World Wrestling Entertainment, Inc. v. N/A / Tang Jack
Claim Number: FA1307001511575
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is N/A / Tang Jack (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwestoreonline.com>, registered with Cloud Group Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2013; the National Arbitration Forum received payment on July 26, 2013.
On July 26, 2013, Cloud Group Limited confirmed by e-mail to the National Arbitration Forum that the <wwestoreonline.com> domain name is registered with Cloud Group Limited and that Respondent is the current registrant of the name. Cloud Group Limited has verified that Respondent is bound by the Cloud Group Limited 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 July 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2013 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@wwestoreonline.com. Also on July 29, 2013, 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 August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating a global business centered on goods and services that involve wrestling performances and related entertainment.
2. Complainant has obtained trademark registrations for the WWE mark. See United States Patent and Trademark Office ("USPTO") Reg. No. 3,412,177 registered Apr. 15, 2008; see also China’s State Administration for Industry and Commerce (“SAIC”) Reg. No. 3,211,642 registered Sep. 21, 2003.
3. Respondent registered the <wwestoreonline.com> domain name on March 12, 2012.
4. Respondent uses the <wwestoreonline.com> domain name to operate an online store specializing in the sale of counterfeit WWE merchandise.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it uses the WWE mark to operate a global business centered on goods and services that involve wrestling performances and related entertainment. Complainant states that it has obtained trademark registrations for the WWE mark. See USPTO Reg. No. 3,412,177 registered Apr. 15, 2008; see also SAIC Reg. No. 3,211,642 registered Sep. 21, 2003. The Panel finds that Complainant’s showing of SAIC and USPTO registration satisfies Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WWE mark. Complainant argues that Respondent’s <wwestoreonline.com> domain name adds the generic words “store” and “online” to the WWE mark, along with the gTLD “.com.” The Panel agrees that both of the words added to the domain name are merely generic and thus do not reduce the confusing similarity of the name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel concludes that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i), as the gTLD is an irrelevant addition. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s WWE trademark and to
use it in its domain name, adding only the words “store” and “online” which
suggests that the domain name relates to products sold by Complainant through an online store;
(b) Respondent uses the <wwestoreonline.com> domain name to operate an online store specializing in the sale of counterfeit WWE merchandise;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant alleges that Respondent is not known by this domain name. Complainant attests that Respondent has not been licensed, authorized, or approved to use the WWE mark in domain names. The Panel notes that the domain name’s WHOIS information does not provide any evidence that Respondent goes by <wwestoreonline.com>. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name);
(e)Complainant also claims that Respondent uses the <wwestoreonline.com> domain name to operate an online store specializing in the sale of counterfeit WWE merchandise. The Panel notes that the domain name resolves to an online store that explicitly uses the WWE mark in selling what appear to be counterfeit versions of Complainant’s WWE mark goods. See Complainant’s Ex. 7. The Panel finds that Respondent’s unauthorized sale of these ostensibly counterfeit goods does not create either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name
was registered and used in bad faith. That is so for the following reasons.
First, Complainant avers that Respondent is conducting an unauthorized and illegitimate sale of counterfeit WWE goods through the disputed domain name’s website. The Panel again notes that the domain name resolves to an online store promoting various unlicensed and potentially counterfeit copies of Complainant’s WWE goods. See Complainant’s Ex. 7.The Panel finds that the sale of counterfeit goods through a confusingly similar domain name such as <wwestoreonline.com> constitutes Policy ¶ 4(b)(iv) bad faith. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Secondly, Complainant also argues that Respondent knew at the time it registered the <wwestoreonline.com> domain name that it would be infringing on Complainant’s WWE mark. Complainant claims that Respondent uses the domain name to sell counterfeit WWE goods, and that the domain name’s website features explicit references to Complainant’s trademarks. Complainant alternatively submits that Respondent should be held to have had constructive notice of Complainant’s rights in the 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, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name
using the WWE mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwestoreonline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 29, 2013
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