World Wrestling Entertainment, Inc. v. emad ibrahim / this domain is for sale
Claim Number: FA1409001579757
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is emad ibrahim / this domain is for sale (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwe.org>, registered with NameSilo, 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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2014; the National Arbitration Forum received payment on September 16, 2014.
On September 15, 2014, NameSilo, LLC confirmed by e-mail to the National Arbitration Forum that the <wwe.org> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2014 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.org. Also on September 17, 2014, 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.
A timely Response was received and found compliant on September 24, 2014.
An Additional Submission was also received on September 24, 2014 and found compliant.
On September 30, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
C. Complainant’s Additional Submissions
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.
Complainant uses the WWE mark in furtherance of its professional wrestling events and related products. Complainant has rights in the WWE mark through registrations with trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No 2,772,683 registered Oct. 7, 2003, filed May 7, 2002), and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,211,638 registered August 7, 2003).
The Panel concludes that such trademark registrations with the USPTO and SAIC satisfy the initial rights requirement of Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant argues the <wwe.org> domain name is identical to the WWE mark. The Panel agrees that the name is identical as the inclusion of a generic top-level domain (“gTLD”) such as “.org” is irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
Respondent argues that the <wwe.org> domain name is comprised merely of three generic letters which can serve a variety of acronyms. However, prior panels have concluded that this argument is not pertinent to the Policy ¶ 4(a)(i) analysis, but is instead relevant to Policy ¶¶ 4(a)(ii) and (iii). See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)). Accordingly, the argument will be addressed below.
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.”).
Complainant claims Respondent is not known by the <wwe.org> name. In Complainant’s Additional Submission, Complainant notes that the WHOIS record identifies “emad ibrahim” as registrant. Further, Complainant urges that Respondent admits no affiliation with Complainant.
In light of the evidence presented, the Panel finds that Respondent is not commonly known by the <wwe.org> name pursuant to Policy ¶ 4(c)(ii). See Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003) (“While Respondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that Respondent was actually or commonly known by the disputed domain name. Both the fact that Respondent declined to respond to Complainant’s charge and the fact that Respondent’s operations suddenly ceased suggest that Respondent was not legitimately known as <targetpills.com>.”).
Complainant asserts that Respondent has not made a legitimate, noncommercial or fair use of the domain name. Instead, Complainant argues Respondent is using the disputed domain name for commercial gain. Complainant urges that Respondent initially used the disputed domain name to promote click-through links. See Compl., at Attached Ex. 8. Respondent admits such use, albeit for minimal gain.
The Panel notes that Respondent alludes to an effort under the name “Western Women Entrepreneurs,” but fails to provide any evidence of its progress or recognition of Respondent with that name.
Prior panels have found that the promotion of hyperlinks for purposes of click-through revenue may demonstrate that a respondent lacks rights in the disputed domain name. For example, in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panel found that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant.
Accordingly, this Panel agrees that Respondent’s prior use of featuring click-through fees unrelated to Complainant through the <wwe.org> domain name amounts to neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Further, Complainant argues that by September 15, 2014, Respondent redirected the domain name to display an under construction page featuring the header “Western Women Entrepreneurs.” See Compl., at Attached Ex. 8.
Respondent purportedly plans to launch the website under this name in connection with legal services for businesswomen. However, Respondent provides no corroborating evidence of such a plan. Complainant notes that a Google search for “Western Women Entrepreneurs” does not correspond to a single reliable link. See Compl., at Attached Ex. 10. In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the panel wrote, "Respondent's unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word "genealogy" on its website. Other panels have similarly been skeptical of “under construction pages.” See, e.g., Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Accordingly, the Panel holds that Respondent’s reliance on this under construction page is insufficient under the circumstances to evince legitimate use.
Complainant claims Respondent has attempted to sell the domain name for an amount that far exceeds its fair market value, which further demonstrates a lack of rights or legitimate interests.
In Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), the panel wrote, “An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”
Here, Complainant urges that Respondent initiated the offer to sell. Further, Complainant recalls that Respondent indicated that the asking price for the domain name was $50,000. See Compl., at Attached Ex. 9.
The Panel finds that under the facts and circumstances, Respondent’s efforts to sell the domain name to Complainant reveal a lack of rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
The Panel notes that Respondent’s current landing page also includes a disclaimer. See Compl., at Attached Ex. 8.
Prior panels have concluded that a disclaimer fails to mitigate confusion. See, e.g., AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Accordingly, the Panel agrees that this disclaimer is insufficient per Policy ¶ 4(a)(ii).
Based on all of the above discussion, the Panel holds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s efforts to sell Complainant the <wwe.org> domain name for significant profit. Complainant explains that Respondent registered the disputed domain name in April 2014, then on September 4, 2014, Respondent contacted Complainant’s offices to discuss the possible sale of the <wwe.org> domain name. Respondent indicated that the asking price for the domain name was $50,000. See Compl., at Attached Ex. 9. Complainant asserts that such inquiry and correspondence, so shortly after registration, evinces bad faith.
Respondent argues that its efforts to sell the domain name were not directed at Complainant. Instead, Respondent explains he had been attempting to sell the domain name for five months before approaching Complainant. The Panel notes that Respondent has provided evidence of his marketing efforts. See Resp., at Attached Exs. 5, 7, 8. Further, Respondent claims he is in the business of selling domain names.
However, the Panel believes that based on the facts and circumstances Respondent did intend to target Complainant.
The Panel concludes that Respondent’s sales efforts demonstrate bad faith in that Respondent registered the domain name with the intent of capitalizing on the Complainant’s trademark interest.
The Panel further concludes that while Respondent is a seller of generic domain names, Respondent registered its domain name after the Complainant’s registration of its WWE mark and subject to actual knowledge of Complainant’s rights in its marks.
In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel found that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name.
The Panel agrees, under the facts and circumstances of the case, that Respondent’s actions of approaching Complainant and offering to sell the name at a considerable price evinces Policy ¶ 4(b)(i) bad faith.
Complainant urges that the disputed domain name previously resolved to a pay-per-click website, from which Respondent generated revenue in violation of Policy ¶ 4(b)(iv). See Compl., at Attached Ex. 8.
Prior panels have found evidence of bad faith where the domain name resolves to promote hyperlinks for profit. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel notes that Respondent has admitted to having generated some revenue, albeit nominal, from the pay-per-click activity.
Complainant argues that Respondent’s alteration of the domain name from a revenue generating website with pay-per-click links to one that mirrors a prior holder’s legitimate use (Wisconsin Women Entrepreneurs) does not avoid bad faith. Complainant notes that Respondent admitted in his Response that he only made this change after notice of this UDRP complaint. Further, Complainant cites a Google search for “Western Women Entrepreneurs” to argue that the plan is a guise as the name does not correspond to a single reliable link. See Compl., at Attached Ex. 10.
Prior panels have found bad faith where the respondent has made no demonstrable preparations to use.
The Panel finds that Respondent has failed to provide any evidence supporting his Western Women Entrepreneurs venture, and that the under construction page amounts to an inactive use in violation of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the WWE mark at the time the domain name was acquired in April 2014. In its Additional Submission, Complainant urges that Respondent also had actual knowledge of Complainant’s rights. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), the panel stated that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith.
Based on the facts and circumstances in this case, including Respondent’s efforts to sell the domain name to Complainant, the Panel infers that Respondent registered the domain name with actual knowledge of Complainant’s rights in the WWE mark, and therefore finds evidence of bad faith under 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.org> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: October 13, 2014
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