Wikimedia Foundation, Inc. v Wiki Proficiency

WIPO Case No. D2024-4068

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Wikimedia Foundation, Inc. v. Wiki Proficiency

Case No. D2024-4068

1. The Parties

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

Zacco Sweden AB, Sweden.

The Respondent is Wiki Proficiency, United States.

2. The Domain Names and Registrar

The disputed domain names <wikiproficiency.co>, <wikiproficiency.com>, <wikiproficiency.info>,

<wikiproficiency.net>, and <wikiproficiency.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2024. On October 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 3, 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 (“Registration Private”) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2024, 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 October 7, 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 Respondent of the
Complaint, and the proceedings commenced on October 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Parties of the Respondent’s default on November 1, 2024.

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 8, 2024. 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 an American non-profit organization established in 2003 that manages several projects
to disseminate free, multilingual information online including Wikipedia, Wikimedia Commons, and Wikinews.

The content on these projects is generated by volunteer contributors around the world.

It is the proprietor of more than 450 registrations for its WIKIPEDIA trademark in numerous countries,
including United States Trademark Registration No. 3040722 for WIKIPEDIA (word mark), registered on

January 10, 2006, for services in class 41, claiming a date of first use in 2001.

The Complainant is also the proprietor of United States Trademark Registration No. 4710546 for its “puzzle

globe logo”, with a verbal element of “W”, namely:

registered on March 31, 2015 for goods and services in classes 9, 16, 18, 25, 35, 36, 38, 41, and 42 claiming

first use in 2010.

The Complainant operates the Wikipedia online user-populated reference resource at the domain name
<wikipedia.org>, which it registered on January 13, 2001. It has also registered a number of domain names
containing a “wiki” element, including <wikiworkshop.org>, <wikidata.org>, <wikiguide.org>,
<wikifunctions.org>, <wikinotifications.org>, <wikinews.org>, and <wikistats.org>.

The disputed domain name <wikiproficiency.com> was registered on December 3, 2021. The disputed domain names <wikiproficiency.co>, <wikiproficiency.info>, <wikiproficiency.net>, and <wikiproficiency.org> were registered on September 12, 2022.

At the time of the Complaint, the disputed domain name <wikiproficiency.com> resolved to a website entitled

“Wikipedia Page Creator.” The website stated “Professional Wikipedia Page Creation & Article Writing.

Accelerate Recognition & Establish Credibility.” The website invited Internet users to purchase the services

of “Professional Wikipedia writers”, provided information on the offered services, and featured photographs,
bright graphics, client testimonials and contact information. A website with similar content but a different
graphic design, including an animated gray turning globe on the home page, was active at the time of this
Decision.

The record contains evidence that the disputed domain name <wikiproficiency.net> previously redirected to the “Wikipedia Page Creator” website. At the time of this Decision, it resolved to a parking page.

At the time of the Complaint, the disputed domain names <wikiproficiency.info> and <wikiproficiency.co>
resolved to websites featuring pay-per-click (“PPC”) links. Also at that time, the disputed domain name

<wikiproficiency.org> resolved to a landing page featuring the WIKIPEDIA mark, logo and tagline “The Free

Encyclopedia.” These pages had all been disabled by the time of this Decision.

No other information is available about the Respondent.

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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 its WIKIPEDIA mark is world famous. All the domain names registered by the Complainant contain the term “wiki,” which is closely associated with the Complainant. The term “wiki” comes from a Hawaiian word meaning “quick”. The disputed domain names feature the “wiki” term and the Respondent’s website features the Complainant’s WIKIPEDIA mark and “puzzle globe” mark and purports to offer writing services specifically for Wikipedia users. The disputed domain names are also

confusingly similar to the Complainant’s WIKIMEDIA mark. The Respondent is not affiliated with or

authorized by the Complainant to use its marks, nor is the Respondent known by the disputed domain

names. The use of the Complainant’s famous mark in the disputed domain names was intended to misdirect
Internet traffic intended for the Complainant, thereby generating revenue for the Respondent. The disputed
domain names are being passively held in bad faith, or redirect to parking pages featuring PPC links, or to a
website offering services to Wikipedia users. This website states that it is operated by “Wikipedia Certified
Moderators,” which is false. The website does not clearly disclaim the lack of a relationship between the

