World Wrestling Entertainment, Inc. v. Dung Nguyen
Claim Number: FA1608001691671
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, United States. Respondent is Dung Nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wweo.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2016; the Forum received payment on August 31, 2016.
On August 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wweo.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@wweo.org. Also on August 31, 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 September 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company with a market capitalization of approximately $1.6 billion. Complainant has registered the WWE mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. No. 2,772,683, registered October 7, 2003), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Annex 3. The <wweo.org> domain is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and merely adds the letter “o.”
2. Respondent has no rights and legitimate interests in the domain. Respondent is not known by the disputed domain, and it is not licensed or otherwise authorized to use the WWE mark. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent uses the domain to host pay-per-click advertisements. Respondent’s website also contains unlicensed content identical to the legitimate copyrighted commercial content offered by Complainant and its video partners. See Compl., at Attached Annex 8.
3. Respondent registered and is using the domain in bad faith. First, Respondent has been the subject of previous adverse UDRP proceedings, wherein the panels ordered the transfer of the domains to the respective complainants. See Compl., at Attached Annex 7. Second, Respondent’s use of the domain to offer competing video programming disrupts Complainant’s business. Third, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the WWE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Fourth, because of Complainant’s trademark rights in its WWE mark, it is clear that Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark and rights therein.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <wweo.org> domain name is confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wweo.org> domain name.
3. Respondent registered or used the <wweo.org> domain name 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 (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 is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company with a market capitalization of approximately $1.6 billion. Complainant has registered the WWE mark with the USPTO (e.g., Reg. No. 2,772,683, registered October 7, 2003), which Complainant contends demonstrates its rights in the mark. See Compl., at Attached Annex 3. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <wweo.org> domain is confusingly similar to its mark as it incorporates the mark in its entirety and merely adds the letter “o.” The Panel notes that Respondent has also affixed the generic top-level domain (“gTLD”) “.org” to the disputed domain. Panels have held that neither the addition of the letter “o” nor the affixation of a gTLD serves to adequately distinguish a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 (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 argues that Respondent has no rights and legitimate interests in the domain. Complainant contends that Respondent is not known by the disputed domain, and that Respondent is not licensed or otherwise authorized to use the WWE mark. The Panel notes that the WHOIS information merely lists “Dung Nguyen” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
According to Complainant, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant argues that Respondent uses the domain to host pay-per-click advertisements. Complainant also asserts that Respondent’s website contains unlicensed content identical to the legitimate copyrighted commercial content offered by Complainant and its video partners. See Compl., at Attached Annex 8. Panels have decided that a respondent’s use of a domain to provide competing products and/or services does not constitute 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). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has been the subject of previous adverse UDRP proceedings, wherein the panels ordered the transfer of the domains to the respective complainants. Complainant references two UDRP proceedings: World Wrestling Entertainment, Inc. v. Dung Nguyen, FA 1623990 (Forum Jun. 26, 2015) and World Wrestling Entertainment, Inc. v. Dung Nguyen, FA 1623991 (Forum Jul. 20, 2015). See Compl., at Attached Annex 7. Panels have held that prior UDRP proceedings are sufficient evidence to support a finding of bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). For this reason, the Panel concludes that Respondent has engaged in a pattern of bad faith, in violation of Policy ¶ 4(b)(ii).
Complainant maintains that Respondent’s use of the domain to offer competing video programming disrupts Complainant’s business. Panels have decided that a respondent’s use of a domain to offer competing products and/or services constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iii).
According to Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the WWE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Specifically, Complainant alleges that Respondent uses the domain to offer services that directly compete with Complainant’s business. Panels have consistently held that a respondent’s use of a domain to provide competing products and/or services is evidence of bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). The Panel agrees with Complainant and finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant argues that because of Complainant’s trademark rights in its WWE mark, it is clear that Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark and rights therein. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wweo.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 7, 2016
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