World Wrestling Entertainment, Inc. v. Ahmed Mohamed
Claim Number: FA1911001870189
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Ahmed Mohamed (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officialprojectrock.store>, registered with GoDaddy.com, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2019; the Forum received payment on November 7, 2019.
On November 8, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <officialprojectrock.store> 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 November 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2019 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@officialprojectrock.store. Also on November 8, 2019, 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 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in THE ROCK and PROJECT ROCK trademarks acquired by its ownership of the trademark registrations set out below and submits that registration of a mark with a recognized national governmental authority is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant cites the decision in Bittrex, Inc. v. Matheus Lemos, FA 1797378 (Forum Aug. 16, 2018) (Registration of a EUTM mark with the EUIPO sufficiently establishes the required rights in the mark for purposes of the Policy.)
Complainant submits that the disputed domain name <officialprojectrock.store> is confusingly similar to Complainant’s PROJECT ROCK mark, as it incorporates Complainant’s PROJECT ROCK mark in its entirety and adds the generic term “official” and the <.store> gTLD extension.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use THE ROCK or PROJECT ROCK trademarks in a domain name or otherwise. Complainant asserts that it does not sponsor or endorse Respondent in any manner and submits that Respondent is not known as “OFFICIAL PROJECT ROCK,” nor could it be because Complainant has established its rights THE ROCK or PROJECT ROCK marks and name in connection with entertainment services and related goods and services in numerous countries around the world, including for the sale of apparel and Respondent is using the disputed domain name to sell counterfeit goods.
Furthermore, Complainant submits that Respondent has not made any legitimate, non-commercial or fair use of the domain name, without the intent for commercial gain or without the intent to misleadingly divert consumers.
Complainant alleges that the website to which the disputed domain name resolves offers counterfeit sportswear and consumers will undoubtedly be misled because Complainant uses its THE ROCK and PROJECT ROCK trademarks on sports apparel also. Complainant alleges that Respondent uses the disputed domain name to divert money from would-be visitors to Complainant’s official <wweshop.com> website and its licensees’ respective websites and brick and mortar stores, resulting in a loss of sales of apparel and related merchandise. Complainant submits that such use of the disputed domain name and website cannot be considered either legitimate or fair.
Complainant submits that Respondent registered the disputed domain name in bad faith. Complainant asserts that the Whois record for the disputed <officialprojectrock.store> domain name shows it was registered in September 2019, long after Complaint’s numerous trademark applications had been filed, and registrations obtained, for Complainant’s THE ROCK mark first filed in the United States in May 2000 and PROJECT ROCK mark which was registered in the European Union in January 2018.
Complainant submits that it is clear from Respondent’s website that Respondent knew of, and sought to capitalize on, the fame and value of Complainants trademarks the time the disputed domain name was registered. Complainant adds that it is inconceivable that Respondent could have registered a domain name that fully uses the PROJECT ROCK mark and partially uses THE ROCK mark in good faith. Furthermore, Complainant submits that the registrant had constructive knowledge of Complainant’s registered trademark rights when the disputed domain name was registered.
Complainant submits that based on an internal investigation, Respondent uses the disputed domain name in bad faith, as part of an unauthorized and illegal enterprise to sell counterfeit goods on the Internet. See Juicy Couture, Inc. v. Chen Hao, FA 1349605 (Forum Nov. 4, 2010) (Panelist ordered transfer of <juicycouture.cc> domain name due to Respondent’s use of a domain name that is identical to Complainant’s mark, coupled with the sale of counterfeit versions of Complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the<fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Furthermore, Complainant submits that Respondent has registered at least one other domain name that incorporates its ROCK and PROJECT ROCK trademarks in their entirety, that has also been the subject of a past Panel decision. See World Wrestling Entertainment, Inc. v. Ahmed Mohamed, FA 851215 (Forum Aug. 5, 2019) (transfer of the <project-rock.com> domain name for bad faith registration and use [counterfeiting]). Complainant submits that the registration of multiple domain names incorporating Complainant’s famous marks exemplifies a pattern of conduct that amounts to bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an integrated media organization, recognized leader in global entertainment, and a publicly traded company with a claimed market capitalization of approximately $4.3 billion and is the owner of a portfolio of trademark registrations including:
• United States registered trademark THE ROCK, registration number 2,514,522, registered on December 4, 2001 for
• EUROPEAN UNION Trade Mark registration number 17,727,884, registered January 24. 2018.
The disputed domain name was registered on September 12, 2019 and resolves to a website that purports to offer sportswear and sports footwear for sale.
There is no information available about the Respondent except for that provided in the Complaint and the Registrars response to the Forum’s request for details of the registration of the disputed domain name which had been registered using a privacy service.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided evidence of its ownership of THE ROCK and PROJECT ROCK trademarks which this Panel accepts is sufficient to establish its rights in these trademarks for the purposes of Policy ¶ 4(a)(i).
The disputed domain name <officialprojectrock.store> consists of Complainant’s PROJECT ROCK trademark in its entirety together with the generic word “official”. While in most cases under the Policy the gTLD extension might not be relevant, this Panel finds that in the present case the gTLD <.store> extension in combination with the words “official”, “project” “rock” increase the confusingly similar character of the disputed domain name by creating the impression that it is the official store of the trademark owner i.e. Complainant.
This Panel finds that the disputed domain name is confusingly similar to the trademark PROJECT ROCK in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
In these circumstances, the burden of production shifts to Respondent to show that he has rights or legitimate interests in the disputed domain name. Respondent has failed to file a Response or to discharge the burden of productions.
This Panel finds therefore that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(i).
While Complainant’s allegation that Respondent is offering counterfeit goods for sale cannot be supported by the evidence adduced, it is most improbable that the registrant of the disputed domain name was unaware of Complainant and its business including the sports apparel sales business when the disputed domain name was created and chosen. This Panel finds that in the circumstances, on the balance of probabilities the disputed domain name was registered in order to take predatory advantage of Complainants goodwill and reputation in the PROJECT ROCK mark.
Furthermore, Respondent is using the disputed domain name, which is targets Complainant’s goodwill and reputation to divert Internet users to a website that purports to offer goods competing with Complainant for sale. A worrying aspect of this case is that Respondent’s website has an interactive element that invites Internet visitors to input their personal data.
This Panel finds that on the balance of probabilities, the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officialprojectrock.store> domain name be TRANSFERRED from Respondent to Complainant.
________________________
James Bridgeman SC
Panelist
Dated: December 4, 2019
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