World Wrestling Entertainment, Inc. v. danny hernandez / megamezclas
Claim Number: FA1611001701983
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is danny hernandez / megamezclas (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tdcwwelatino.com>, registered with Name.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically November 8, 2016; the Forum received payment November 8, 2016.
On November 8, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <tdcwwelatino.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. verified that Respondent is bound by the Name.com, Inc. registration agreement and Respondent thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@tdcwwelatino.com. Also on November 9, 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 December 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 name be transferred from Respondent to Complainant.
Complainant’s Contentions in this Proceeding:
Complainant has rights in the WWE mark pursuant to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003). See Compl., at Attached Annex 3. Respondent’s <tdcwwelatino.com> domain name is confusingly similar to the WWE mark. Both “tdc” and “latino” are generic terms, and their addition as generic terms and the gTLD to a fully incorporated WWE mark makes the disputed domain name confusingly similar under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <tdcwwelatino.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its WWE mark in any fashion, and Respondent is not commonly known by the disputed domain name or any variation featuring “WWE.” Further, Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Instead, Respondent is using Complainant’s marks and hosting Complainant’s video without a license on the resolving website of the disputed domain name, in an attempt to pass itself off as the Complainant, and to divert internet users away from Complainant’s legitimate copyrighted commercial content.
Respondent registered and is using the <tdcwwelatino.com> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as having a relationship with Complainant in a bad faith attempt to disrupt Complainant’s business and to attract Internet users for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). Respondent had actual notice of Complainant’s rights in the WWE mark when it registered the <tdcwwelatino.com> domain name, and to register and use it with such notice constitutes bad faith under Policy ¶ 4(a)(iii).
Respondent’s Allegations in this Proceeding:
Respondent registered the <tdcwwelatino.com> domain name January 6, 2016, and did not submit a Response to this Complaint.
Complainant established rights and legitimate interests in its protected mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in Complainant’s protected mark.
Respondent registered a confusingly similar domain name using Complainant’s
protected mark.
Respondent registered and used the disputed domain containing Complainant’s protected mark 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 Complainant to 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;
(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 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant contends it registered its famous WWE mark with the USPTO (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003), and that it has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex 3. Such registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that Complainant sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). This Panel finds that Complainant has rights in its WWE mark.
Complainant further contends that Respondent’s <tdcwwelatino.com> domain name is confusingly similar to its WWE mark. Complainant argues that both “tdc” and “latino” are generic terms, and that the addition of generic terms and a gTLD to its fully incorporated WWE mark still makes the disputed domain name confusingly similar under Policy ¶ 4(a)(i). Adding generic terms or abbreviations for generic terms to a complainant’s mark does not distinguish a confusingly similar disputed domain name. See Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); cf. Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Accordingly, the Panel holds that the <tdcwwelatino.com> domain name is confusingly similar to Complainant’s WWE mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no rights or legitimate interests in the <tdcwwelatino.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its WWE mark in any fashion, and that Respondent is not commonly known by the disputed domain name or any variation featuring “WWE.” A respondent is not commonly known by a domain name if the WHOIS information and no other contradicting evidence in the record shows such commonality. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel notes that the WHOIS information for the domain name in question lists “danny hernandez” as the registrant with “megamezclas” organization, seemingly bearing no relation or similarity to <tdcwwelatino.com>. See Compl., at Attached Annex 1. Thus, this Panel finds that Respondent is not commonly known by the disputed <tdcwwelatino.com> domain name under Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), and is not using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks and hosting Complainant’s video without a license on the resolving website of the disputed domain name in an attempt to pass itself off as the Complainant, and to divert Internet users away from Complainant’s legitimate copyrighted commercial content. Complainant submitted screen shots of Respondent’s website that it contends fail to show a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. See Compl., at Attached Annex 8. A respondent’s attempt to pass itself off as a complainant, or a respondent’s direct competition with the complainant on a confusingly similar domain name do not satisfy Policy ¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Coryn Group, Inc. v. Media Insight, FA 198959 (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). This Panel finds that this Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and is using the <tdcwwelatino.com> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as having a relationship with Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of its WWE mark, in conjunction with the confusingly similar domain name, and the hosting of Complainant’s copyrighted videos create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel notes the alleged resolving website of <tdcwwelatino.com> and compares it with Complainant’s business. Compare Compl., at Attached Annex 8 (resolving website for <tdcwwelatino.com>), with Compl., at Attached Annex 6 (media surrounding Complainant and its WWE mark). Complainant presumes that Respondent commercially gains and certainly intends to do so when mistaken Internet users click one of the links and get referred to a third party website. The Panel finds that Respondent is attempting to pass itself off as Complainant; Respondent does so in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel also holds that Respondent is competing with Complainant and that its use of <tdcwwelatino.com> is in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant lastly contends that Respondent had actual notice of its rights in the WWE mark when it registered the <tdcwwelatino.com> domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the worldwide fame of the WWE mark and the fact that Respondent’s website uses Complainant’s actual marks and copyrighted video content. Complainant offers such evidence to show that Respondent had actual notice of their rights in the mark. See Compl., at Attached Annexes 6, 8. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel may infer actual notice from either of Complainant’s arguments. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). This Panel finds that Respondent had actual notice of Complainant’s rights in the WWE mark pursuant to Policy ¶ 4(a)(iii); Respondent registered the <tdcwwelatino.com> domain name in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <tdcwwelatino.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 14, 2016
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