World Wrestling Entertainment, Inc. v. REDA EL KASRAOUI
Claim Number: FA1111001416010
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is REDA EL KASRAOUI (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com>, registered with Name.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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 17, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC has verified that Respondent is bound by the Name.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 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@wrestlemania33.com, postmaster@wwealumni.com, postmaster@wwecablenetwork.com, postmaster@wwehouseoffame.com, postmaster@wwelivechat.com, postmaster@wwenetwork.net, postmaster@wwerawsupershow.com, postmaster@wweworldtour.com, and postmaster@wweworldwide.com. Also on November 22, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names are confusingly similar to Complainant’s WWE mark.
Respondent’s <wrestlemania33.com> domain name is confusingly similar to Complainant’s WRESTLEMANIA mark.
2. Respondent does not have any rights or legitimate interests in the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names.
3. Respondent registered and used the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, World Wrestling Entertainment, Inc., provides wrestling-related retail and entertainment services. Complainant holds trademark registrations for both the WWE (e.g. Reg. No. 2,772,683 registered October 7, 2003) and WRESTLEMANIA marks (e.g. Reg. No. 1,432,884 registered March 17, 1987) with the United States Patent and Trademark Office (“USPTO”).
Respondent, REDA EL KASRAOUI, registered the <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names on October 18, 2011 and registered the <wrestlemania33.com> and <wwelivechat.com> domain names on October 19, 2011. The <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwelivechat.com>, <wweworldtour.com>, and <wweworldwide.com> domain names resolve to parked websites featuring links to third-party sites. The <wwehouseoffame.com>, <wwerawsupershow.com>, and <wwenetwork.net> domain names resolve to copycat sites featuring unlicensed content identical to Complainant’s commercial 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."
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.
Complainant argues that its trademark registrations with the USPTO for the WWE (e.g. Reg. No. 2,772,683 registered October 7, 2003) and WRESTLEMANIA marks (e.g. Reg. No. 1,432,884 registered March 17, 1987) confer rights in the marks under Policy ¶ 4(a)(i). UDRP precedent makes it clear that registration of a mark with the USPTO is sufficient to overcome the evidentiary threshold required to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established right in the WWE and WRESTLEMANIA marks under Policy ¶ 4(a)(i). It does not matter that Respondent operates in a different country then that in which Complainant holds its registrations. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that the <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names are confusingly similar to Complainant’s WWE mark for the purposes of Policy ¶ 4(a)(i). Each mark wholly includes Complainant’s mark, while adding terms descriptive of Complainant’s retail and entertainment businesses, including “alumni,” “cable network,” “house of fame,” “live chat,” “network,” “raw super show,” “world tour,” and “worldwide.” The disputed domain names also omit the spaces between the words and add a generic top-level domain (“gTLD”). Past panels have found that the addition of terms descriptive of a complainant’s business do not distinguish a disputed domain name. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Additionally, the affixation of a gTLD cannot distinguish a disputed domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore holds that the disputed domain names are confusingly similar to Complainant’s WWE mark for the purposes of Policy ¶ 4(a)(i).
Complainant also alleges that the <wrestlemania33.com> domain name is confusingly similar to Complainant’s WRESTLEMANIA mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, while adding the number “33” and the gTLD “.com.” The addition of a number to a registered mark is insufficient to remove a disputed domain name from the realm of confusing similarity. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)). The affixation of the gTLD “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore holds that the <wrestlemania33.com> domain name is confusingly similar to Complainant’s WRESTLEMANIA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) to be satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In contending that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), Complainant also asserts that it has never licensed or authorized Respondent’s use of the names. The WHOIS information lists the domain name registrant as “REDA EL KASRAOUI” for each of the disputed domain names. The Panel finds no similarity between “REDA EL KASRAOUI” and the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names. Finally, Respondent has failed to submit a Response in this case, meaning that there is no evidence in the record to suggest that Respondent is in fact commonly known by any of the names. In light of these findings, the Panel concludes that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).
Complainant further alleges that Respondent’s use of the disputed domain names 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). Respondent’s <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwelivechat.com>, <wweworldtour.com>, and <wweworldwide.com> domain names resolve to parked websites featuring links to unrelated, third-party sites. Previous panels have determined that the resolution of a disputed domain name to this type of website does not demonstrate rights or legitimate interests in the disputed domain. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding 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); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). In accordance with this precedent, the Panel holds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
Respondent’s <wwehouseoffame.com>, <wwerawsupershow.com>, and <wwenetwork.net> domain names resolve to copycat sites featuring unlicensed content identical to Complainant’s commercial content. This type of use cannot be considered bona fide or legitimate, as Respondent is unfairly capitalizing on the marketability of Complainant’s goods and services. This situation is similar to when a respondent sells a complainant’s goods without authorization. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant). Based on the foregoing, the Panel concludes that Respondent’s use of the disputed domain names 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).
The Panel finds Policy ¶ 4(a)(ii) to be satisfied.
Complainant claims that Respondent’s use of the <wwehouseoffame.com>, <wwerawsupershow.com>, and <wwenetwork.net> domain names to resolve to copycat sites featuring unlicensed content identical to Complainant’s commercial content constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent uses these disputed domain names to, among other things, broadcast video of Complainant’s copyright-protected entertainment. Complainant monetizes this video content on its own website. Because Respondent is offering Complainant’s services without Complainant’s consent, this will undoubtedly cut into Complainant’s share of its own legitimate business. The Panel finds that Respondent’s unauthorized provision of Complainant’s services disrupts Complainant’s business within the meaning of Policy ¶ 4(b)(iii), constituting bad faith registration and use. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s registration and use of the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). As noted above, Respondent’s <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwelivechat.com>, <wweworldtour.com>, and <wweworldwide.com> domain names resolve to a website hosting unrelated, third-party hyperlinks and Respondent’s <wwehouseoffame.com>, <wwerawsupershow.com>, and <wwenetwork.net> domain names resolve to a website selling content unlicensed by Complainant. Respondent’s operation of websites at confusingly similar domain names substantially increases the probability that Internet users will mistakenly believe that Respondent’s websites are affiliated with Complainant’s business in some way. The Panel infers that Respondent profits from the operation of its websites, thereby making their operation economically viable. In this way, Respondent seeks to commercially benefit from the confusion it creates as to Complainant’s affiliation with the websites housed at the confusingly similar domain names. The Panel therefore finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also contends that Respondent could not have registered and used the disputed domain names without actual or constructive knowledge of Complainant and its rights in the WWE and WRESLTLEMANIA marks. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. 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 finds that Complainant has proven that Respondent has actual knowledge of Complainant's marks and, therefore, that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) to be satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wrestlemania33.com>, <wwealumni.com>, <wwecablenetwork.com>, <wwehouseoffame.com>, <wwelivechat.com>, <wwenetwork.net>, <wwerawsupershow.com>, <wweworldtour.com>, and <wweworldwide.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 29, 2011
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