DECISION
World Wrestling Entertainment, Inc. v. Jon Trosky
Claim Number: FA2110001969920
PARTIES
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Jon Trosky (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwe.lgbt>, registered with Name.com, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 20, 2021; the Forum received payment on October 20, 2021.
On October 20, 2021, Name.com, Inc. confirmed by e-mail to the Forum that the <wwe.lgbt> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwe.lgbt. Also on October 21, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 10, 2021.
An Additional Submission was received from Complainant and determined to be complete on November 10, 2021.
On November 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant, World Wrestling Entertainment, Inc., is an entertainment company providing family-friendly content on a variety of platforms. Complainant maintains registrations in the WWE mark with the United States Patent and Trademark Office (USPTO) and with authorities in China, Hong Kong, and the European Union. See Compl. Annx. 3. The disputed domain name, <wwe.lgbt> is identical or confusingly similar to Complainant’s WWE mark because it wholly incorporates Complainant’s WWE mark merely adding in the “.lgbt” generic top-level domain (“gTLD”) to form a domain name.
2. Respondent does not have any rights nor legitimate interests in the <wwe.lgbt> domain name because Respondent has not received any license to use Complainant’s WWE mark. Despite Respondent’s assertion of its affiliation with Complainant, Respondent has never had any formal longstanding contractual association with Complainant. Respondent is not using the <wwe.lgbt> domain name in connection with a bona fide offering of good or services nor for a legitimate noncommercial or fair use because Respondent sells counterfeit goods on its own website.
3. Respondent registered and uses the <wwe.lgbt> domain name in bad faith because used the <wwe.lgbt> domain name to market, advertise, and sell competing products and services thus attracting users for Respondent’s own commercial gain creating a likelihood of confusion with Complainant’s association with the <wwe.lgbt> domain name. Respondent acted with actual knowledge of Complainant’s rights in the WWE mark.
B. Respondent
1. Respondent, Jon Trosky, identifies himself as a former performer associated with Complainant. Respondent contends that he did not register the <wwe.lgbt> domain name in bad faith because Respondent is known as being affiliated with Complainant, and is a member of the LGBT community, and uses the <wwe.lgbt> domain name to promote LGBT messaging within the pro wrestling industry. Respondent argues that he is able to exercise his First Amendment rights through use of the <wwe.lgbt> domain name.
FINDINGS
1. Respondent’s <wwe.lgbt> domain name is confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wwe.lgbt> domain name.
3. Respondent registered or used the <wwe.lgbt> domain name in bad faith.
DISCUSSION
PRELIMINARY ISSUE: NON-UDRP LEGAL ARGUMENTS
Respondent argues various legal points pursuant to The First Amendment to the Constitution of the United States of America as they may apply to Respondent’s Free Speech use in the <wwe.lgbt> domain name. The instant dispute is governed by the UDRP. While Policy ¶ 4(k) may allow the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by Respondent with respect to constitutional law.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant argues that the <wwe.lgbt> domain name is identical or confusingly similar to Complainant’s WWE mark because it wholly incorporates Complainant’s mark merely adding in a gTLD to form a domain name. The addition of a gTLD is insufficient to differentiate a complainant’s mark from a respondent’s domain name under Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). Here, Complainant argues that the gTLD added here is “.lgbt”. Therefore, the Panel finds that the <wwe.lgbt> domain name is identical or confusingly similar to Complainant’s WWE mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant first argues Respondent does not have any rights or legitimate interests in the <wwe.lgbt> domain name because the Respondent is not commonly known by the wwe.lgbt> domain name nor is Respondent authorized to use Complainant’s WWE mark. Evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where a respondent incorporates a famous mark and where a respondent is not authorized to use a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also Amazon Technologies, Inc. v. Hari Kishan / Amazon Web Solution, FA 1726257 (Forum May 15, 2017) (“It does not make it clear that there is no commercial connection with Complainant, whose use of the famous mark AMAZON, preceded Respondent’s use. This use is confusing. As such it cannot amount to the bona fide offering of goods and services.”). Complainant has registered its WWE mark in over 60 countries where it sells physical goods bearing the mark and other intellectual property associated with its world-renowned entertainment. Complainant asserts that it has not granted Respondent a license or consent to use Complainant’s WWE mark. Therefore, the Panel finds that Respondent is not commonly known by the <wwe.lgbt> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <wwe.lgbt> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent sells counterfeit goods. Use of a domain name to sell counterfeit goods may be an indication of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). The <wwe.lgbt> domain name redirects users to Respondent’s Facebook page where Respondent offers for sale counterfeit products bearing Complainant’s WWE marks without Complainant’s authorization. See Compl. Annex 8. Therefore, the Panel finds that Respondent is not using the <wwe.lgbt> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Despite Respondent’s assertion of its affiliation with Complainant, Complainant further asserts, in its additional submission, that Respondent does not have any rights or legitimate interests in the <wwe.lgbt> domain name because Respondent has never been in any formal longstanding contractual association with Complainant. A lack of rights or legitimate interest may be found, under Policy ¶ 4(a)(ii), where a respondent may have formerly been associated with a complainant but no longer has such relationship. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark). Here, while Respondent may have had some affiliation with Complainant, Respondent no longer continues any contractual relationship with Complainant. Therefore, Respondent does not have any rights or legitimate interests in the <wwe.lgbt> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues Respondent registered and uses the <wwe.lgbt> domain name in bad faith because Respondent uses the <wwe.lgbt> domain name to sell counterfeit goods bearing Complainant’s WWE mark. Use of a domain name to sell counterfeit products may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, Respondent’s domain name redirects users to a Facebook page that sells products that bear Complainant’s WWE mark. See Compl. Annx. 8. Complainant asserts that Respondent is not authorized to sell such products. Therefore, the Panel finds that Respondent registered and uses the <wwe.lgbt> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent acted with actual knowledge of Complainant’s rights in the WWE mark. Actual knowledge may be found where a respondent uses a well-known mark of another and uses that mark to sell related products. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the WWE mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant is known worldwide for providing wrestling entertainment and has registered its mark with multiple authorities. See Compl. Annx. 3, 5, and 6. Respondent uses Complainant’s mark to sell products. See Compl. 8. Therefore, the Panel finds that Respondent acted with actual knowledge of Complainant’s rights in the WWE mark, thus acting in bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwe.lgbt> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
November 24, 2021
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