the
fact that most of the disputed domain names provide roughly similar types of services, which are, however
not at all unique services, a simple Internet search shows that there are a plethora of seemingly unrelated
companies offering such services online; there are no clear similarities between the First and Second
Respondent’s and any of the other Respondents’ identities, addresses and contact information to render a
clear link; most of the disputed domain names were registered on different dates and with different
Registrars. The Panel also highlights that only the former disputed domain name <wikiexperts.com>, to
which several of the other disputed domain names redirect (namely <wiki-experts.com>,
<wikiexpertsinc.org>, and <wikiexpertsinc.net>), and which according to the Complainant’s own arguments
were therefore clearly under common control, was withdrawn from this proceeding upon explicit request by
the Complainant, as filed with the Center on January 4, 2025. The Panel therefore notes that this
withdrawal of only one disputed domain name to which several other disputed domain names redirect,
seems clearly inconsistent with the Complainant’s own arguments that all other disputed domain names are
under common control. Based on the above elements, the Panel finds that the Complainant has not
demonstrated that the entire list of disputed domain names is all under common control, or that there is a
clear affiliation between all of the Respondents. Accordingly, having regard to the above circumstances, the
Panel hereby rejects the Complainant’s request for consolidation of all the disputed domain names.
The Panel, however, accepts the Complaint filed in relation to the disputed domain names owned by the since they both have “Mercury Digital” in their registrant and organization name and also have other registration information in common, including the contact email address. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes relating to the First Respondent and Second Respondent would be unfair or inequitable to any Party. The Complainant can file separate proceedings on those that are not consolidated. The Panel will therefore confine its Decision accordingly to the disputed domain names registered by the First Respondent and Second Respondent only.
The Panel notes that the Complainant remains at liberty to file a new complaint in respect of the other disputed domain names and that this Decision is without prejudice to any such potential future complaint.
Further references below in this Decision to the “Respondent” and the “disputed domain names” are therefore intended to refer solely to the First and Second Respondent jointly, and to the disputed domain names remaining in this proceeding, namely <thewikistudio.co>, <thewikistudio.net>, <thewikieditors.net>, and <thewikipublisher.com>.
6.2 Findings on the Merits
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
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The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The Panel finds the mark WIKIPEDIA is recognizable within the disputed domain names. The Panel also finds that term “wiki” is a distinctive element and the common abbreviation of the Complainant’s trademark WIKIPEDIA, see in this regard also prior decisions under the UDRP including Wikimedia Foundation, Inc. v.
Joseph lewis, Ecommerce Company; Kevin Lesnar, Infinity Project Manager; Soft Fellow, WIPO Case No. D2024-2343. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
Moreover, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Instead, upon review of the facts and the evidence submitted in
Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Given the abovementioned elements, the Panel concludes that the Respondent’s use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.
this proceeding, the Panel notes that the disputed domain names (except for <thewikistudio.co>) directed to between the Complainant and the Respondent. It is clear to the Panel from the foregoing elements that the Respondent could not be considered a good faith provider of goods or services under the disputed domain names, see also
various websites prominently displaying the WIKIPEDIA marks and offering different types of commercial
branding and reputation services relating to the Complainant’s WIKIPEDIA-branded encyclopedia platform.
Furthermore, the Panel notes that the disputed domain name <thewikistudio.co> directs to an inactive or blank webpage. In this regard, the Panel finds that holding this disputed domain name merely passively in this proceeding, without making any use of it, also does not confer any rights or legitimate interests in this disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP
S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).
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Finally, the Panel also finds that the nature of the disputed domain names, being confusingly similar to the Complainant’s internationally well-known trademarks and directing to websites where the Respondent was offering commercial services by reference to the Complainant’s well-known trademark, creates a risk of
Internet confusion.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
| Panel finds that the subsequent registration of the disputed domain names, which are confusingly similar to | Given the intensive use, fame and distinctiveness of the Complainant’s prior well-known trademarks, the efforts to consciously target the Complainant’s well-known prior trademarks that the Respondent knew of the existence of the Complainant’s trademarks at the time of registering the disputed domain names. This finding is further confirmed by the fact that the disputed domain names (except for <thewikistudio.co>) all resolved to active websites prominently displaying the WIKIPEDIA marks and offering different types of commercial branding and reputation services relating to the Complainant’s WIKIPEDIA-branded encyclopedia platform, since this proves that the Respondent was fully aware of the Complainant, its marks and its business. In the Panel’s view, the foregoing elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith. |
| As to use of the disputed domain names in bad faith, the Complainant provides evidence that the use of the disputed domain names (except for <thewikistudio.co>), which were linked to active websites prominently displaying the WIKIPEDIA marks and offering different types of commercial branding and reputation services relating to the Complainant’s WIKIPEDIA-branded encyclopedia platform, showed the Respondent’s clear intent to create a likelihood confusion with the Complainant for commercial gain. The Panel concludes from these facts that the Respondent has intentionally attracted Internet users for commercial gain to such websites, by creating consumer confusion between the websites associated with the disputed domain names and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been demonstrated that the Respondent has used and is using these disputed domain names in bad faith. | |
| Moreover, the Panel notes that on the date of this Decision the disputed domain name <thewikistudio.co> directs to an inactive, error or blank webpage. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel notes the distinctiveness and well-known nature of the Complainant’s trademarks, the composition of the disputed domain name which makes it inconceivable that the Respondent may use them for any future good faith use, and the Respondent’s use of the other disputed domain names and finds that in the circumstances of this case the passive holding of the disputed domain name <thewikistudio.co> does not prevent a finding of bad faith under the Policy. WIPO Overview 3.0, section 3.3. | |
| The Panel finds that the Complainant has established the third element of the Policy. |
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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 names namely <thewikistudio.co>, <thewikistudio.net>,
<thewikieditors.net>, and <thewikipublisher.com> be transferred to the Complainant.
The Complaint is denied for the disputed domain names <wikiexpertsinc.com>, <wikiexpertsinc.org>,
<wiki-experts.com> and <wikiexpertsinc.net>), without prejudice to any potential future complaint.
/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: February 5, 2025
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