World Wrestling Entertainment, Inc. v. Fei Wuxing, FEIWUXING and jeff jackson
Claim Number: FA1111001415514
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Fei Wuxing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwe123.com>, registered with 35 Technology Co., Ltd; <wwe365.com>, registered with Xin Net Technology Corporation; <wwecn.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn; <wwefs.com>, registered with HiChina Zhicheng Technology Ltd.; and <wwe8.com>, registered with Todaynic.com, Inc.
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 National Arbitration Forum electronically on November 15, 2011; the National Arbitration Forum received payment on November 16, 2011. The Complaint was submitted in both Chinese and English.
On November 15, 2011, HiChina Zhicheng Technology Ltd. confirmed by e-mail that the <wwefs.com> domain name is registered with HiChina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Ltd. has verified that Respondent is bound by the HiChina Zhicheng Technology Ltd. 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 15, 2011, Xin Net Technology Corporation confirmed by e-mail that the <wwe365.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 16, 2011, 35 Technology Co., Ltd confirmed by e-mail that the <www123.com> domain name is registered with 35 Technology Co., Ltd and that Respondent is the current registrant of the name. 35 Technology Co., Ltd has verified that Respondent is bound by the 35 Technology Co., Ltd 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 16, 2011, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail that the <wwecn.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn 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”).
After numerous requests, the Registrar, Todaynic.com, Inc., has not confirmed to the National Arbitration Forum that the <wwe8.com> domain name is registered with Todaynic.com, Inc. or that Respondent is the current registrant of the name. Todaynic.com, Inc.’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On November 29, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 19, 2011 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@wwe123.com, postmaster@wwe8.com, postmaster@wwe365.com, postmaster@wwecn.com, and postmaster@wwefs.com. Also on November 29, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names are confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names.
3. Respondent registered and used the <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, World Wrestling Entertainment, Inc., uses the WWE marks for retail and entertainment services and for its television programming, pay-per-view, digital media and publishing. Complainant owns numerous trademark registrations for the WWE mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”):
USPTO
Reg. No. 2,772,683 registered October 7, 2003;
Reg. No. 3,056,074 registered January 31, 2006;
Reg. No. 3,412,176 registered April 15, 2008;
Reg. No. 3,412,177 registered April 15, 2008;
Reg. No. 3,489,357 registered August 19, 2008;
Reg. No. 3,538,710 registered November 25, 2008;
Reg. No. 3,541,936 registered December 2, 2008;
Reg. No. 3,541,956 registered December 2, 2008; &
Reg. No. 3,621,017 registered May 12, 2009.
SAIC
Reg. No. 3,211,638 registered August 7, 2003;
Reg. No. 3,211,642 registered September 21, 2003;
Reg. No. 3,211,639 registered October 14, 2003; &
Reg. No. 3,211,641 registered November 7, 2003.
Respondent, Fei Wuxing, FEIWUXING and jeff jackson, registered the <wwe123.com> domain name on February 29, 2004; the <wwe8.com> domain name on July 6, 2006; the <wwe365.com> domain name on February 23, 2009; the <wwecn.com> domain name on November 3, 2003; and the <wwefs.com> domain name on December 5, 2010. Respondent’s <wwe123.com>, <wwe8.com>, and <wwefs.com> domain names resolve to websites displaying links to live, televised and pay-per-view video content copyrighted and owned by Complainant and offering counterfeit versions of Complainant’s products for sale. Respondent’s <wwecn.com> and <wwe365.com> domain names resolve to blank, inactive websites.
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."
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.”).
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has provided sufficient evidence of common control by a single entity and thus chooses to proceed with the instant proceeding.
Complainant owns numerous trademark registrations for the WWE mark with the USPTO and the SAIC:
USPTO
Reg. No. 2,772,683 registered October 7, 2003;
Reg. No. 3,056,074 registered January 31, 2006;
Reg. No. 3,412,176 registered April 15, 2008;
Reg. No. 3,412,177 registered April 15, 2008;
Reg. No. 3,489,357 registered August 19, 2008;
Reg. No. 3,538,710 registered November 25, 2008;
Reg. No. 3,541,936 registered December 2, 2008;
Reg. No. 3,541,956 registered December 2, 2008; &
Reg. No. 3,621,017 registered May 12, 2009.
SAIC
Reg. No. 3,211,638 registered August 7, 2003;
Reg. No. 3,211,642 registered September 21, 2003;
Reg. No. 3,211,639 registered October 14, 2003; &
Reg. No. 3,211,641 registered November 7, 2003.
