World Wrestling Entertainment, Inc. v augle thee / company
Claim Number: FA1602001662432
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is augle thee / company (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwe-markets.com> and <wwetshirts.com> 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 25, 2016.
On February 24, 2016; Feb 25, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <wwe-markets.com> and <wwetshirts.com> domain names are 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2016 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-markets.com, and postmaster@wwetshirts.com. Also on February 26, 2016, 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the WWE mark for world-renowned retail and entertainment services, as well as consumer products. Complainant registered the WWE mark with the United States Patent and Trademark Office (Reg. No. 2.772.683, registered Oct. 7, 2003), which demonstrates rights in the mark.
2. Respondent’s <wwe-markets.com> and <wwetshirts.com> domain names are confusingly similar as they incorporate the Complainant’s WWE mark in its entirety, along with the generic words “markets” and “tshirts” and the generic top-level domain (“gTLD”) “.com”.
3. Respondent has no rights or legitimate interests in the <wwe-markets.com> and <wwetshirts.com> domain names. Respondent is not commonly known by the domain names. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wwe-markets.com> and <wwetshirts.com> domain names. Rather, the domain name resolve to a website containing counterfeit products from which Respondent presumably profits.
4. Respondent is using the <wwe-markets.com> and <wwetshirts.com> domain names in bad faith. Respondent is using the resolving website to sell counterfeit WWE products. Further, Respondent had actual and constructive knowledge of the WWE mark and Complainant’s rights therein because of the mark’s fame, notoriety and multiple trademark registrations.
5. The <wwetshirt.com> domain name was registered on May 29, 2014 and the <wwe-markets.com> domain name was registered on November 20, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WWE mark. Respondent’s domain names are confusingly similar to Complainant’s WWE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwe-markets.com> and <wwetshirts.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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(f), 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 uses the WWE mark for world-renowned retail and entertainment services, as well as consumer products. Complainant registered the WWE mark with the USPTO (e.g., Reg. No. 2772683, registered October 7, 2003). A complainant need not register its trademark in the same country as the one in which the respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Moreover, a registration with the USPTO is sufficient to establish rights in a mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has shown valid trademark rights for purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <wwe-markets.com> domain name is confusingly similar to the WWE mark as it incorporates the mark in its entirety while adding the descriptive term “-markets” and the “.com” gTLD. In addition, Complainant contends the <wwetshirt.com> domain name is confusingly similar to the WWE mark as it also incorporates the mark in its entirety while adding the descriptive term “t-shirt” and the “.com” gTLD. Such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Furthermore, the gTLD “.com” is insufficient to distinguish the domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel agrees that Respondent’s <wwe-markets.com> and <wwetshirt.com> domain names are confusingly similar to the WWE mark under 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 <wwe-markets.com> and <wwetshirt.com> domain names. 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 argues that Respondent has no rights or legitimate interests in the <wwe-markets.com> and <wwetshirts.com> domain names. Complainant asserts that Respondent is not commonly known by the domain names. The WHOIS information regarding the domain names, lists “augle thee” as the registrant of record. In light of the available evidence the Panel agrees that there is no basis to find that Respondent is commonly known by the <wwe-markets.com> and <wwetshirts.com> domain names per Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <wwe-markets.com> and <wwetshirts.com> domain names. Rather, Complainant has shown that the domain names resolve to a website selling counterfeit goods from which Respondent presumably makes commercial gain. The use of a domain name to sell counterfeit goods is not a bona fide offering nor a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Therefore, the Panel agrees that Respondent’s <wwe-markets.com> and <wwetshirts.com> domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
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-markets.com>, <wwetshirts.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 28, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page