World Wrestling Entertainment, Inc. v. None / xiuying zhong
Claim Number: FA1204001439586
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is None / xiuying zhong (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwe-shops.com>, registered with UK2 Group Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 16, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 17, 2012, UK2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwe-shops.com> domain name is registered with UK2 Group Ltd. and that Respondent is the current registrant of the name. UK2 Group Ltd. has verified that Respondent is bound by the UK2 Group Ltd. 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2012 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-shops.com. Also on April 19, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the WWE mark in the United States and Australia. Respondent did not submit a Response in this proceeding.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant provides the Panel with copies of its USPTO trademark registration certificates for its WWE mark (e.g., Reg. No. 2,772,683 registered October 7, 2003) and evidence of its IPA trademark registration (Reg. No. A916077 registered June 11, 2002). The Panel finds that Complainant’s USPTO and IP Australia trademark registrations are evidence that Complainant holds rights in its WWE mark for the purpose of Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant contends that Respondent’s <wwe-shops.com> domain name is confusingly similar to Complainant’s WWE mark. Complainant argues the disputed domain name contains Complainant’s entire mark and the generic term “shops.” The disputed domain name also contains a hyphen and the generic top-level domain (“gTLD”) “.com.” The Panel therefore finds that the disputed domain name is not adequately distinguished from the mark and is thus confusingly similar under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the disputed domain name and that Complainant did not authorize Respondent to use the WWE mark. The WHOIS information identifies “PrivacyProtect.org” as the current registrant of the disputed domain name. Because Respondent failed to submit a Response indicating that it is commonly known by the disputed domain name, the Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not using the <wwe-shops.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that the disputed domain name resolves to a website that sells counterfeit versions of Complainant’s goods. The Panel therefore finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the <wwe-shops.com> domain name for the purpose of disrupting Complainant’s business by diverting potential customers searching for Complainant’s WWE products and website to Respondent’s website. Complainant contends that Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products, which inevitably competes with Complainant’s actual products. Because the Panel finds that the sale of counterfeit products is undoubtedly disrupting Complainant’s business, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Sketchers U.S.A., Inc. and Sketchers U.S.A., Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name); see also Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent registered and uses the <wwe-shops.com> domain name for commercial gain by selling counterfeit products to Internet users which creates a likelihood of confusion with Complainant’s WWE mark. The sale of unauthorized goods in conjunction with a confusingly similar domain name may lead consumers to believe that the website is operated or endorsed by Complainant. Accordingly, the Panel concludes that Respondent registered and uses the <wwe-shops.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. V. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood of confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
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-shops.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 22, 2012
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