World Wrestling Entertainment, Inc. v. Patricki Chites
Claim Number: FA2111001972033
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Patricki Chites (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwefull.club>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 4, 2021; the Forum received payment on November 4, 2021.
On November 5, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwefull.club> 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, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2021 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@wwefull.club. Also on November 8, 2021, 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 determined to be complete on November 15, 2021.
On November 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PREIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <wwefull.club> domain name to Complainant. However, Complainant has not consented to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel also notes that consent to transfer is often an attempt by cybersquatters to avoid adverse findings against them. The Panel determines that it will analyze the case under the elements of the UDRP.
A. Complainant
1. Respondent’s <wwefull.club> domain name is confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wwefull.club> domain name.
3. Respondent registered and uses the <wwefull.club> domain name in bad faith.
B. Respondent consents to the transfer of the <wwefull.club> domain name.
Complainant is a well-known provider of global entertainment. Complainant holds a registration for the WWE mark with various trademark agencies throughout the world (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 3,621,017, registered May 12, 2009; China’s State Administration for Industry and Commerce (“SAIC”) Reg. 3,211,638, registered Aug. 7, 2003).
Respondent registered the <wwefull.club> domain name on Oct. 29, 2021, and uses it to offer competing and illegal streams of Complainant’s content.
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.
The Panel finds that Complainant has rights in the WWE mark through its registrations with various trademark agencies throughout the world. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <wwefull.club> domain name incorporates Complainant’s WWE mark in its entirety and adds the word “full” and the “.club” gTLD. Under Policy ¶ 4(a)(i), adding a generic word and a gTLD to a disputed domain name is insufficient to distinguish the domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark). Therefore, the Panel finds that Respondent’s <wwefull.club> domain name is confusingly similar to Complainant’s WWE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <wwefull.club> domain name. Complainant has not authorized or licensed Respondent to use its WWE mark. The WHOIS of record, along with the response, identifies the Respondent as “Patricki Chites.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)
Complainant also argues that Respondent does not use the <wwefull.club> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses it to offer competing and illegal streams of Complainant’s content. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and offer competing goods or services illegally is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Roku, Inc. v. Renato Ascencio / ServersMX, FA 1799002 (Forum Sept. 6, 2018) (“Respondent uses the domain name to offer unauthorized streaming devices and illegal streaming content that violates international copyright laws. It is well accepted that illegal use of a domain name can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which purports to offer illegal streams of Complainant’s content. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <wwefull.club> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name for a competing use constitutes bad faith disruption for commercial gain. See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Respondent makes no contentions with regards to 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 <wwefull.club> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 19, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page