Wikimedia Foundation, Inc. v Praveen Kumar, Mercury Digital, jeetendra

WIPO Case No. D2024-5346

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Praveen Kumar, Mercury Digital, jeetendra
patel

Case No. D2024-5346

1. The Parties

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

Zacco Sweden AB, Sweden.

The Respondents are Praveen Kumar, India; Mercury Digital, United States; jeetendra patel, India.

2. The Domain Names and Registrars

The disputed domain names <eu-wikipedia.com> and <wikipedia-admin.org> are registered with
GoDaddy.com, LLC. The disputed domain name <inwikipedia.com> is registered with Realtime Register
B.V. GoDaddy.com, LLC and Realtime Register B.V. are collectively hereinaf ter referred to as “the

Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2024, regarding the disputed domain names and other six domain names. On January 2, 2025, the Center transmitted respectively by emails to the Registrars requests for registrar verification in connection with the disputed domain names. On January 2 and 10, 2025, the Registrars transmitted respectively by emails to the Center their verif ication responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (withheld for privacy) and contact information in the Complaint. On January 13, 2025, the proceeding was suspended, which led to the withdrawal of one domain name f rom the proceeding as notif ied by the Center on January 29, 2025.

The Center sent an email communication to the Complainant on January 29, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, regarding the disputed domain names and other five domain names, requesting the Complainant to either f ile 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 of the disputed domain names are under common control. On January 29, 2025, the Complainant requested to remove one domain name f rom the proceeding as conf irmed by the Center on January 30, 2025. Upon the Complainant’s

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request, the proceeding was suspended again on January 30, 2025. The Complainant f iled an amendment to the Complaint on February 7, 2025, regarding the disputed domain names and other three domain names because the Complainant is in the settlement process with the registrant for another domain name. On February 20, 2025, the Center conf irmed that the settled domain name had been removed f rom the

proceeding.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 21, 2025, regarding the disputed domain names and other three domain names. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2025. As per the Complainant’s request, the proceedings were suspended on March 11, 2025 for possible settlement purposes, which led to the withdrawal of three domain names through the settlement and upon the Complainant’s request. The proceeding was reinstituted on March 20, 2025, regarding the

disputed domain names, with a new response due date of March 23, 2025. The Respondents did not submit any Response. Accordingly, the Center informed the Parties that it would proceed with panel appointment on March 24, 2025.

The Center appointed Marilena Comanescu as the sole panelist in this matter on April 2, 2025. The Panel
f inds 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.

The Panel notes that the Complaint was initially filed regarding nine domain names. After several removals of the domain names through the settlement and the Complainant’s request, the proceeding now involves three disputed domain names.

4. Factual Background

The Complainant, founded in 2003, is a nonprofit charitable organization dedicated to encouraging growth, development, and distribution of free, multilingual, educational content. The Complainant manages 14 f ree knowledge projects, including (i) Wikipedia, a free online encyclopedia compiled, edited, and maintained by over 115,000 active contributors; (ii) Wikimedia Commons, a shared media repository containing over 100 million freely usable images, sound files, and video files; and (iii) Wikinews, a source for free content news.

The Complainant holds more than 400 trademark registrations, including the WIKIPEDIA trademark, in numerous jurisdictions worldwide, including:

- the United States Registration No. 3040722 for WIKIPEDIA (word), filed on September 14, 2004, registered

on January 10, 2006, covering services in International class 41;

- International Trademark Registration No. 839132 for WIKIPEDIA (word), registered on December 16, 2004,
covering services in International class 41; and

- International Trademark Registration No. 1226355 for WIKIPEDIA (stylized word), registered on April 3, 2014, designating numerous jurisdictions including India, and covering goods and services in International classes 9, 16, 18, 25, 35, 38, 41, and 42.

The Complainant holds domain names including the WIKIPEDIA trademark, such as <wikipedia.org> registered on January 13, 2001, or <wikipediaarticle.org>.

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The disputed domain names were registered as follows:

- the disputed domain name <eu-wikipedia.com> was registered on August 28, 2024;
- the disputed domain name <wikipedia-admin.org> was registered on August 15, 2024; and

- the disputed domain name <inwikipedia.com> was registered on August 17, 2023.

At the time of filing the Complaint, the disputed domain names were used as follows:

- the disputed domain name <eu-wikipedia.com> was used to redirect to a website that copies the look-and-
feel of the Complainant’s website at the domain name <wikipedia.org>;
- the disputed domain name <wikipedia-admin.org> was used to redirect to the Complainant’s website at the
domain name <wikipedia.org>; and

- the disputed domain name <inwikipedia.com> was not actively used, directing to an error page.

