World Wrestling Entertainment, Inc. v. Dung Nguyen
Claim Number: FA1506001623990
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Dung Nguyen (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wweo.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 12, 2015.
On June 12, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <wweo.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2015 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@wweo.net. Also on June 15, 2015, 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 June 16, 2015.
On June 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it operates in the entertainment business, offering family-friendly media content across multiple platforms in many different countries. Complainant holds multiple registrations in the WWE mark, the earliest of which dates back to October 7, 2003 and bears the Registry Number 2,772,683 (United States Patent and Trademark Office (“USPTO”)).
Complainant alleges that Respondent’s <wweo.net> domain name is confusingly similar to the WWE mark. The <wweo.net> domain name adds the letter “o” to the end of the WWE mark. The <wweo.net> domain name adds the “.net” generic top-level domain (“gTLD”) suffix to the mark.
Complainant further alleges that Respondent is not commonly known by the <wweo.net> domain name. Complainant has no connection or affiliation with Respondent and has not given any license or consent to use the WWE mark in a domain name registration.
Complainant alleges that Respondent’s <wweo.net> domain name redirects to <wweo.us>, which contains unlicensed content identical to Complainant’s legitimate business material. Such use is fraudulent / unauthorized and Respondent presumably profits.
Complainant alleges that Respondent is diverting Internet users to its own site through the confusingly similar nature of the <wweo.net> domain name, and offering unlicensed video material relating to Complainant, Respondent’s bad faith is evidenced. Respondent likely profits from the redirection to the <wweo.us> site and its associated links/advertisements/unlicensed video streaming. Respondent has utilized Internet user confusion as to the source, sponsorship, endorsement, or affiliation of the <wweo.net> domain name or of services purportedly offered from Respondent’s web site in bad faith.
Finally, Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the WWE mark.
B. Respondent
In a non-responsive Response to the Forum, Respondent claims that it registered and used the disputed domain name in good faith. Respondent claims that it is a fan of Complainant’s business, and is interested in creating a website with content which proactively engages other fans of Complainant.
In this non-responsive Response, Respondent claims as follows:
I want to say sorry for the trouble we make and if you have any request, just let’s [sic] me know. I will try my best to do it. We are good people and we don’t want to harm anyone or hurt anything. All we do is copy and paste[.]
The Respondent registered the <wweo.net> domain name on February 24, 2010.
As the Respondent has not filed a responsive Response, the Panel shall make its determination based on the reasonable allegations of Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in or to the disputed domain name, and that Respondent engaged in bad faith use and registration of the domain name.
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.
Complainant operates in the entertainment business, offering, allegedly, family-friendly media content across multiple platforms in many different countries. Complainant purportedly holds multiple registrations in the WWE mark, the earliest of which dates back to October 7, 2003 and bears the USPTO Registry Number 2,772,683. A valid USPTO registration establishes rights under Policy ¶ 4(a)(i) even where complainant and respondent operate and/or live in different countries. 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.”). Accordingly, the Panel finds that Complainant has rights in the WWE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wweo.net> domain name is confusingly similar to the WWE mark. The <wweo.net> domain name adds the letter “o” to the end of the WWE mark and adds the “.net” gTLD suffix to the mark, this does not distinguish the disputed domain name from Complainant’s trademark.
Complainant argues that Respondent has no rights or legitimate interests in the <wweo.net> domain name. In arguing this point under Policy ¶ 4(c)(ii), Complainant argues that Respondent is not commonly known by the <wweo.net> domain name. Complainant also contends that it has no connection or affiliation with Respondent and has not given any license or consent to use the WWE mark in a domain name registration. As the relevant WHOIS information lists registrant of record as “Dung Nguyen” and Respondent makes no argument regarding its rights under Policy ¶ 4(c)(ii), the Panel finds no basis in finding Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s <wweo.net> domain name redirects to <wweo.us>, which contains unlicensed content identical to Complainant’s legitimate business material. Such use is argued by Complainant to be fraudulent / unauthorized, and Respondent presumably profits from its use. Such use evinces no rights or legitimate interests and is uncontroverted in the Record. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant alleges and Respondent does not dispute that Respondent’s website located at the <wweo.net> domain name diverts Internet users to its site in attempt to commit fraud by offering unlicensed material for viewing. As such, the Panel finds that Respondent has not demonstrated its rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent is diverting Internet users to its own site through the confusingly similar nature of the <wweo.net> domain name, and offering unlicensed video material relating to Complainant. As such, Respondent’s bad faith is evidenced under Policy ¶ 4(b)(iii). When a confusingly similar domain name registered by a respondent diverts Internet users and likely disrupts the legitimate business of a complainant, bad faith use and registration has occurred under Policy ¶ 4(b)(iii).
Accordingly, the Panel finds that Policy ¶ 4(b)(iii) bad faith use and registration has been evinced by Respondent’s registration and use of the <wweo.net> domain name.
Complainant further argues that as Respondent likely profits from the redirection to the <wweo.us> site and its associated links/advertisements/unlicensed video streaming, Respondent has utilized Internet user confusion as to the source, sponsorship, endorsement, or affiliation of the <wweo.net> domain name or of services purportedly offered from Respondent’s web site in bad faith. Panels have held that redirection for commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
As such, the Panel finds that Respondent has engaged in bad faith use and registration via its fraudulent use of the disputed domain name pursuant to the language of Policy ¶ 4(b)(iv).
Complainant also argues that due to the fame of its mark, along with the obvious connection between Respondent’s website and Complainant, Respondent must have had at least constructive knowledge of Complainant’s rights in the WWE mark when it registered the disputed domain name. While 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 and the obvious connection between the disputed domain name and Complainant, Respondent had actual knowledge of the WWE mark and Complainant's rights.
Accordingly, given the totality of the circumstances, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Respondent’s non-responsive Response offers no evidence and no argument to counter such a finding. In fact, the quoted language above from the non-responsive Response seems to concede the transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <wweo.net> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 26, 2015
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