World Wrestling Entertainment, Inc. v. Mohan Paul c/o Roamsoft Technologies
Claim Number: FA1407001569568
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Mohan Paul c/o Roamsoft Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwenetwork.us>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2014; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2014.
On July 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwenetwork.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 2014 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@wwenetwork.us. Also on July 14, 2014, 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 August 4, 2014.
A timely Additional Submission from Complainant was received and determined to be complete on August 5, 2014.
On August 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
1. Complainant has rights in the WWE mark under Policy ¶ 4(a)(i).
2. Respondent has no rights or legitimate interests in the <wwenetwork.us> domain name.
3. Respondent registered or is using the <wwenetwork.us> domain name in bad faith.
Respondent
1. Respondent operates as World Wide Entertainment Network.
2. GoDaddy allowed Respondent to buy this domain name.
Additional Submission From Complainant
1. Respondent’s response to the Complaint has many procedural deficiencies as to the form, substance, and style of the Response. Most notably, Respondent failed to certify the response.
2. Respondent is the listed owner of the domain name, the name “World Wide Entertainment Network” appears nowhere in the documents related to the control of the domain name.
3. The entity called “World Wide Entertainment Network” never existed prior to the filing of this usDRP. Thus, Respondent’s averments in this respect are meritless.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant shows that it has registered the WWE mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,772,683 registered Oct. 7, 2003). The Panel finds that this registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the WWE mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant attests the <wwenetwork.us> domain name is confusingly similar to the WWE mark. This domain name includes the generic term “network” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds the ccTLD and generic term “network” are insufficient to differentiate the domain name from the WWE mark in any meaningful way. See, e.g., Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not actually known as “WWE Network.” Complainant asserts in its Additional Submission that Respondent created the alleged “World Wide Entertainment Network” after this usDRP was instituted. As such, the Panel concludes Respondent is not commonly known by this domain name under Policy ¶ 4(c)(iii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant claims Respondent uses the domain name to promote hyperlink advertising. The domain name resolves to a website dedicated to promoting hyperlinks to various third-party commercial enterprises. The Panel finds such a use is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services, nor is it a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant has proven this element.
Complainant claims the domain name is likely to cause confusion as to the relationship between the WWE mark and the <wwenetwork.us> domain name. The domain name resolves to a website promoting hyperlinks to various third-party businesses. The Panel finds these hyperlinks are evidence of Respondent’s intent to use the domain name primarily for purposes of promoting monetized advertising content rather than for any legitimate end related to a “World Wide Entertainment Network.” See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant claims Respondent ought to be held to constructive and actual notice of Complainant’s rights in the WWE mark. While past panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wwenetwork.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 19, 2014
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