The Panel holds that these trademark registrations with the USPTO and the SAIC sufficiently establish Complainant’s rights in the WWE mark for the purposes of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Administration for Industry and Commerce was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names are all confusingly similar to Complainant’s WWE mark because the disputed domain names begin with the mark and are followed by one or more numerals or letters and the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither adding extra numerals nor letters to Complainant’s mark alters the mark sufficiently to prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel also determines that the presence of a gTLD has no effect on a confusingly similar analysis under the Policy. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel thus finds that Respondent’s <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names are confusingly similar to Complainant’s WWE mark pursuant to Policy ¶ 4(a)(i).
The Panel holds that Complainant has proven Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) mandates that Complainant bears the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain names to Respondent. In the instant proceeding, the Panel determines that Complainant has adequately satisfied this obligation. Respondent has offered nothing in response, however, and has failed to contest Complainant’s allegations in any way or offer any counter evidence. As a result, the Panel may infer that Complainant’s allegations are true as stated and that Respondent lacks rights and legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will nevertheless consider the evidence presented against the Policy ¶ 4(c) factors to make an independent determination regarding Respondent’s rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use Complainant’s WWE mark. Complainant also alleges that it does not sponsor or endorse Respondent in any way. Complainant contends that Respondent is not commonly known by any of the disputed domain names. The WHOIS information for the disputed domain names identifies the registrants as “Fei Wuxing,” “FEIWUXING,” and “jeff jackson,” none of which bears any relationship to the disputed domain names. The Panel accordingly agrees with Complainant and holds that Respondent is neither commonly known by the disputed domain names nor possesses rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant contends that Respondent’s <wwe123.com>, <wwe8.com>, and <wwefs.com> domain names resolve to websites displaying links to live, televised and pay-per-view video content copyrighted and owned by Complainant, as well as offering counterfeit goods. Complainant argues that Respondent profits from these pay-per-click links and the sale of goods, despite that its use of Complainant’s content is unlicensed. Complainant therefore alleges that Respondent’s activities do not comprise a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees with Complainant and finds that Respondent’s use of the disputed domain names above does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Complainant also alleges that the <wwe365.com> and <wwecn.com> domain names currently resolve to blank websites with no active content. The Panel finds that this failure to actively use the disputed domain name indicates a lack of rights and legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii) as non-use is inconsistent both with a bona fide offering of goods or services and a legitimate noncommercial or fair use as described in Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel holds that Complainant has proven Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered at least five disputed domain names that are the subject of this current proceeding that incorporate Complainant’s WWE mark without authorization from Complainant. Complainant argues that registering multiple domain names containing Complainant’s mark exemplifies a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). The Panel agrees with Complainant. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Complainant argues that Respondent uses the <wwe123.com>, <wwe8.com>, and <wwefs.com> domain names to resolve to websites offering unlicensed video material copyrighted and monetized by Complainant on its own website, selling counterfeit versions of Complainant’s goods, and displaying a listing of pay-per-click links to other third-party websites. Complainant alleges that in each of these instances, Respondent’s activities compete with Complainant’s offering of its own goods and services and divert consumers away from Complainant’s authentic website, which disrupts Complainant’s business. The Panel finds that this competitive disruption of Complainant’s business therefore reveals bad faith registration and use according to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant asserts that Respondent’s use of Complainant’s mark in the <wwe123.com>, <wwe8.com>, and <wwefs.com> domain names and on the resolving websites, as well as its display of Complainant’s goods and services, is intended to attract consumers to Respondent’s resolving websites and create a likelihood of confusion as to the source or sponsorship of the resolving websites. Complainant contends that Respondent aims to profit from its unlicensed provision of video content, sale of counterfeit goods, and pay-per-click revenue generated by the displayed links. The Panel finds that Respondent’s efforts to profit by exploiting and misappropriating Complainant’s WWE mark indicate bad faith registration and use according to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle,LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that the <wwe365.com> and <wwecn.com> domain names currently do not resolve to active websites. The Panel finds that Respondent’s failure to use these disputed domain names for any active purpose demonstrates bad faith registration and use according to 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the WWE mark at the time Respondent registered the disputed domain names. Complainant asserts first that Respondent registered the disputed domain names long after Complainant had registered its mark with the USPTO and the SAIC. Complainant also contends that the content of Respondent’s websites makes it clear that Respondent knew of Complainant’s mark and its fame and sought to capitalize on it. Although constructive notice is generally insufficient to support a finding of bad faith, based on the supplied evidence, the Panel concludes that Respondent had actual notice of Complainant’s rights and thus registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating 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); 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).
The Panel holds that Complainant has proven 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 <wwe123.com>, <wwe8.com>, <wwe365.com>, <wwecn.com>, and <wwefs.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 11, 2012
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