World Wrestling Entertainment, Inc. v. Dung Nguyen
Claim Number: FA1506001623991
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Dung Nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wweo.us>, registered with GoDaddy.com, LLC.
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 11, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wweo.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 U.S. Department of Commerce’s usTLD 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.us. 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 1015, 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 to the usTLD 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 usTLD Policy, usTLD Rules, the 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
Complainant World Wrestling Entertainment, Inc. (“WWE”) is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company. Complainant has registered the WWE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683, registered May 7, 2002), which demonstrates its rights in the mark. The <wweo.us> domain name is confusingly similar to the WWE mark, as the domain name fully incorporates Complainant’s famous WWE mark along with the addition of the single letter “o” and the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <wweo.us> domain name. Respondent is not commonly known by the disputed domain name or any variant of the WWE mark. Respondent has also not been licensed or authorized by Complainant to use any variation of the WWE mark in connection with domain name registrations. Further, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Instead, Respondent uses the disputed domain name for commercial gain via pay-per-click advertisements and unlicensed video streaming content. Such use is malicious and draws Internet consumers away from Complainant’s legitimate offerings.
Respondent has registered or is using the disputed domain name in bad faith. First, Respondent has engaged in a pattern of bad faith use and registration per Policy ¶ 4(b)(ii). Next, Respondent’s use of the disputed domain name competes with and disrupts Complainant’s business under Policy ¶ 4(b)(iii). Further, Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain pursuant to Policy ¶ 4(b)(iv). Lastly, Respondent had actual and/or constructive knowledge of Complainant and its rights in the WWE mark when registering or using the <wweo.us> domain name per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on July 22, 2014.
In a non-responsive Response to the Forum, the Respondent claims that it registered and used the disputed domain name in good faith. The 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.
It is not clear from the record if this non-responsive Response was submitted in relation to this case or to a parallel case file by this Complainant against this Respondent regarding the disputed domain name <wweo.net.> (Claim Number: FA1506001623990). Therefore, as these are closely related, parallel claims, the Panel will presume that the non-responsive Response applies to both cases.
As the Respondent has not filed a responsive Response, the Panel shall make its determination based on the reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the 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.
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.
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 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).
Complainant argues that Respondent’s <wweo.us> domain name is confusingly similar to the WWE mark. The <wweo.us> domain name adds the letter “o” to the end of the WEE mark and adds the “.net” gTLD suffix to the mark, this does not distinguish the disputed domain name from Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the <wweo.us> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of WWE. Further, Complainant alleges that Respondent is not affiliated with WWE and has not received any license or consent, express or implied, to use Complainant’s WWE mark in a domain name or otherwise. The WHOIS information merely lists “Dung Nguyen.” As Respondent has not added any evidence for the Panel’s consideration, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant argues that Respondent is not making bona fide offering of goods or services or a legitimate, noncommercial or fair use of the disputed domain name. Complainant contends that Respondent uses the disputed domain name for its own commercial gain via pay-per-click advertisements offered on the website. See Compl., at Attached Annex 8 (resolving website to the disputed <wweo.us> domain name). The website contains unlicensed content identical to the legitimate copyrighted commercial content offered by WWE on its website. A respondent’s use of a disputed domain name to divert Internet users to the respondent’s competing website is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Therefore, the Panel finds that Respondent’s <wweo.us> domain name evinces no bona fide offering of goods or services or any legitimate noncommercial or fair use as per Policy ¶¶ 4(c)(i) or (iii) and, therefore, has no rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant asserts that Respondent has engaged in a pattern of bad faith registration in violation of Policy ¶ 4(b)(ii). To make a showing of bad faith under Policy ¶ 4(b)(ii), past panels have required that there be multiple domain names registered in the immediate case or a history of UDRP cases. See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). The Panel notes Complainant’s argument that Respondent has infringed on its rights by its past registration of the <wweo.net> domain name, but that it provides no such evidence of a previous dispute. On its own motion, the Panel has discovered Claim No. FA1506001623991 where this Complainant brought a Complaint against this Respondent over the domain name wweo.net.
The Panel, therefore, finds that there is a pattern of abusive use and registration of Complainant’s trademark as a domain name by this Respondent. As such, there is evidence in the record of Respondent’s bad faith use and registration.
Further, Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). Specifically, Complainant argues that Respondent uses the disputed domain name as a part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by WWE on its own website. Past panels have found that such behavior indicates bad faith under Policy ¶ 4(b)(iii). See Pilgrim Films and Television, Inc. v. Nikola Pesic a/k/a Home, FA 1236018 (Nat. Arb. Forum Jan. 20, 2009) (finding that a domain name that resolved to a website that displayed Complainant’s video programming in an unauthorized manner disrupted Complainant’s business and was used in bad faith pursuant to Policy ¶ 4(b)(iii)).
Accordingly, the Panel finds that Respondent’s use of the <wweo.us> domain name disrupts Complainant’s business as per Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the disputed domain name to intentionally attract Internet users for commercial gain to its websites by creating a likelihood of confusion with the WWE mark, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iv). The Complainant’s Attached Exhibit 8 demonstrates the content associated with the <wweo.us> domain name. A respondent’s intentional attempt to confuse Internet users strictly for commercial gain can result in a finding of bad faith. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Therefore, as the Panel finds that Respondent has registered a confusingly similar domain name which infringes on Complainant’s WWE mark for commercial gain, it also finds Respondent has registered and used the <wweo.us> domain name in bad faith pursuant to the language of Policy ¶ 4(b)(iv).
Finally, Complainant argues that due to the content on Respondent’s website and the fact that the disputed domain name was registered long after WWE had filed numerous trademark applications, Respondent must have had constructive and/or actual knowledge of Complainant’s WWE mark, thereby participating in conduct proscribed by Policy ¶ 4(a)(iii). The Panel disregards arguments regarding constructive knowledge as they are irrelevant to in a domain name case such as this. See The Way Int’l Inc. v. 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. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”). The Panel, however, agrees with Complainant, however, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Respondent admitted to having knowledge of Complainant in its non-responsive Response referenced above. Therefore, the Panel concludes that that the Respondent had actual notice of Respondents rights in and to its trademark prior to registering not one but at least two different disputed domain names.
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). The 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 usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <wweo.us> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: July 20, 2015
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