Parties and leaves the impression that the Respondent is in some way connected to the Complainant.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

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

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)      the Respondent has registered and is using the disputed domain names in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark, namely, the WIKIPEDIA and figural W mark, for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the “wiki” feature of the WIKIMEDIA mark is recognizable within the disputed domain names.
In addition, the Panel notes that the website to which <wikiproficiency.com> resolves features the

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Complainant’s WIKIPEDIA mark; the landing page to which <wikiproficiency.org> previously resolved

features the Complainant’s “W” figural “puzzle globe” mark. Accordingly, the Panel finds that the disputed

domain names are confusingly similar to these marks for the purposes of the Policy. WIPO Overview 3.0,

section 1.7.

Although the addition of other terms (here, “proficiency”) may bear on assessment of the second and third
elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity
between the disputed domain names and the Complainant’s marks for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

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 names such as those enumerated in the Policy or otherwise.

In respect of the disputed domain names <wikiproficiency.com> and <wikiproficiency.net>, which have or continue to resolve to a website on which the Respondent offers writing services for Wikipedia page creators, the Panel considered whether the Respondent could be considered as engaging in nominative (fair) use as a reseller or distributor of the Complainant’s services, which would support a finding of rights or legitimate interests. Having reviewed the record and the Respondent’s active website, however, the Panel concludes that such a finding is not supported. In particular, the Panel notes that the Respondent’s website fails to disclaim the lack of a relationship with the Complainant. Rather, the Respondent claims to have “a brilliant understanding of Wikipedia’s structure,” misleading Internet users. For that reason, the Panel finds that the Respondent did not engage in fair use in these cases. WIPO Overview 3.0, section 2.8.

In respect of the disputed domain names <wikiproficiency.info> and <wikiproficiency.co>, which previously resolved to pages featuring PPC links, the Panel finds that, under the circumstances and in light of the common ownership and identical composition to the other disputed domain names, such use does not represent a bona fide offering of goods or services. WIPO Overview 3.0, section 2.9. The Panel notes that neither the disputed domain names nor the links are dictionary terms.

The disputed domain name <wikiproficiency.org” resolved to a landing page displaying the Complainant’s

“puzzle globe” “W” device mark with no explanation of the Parties’ relationship. The Panel finds that such

use of the Complainant’s mark cannot establish rights or legitimate interests. WIPO Overview 3.0 2.13.1.

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

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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 Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The disputed domain names were registered approximately 15 years after the Complainant registered

its WIKIPEDIA mark. While the composition of the disputed domain names reflects only the “wiki” element of

the Complainant’s mark, the contents of the websites associated with a majority of the disputed domain names clearly indicate that the Respondent sought to create the appearance of an association with the Complainant. In respect of <wikiprofiiency.org>, the display of the Complainant’s device mark similarly implies a connection to the Complainant. The disputed domain names <wikiproficiency.co>,

<wikiproficiency.info> are identical to the Respondent’s other domain names. Under these circumstances,
the Panel finds that the Respondent registered all the disputed domain names in bad faith. WIPO Overview,
3.1.

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.

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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

The Panel finds that the use of the disputed domain names to resolve to websites featuring the Complainant’s mark, offering services directly related to the Complainant’s services but failing to disclose that the services are unrelated to the Complainant is conduct indicative of bad faith. WIPO Overview 3.0, section 3.1.1. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

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 names <wikiproficiency.co>, <wikiproficiency.com>, <wikiproficiency.info>, <wikiproficiency.net> and <wikiproficiency.org> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: November 22, 2024