World Wrestling Entertainment, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1212001474117
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwebrawlinbuddies.com>, registered with CV. Jogjacamp.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2012; the National Arbitration Forum received payment on December 5, 2012.
On December 5, 2012, CV. Jogjacamp confirmed by e-mail to the National Arbitration Forum that the <wwebrawlinbuddies.com> domain name is registered with CV. Jogjacamp and that Respondent is the current registrant of the name. CV. Jogjacamp has verified that Respondent is bound by the CV. Jogjacamp 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 December 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2012 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@wwebrawlinbuddies.com. Also on December 6, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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’s Contentions
· Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of Respondent’s <wwebrawlinbuddies.com> domain name.
o Complainant uses the WWE and derivative marks in the promotion of its professional wrestling events, programming, and merchandising. Complainant filed applications for the WWE marks first in 2002. Since then, registrations for WWE marks have been issued in the United States and 63 additional regions.
o Respondent’s disputed domain is confusingly similar to Complainant’s WWE mark.
· Policy ¶ 4(a)(ii): Respondent lacks rights or legitimate interests in respect to the <wwebrawlinbuddies.com> domain name.
o Respondent is not licensed or otherwise authorized to use the disputed domain name. Respondent is not actually known as the disputed domain name.
o Respondent’s disputed domain name incorporates Complainant’s WWE marks in the domain name itself, and also displays other trademarks owned by WWE on the resolving website and provides third party referral links. Respondent is profiting from these third-party hyperlinks.
· Policy ¶ 4(a)(iii): Respondent registered and is using the <wwebrawlinbuddies.com> domain name in bad faith.
o Respondent registered and is using the disputed domain name to profit by confusing Internet users into the false belief that Complainant is the source of the disputed domain name. Internet users are then directed to a list of hyperlinks, and when they click on these hyperlinks Respondent gains a referral fee. Moreover, Respondent’s website appears to do nothing more than profit off of Complainant’s mark as the hyperlinks direct Internet users to online retailers who sell Complainant’s merchandise.
o Respondent knew of Complainant’s rights in the mark due to the fame and value of Complainant’s WWE marks.
B. Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
The Panel notes that the disputed domain name was registered on October 25, 2012. Further, the Panel notes that the Forum received correspondence from Respondent which simply states, “I apologize for this problem. I really do not know the provisions of the use of the attribute "WWE" for the domain name. Therefore, I will immediately close the website, thank you.”
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(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 states that it uses the WWE and derivative marks in the promotion of its professional wrestling events, programming, and merchandising. Complainant claims it filed applications for the WWE marks first in 2002. The Panel notes that Complainant has registered the WWE mark for a variety of purposes with the United States Patent & Trademark Office. See, e.g., Reg. No. 2,772,683 registered on October 7, 2003 (concerning professional wrestling events); Reg. No. 3,489,357 registered on August 19, 2008 (concerning merchandise). Registration with the USPTO is sufficient evidence as to a complainant’s rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant further contends that Respondent’s disputed domain is confusingly similar to Complainant’s WWE mark because it incorporates the term “brawlin buddies.” The Panel also notes that Complainant has presented documentation in which it appears to sell products referred to as “Brawlin’ Buddies.” Respondent’s registration of a domain name that combines a complainant’s mark with terms descriptive of the products sold by complainant under their mark illustrates a confusing similarity between the domain name and the mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described the complainant’s products, was insufficient to distinguish the respondent’s <duracellbatteries.com> domain from the complainant’s DURACELL mark). Thus, the Panel concludes that the <wwebrawlinbuddies.com> domain name is confusingly similar to the WWE mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent is not commonly known as the disputed domain name. Complainant states that Respondent is not licensed or otherwise authorized to use the disputed domain name. The Panel notes that the WHOIS record for the <wwebrawlinbuddies.com> domain name lists “PrivacyProtect.org / Domain Admin” as the registrant of the domain name. Where there is no evidence in the WHOIS record or elsewhere to tie a respondent to a disputed domain name, the respondent cannot be found to be commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not commonly known by the <wwebrawlinbuddies.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further contends that Respondent’s <wwebrawlinbuddies.com> domain name incorporates Complainant’s WWE marks in the domain name itself, and also displays other trademarks owned by WWE on the resolving website and provides third-party referral links. Complainant contends that Respondent is profiting from these third-party hyperlinks. Complainant concludes that Respondent is seeking to capitalize on Complainant’s merchandise and redirect Internet users to third-party retailers while making profits by hyperlinking users to these websites. The Panel notes that the domain name resolves to a website that includes an array of products related to Complainant’s business, including product descriptions and reviews, and that when an Internet user clicks to purchase an item, they are redirected to that item’s corresponding page on the <amazon.com> domain name. A respondent cannot establish a bona fide offering of goods when they offer links to a complainant’s goods in a competing manner, while being paid to do so. Thus, these activities by Respondent constitute neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <wwebrawlinbuddies.com> domain name.
Complainant has therefore also satisfied Policy ¶ 4(a)(ii)).
Complainant states that Respondent registered and is using the <wwebrawlinbuddies.com> domain name to profit by confusing Internet users into the false belief that Complainant is the source of the disputed domain name. Complainant states that Internet users are then directed to a list of hyperlinks, and when they click on these hyperlinks, Respondent gains a referral fee. Complainant argues that Respondent’s website appears to do nothing more than profit off of Complainant’s mark, as the hyperlinks therein merely direct Internet users to online retailers who sell Complainant’s merchandise. Previous panels have found that a respondent has registered and used a domain name in bad faith when they use the domain name in the unauthorized promotion or sale of complainant’s goods. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website” and constituted bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel also finds that Respondent’s use of the domain name is an attempt to capitalize on Internet user’s confusion given the confusing similarity between the WWE mark and domain name coupled with the fact that information related to Complainant’s merchandise constitutes most of the content on the domain name’s resolving website. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). For these reasons, the Panel concludes that Respondent registered and is using the <wwebrawlinbuddies.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thus, Complainant has also 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 <wwebrawlinbuddies.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: January 16, 2013
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