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 the WIKIPEDIA trademarks are extremely well known within the United States and through the world and listing UDRP decision confirming this status; the disputed domain names are confusingly similar to its trademark because they incorporate the distinctive WIKIPEDIA

trademark in its entirety with other additional terms; the Respondents have no rights or legitimate interests in the disputed domain names; the disputed domain names have been registered in bad faith, the widespread recognition of the Complainant’s WIKIPEDIA trademark suggests that the Respondents were well

acquainted with the Complainant’s mark when registering the disputed domain names; the Respondents have used the disputed domain names in bad faith, namely: (i) a sub-page of the disputed domain name <eu-wikipedia.com> redirects users to a counterfeit site that impersonates the Complainant’s site, (ii) the disputed domain name <wikipedia-admin.org> redirects users to the Complainant’s official site, whereas (iii) the disputed domain name <inwikipedia.com> is kept inactive.

B. Respondents

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

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Consolidation of Multiple Respondents

The amendment to the Complaint was f iled in relation to nominally dif ferent 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.

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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.

As regards common control, the Complainant submits that, it has reasons to believe that all the disputed domain names are associated with a larger organization that uses shell companies working as f ront for a hub. Further, the Complainant states that various disputed domain names have similarities, such as the domain strings, use as copycat version of the Complainant’s website, and that “Mercury Digital” is also involved in other UDRP cases.

The Panel f inds that the evidence and arguments submitted by the Complainant do not suf f iciently demonstrate that the three disputed domain names are under common control and/or the dif ferent Respondents are somehow connected to each other. The fact that two of the disputed domain names have

registrants that are both from India, or that another two of the disputed domain names were registered with the same Registrar, do not demonstrate common control. The Complainant did not provide any satisfactory evidence to prove that any of the disputed domain name is connected to the other two disputed domain names. The three disputed domain names do not share sufficient similarities or pattern of irregularities, have dif ferent dates of registration and dif ferent website contents.

It also does not assist the Complainant’s position that the Complaint originally included a total of nine domain names, of which six have been removed f rom the Complaint mainly due to various settlements with the dif ferent registrants for different domain names, which was ultimately contradicted to the purported common control.

Accordingly, the Panel decides to not consolidate the disputes regarding the three disputed domain names in a single proceeding.

Accordingly, the proceeding is dismissed regarding <wikipedia-admin.org> and <inwikipedia.com>, without prejudice to the f iling of new complaints regarding these two disputed domain names.

In the remainder of this decision, the term “the disputed domain name” refers to <eu-wikipedia.com> and the term “the Respondent” refers to Praveen Kumar, India.

6.2. Substantive Issue: Three Elements

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(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 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

It is well accepted that the f irst 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, section 1.7.

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.

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The Panel f inds the mark WIKIPEDIA is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other term, here “eu” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such elements does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst 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 of ten 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 name. 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.

According to the evidence provided in the Complaint, the Respondent has used the disputed domain name in connection with a website that impersonates the Complainant’s official website. Panels have held that the use of a domain name for illegal activity (e.g., impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered in bad faith, with knowledge of the Complainant and its trademark particularly because it incorporates the Complainant’s trademark, and an additional term “eu” (commonly referring to “European Union”), and the Complainant’s trademark predates the registration of the disputed domain name by over 20 years and is well known worldwide. Further, the use of the disputed domain name reinforces such f inding.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

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Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

Creating a copycat website of the Complainant’s own website indeed, in this Panel’s view, the Respondent has intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain. At the same time, such use may tarnish the image of the

Complainant and jeopardies the reputation of its trademark.

Also, the use of a domain name for illegal activity such impersonation/passing off can never confer rights or legitimate interests on a respondent and it is considered evidence of bad faith. WIPO Overview 3.0, section 3.4.

The Respondent chose not to participate in these proceedings and has provided incomplete contact information to the relevant Registrar, which may be further signs of bad faith.

The Panel finds that the Complainant has established the third element 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, <eu-wikipedia.com>, be transferred to the Complainant.

The proceeding is dismissed regarding the disputed domain names <wikipedia-admin.org> and
<inwikipedia.com>, without prejudice to the filing of new complaints regarding these two disputed domain

names.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: April 14, 2025