World Wrestling Entertainment, Inc. v. chen xiufen
Claim Number: FA1201001424595
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is chen xiufen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwe520.com> and <wwewwf.com>, registered with Xi Net Technology Corporation.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 16, 2012. The Complaint was submitted in both Chinese and English.
On January 15, 2012, Xi Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <wwe520.com> and <wwewwf.com> domain names are registered with Xi Net Technology Corporation and that Respondent is the current registrant of the names. Xi Net Technology Corporation has verified that Respondent is bound by the Xi 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 January 23, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 13, 2012 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@wwe520.com and postmaster@wwewwf.com. Also on January 23, 2012, 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 February 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a 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 <wwe520.com> and <wwewwf.com> domain names are confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wwe520.com> and <wwewwf.com> domain names.
3. Respondent registered and used the <wwe520.com> and <wwewwf.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, World Wrestling Entertainment, Inc., uses its WWE mark in connection with retail and entertainment services, consumer products, television and pay-per-view programming, digital media, and publishing. Complainant has registered its WWE mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”), among other trademark offices:
USPTO
Reg. No. 2,772,683 registered October 7, 2003;
Reg. No. 3,056,074 registered January 31, 2006;
Reg. No. 3,412,177 registered April 15, 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.
SAIC
Reg. No. 3,211,638 registered August 7, 2003;
Reg. No. 3,211,641 registered November 7, 2003;
Reg. No. 3,211,642 registered September 21, 2003; &
Reg. No. 3,211,639 registered October 14, 2003.
Respondent, chen xiufen, registered the <wwe520.com> domain name on October 4, 2009 and the <wwewwf.com> domain name on December 26, 2009. The disputed domain names resolve to websites offering video content and pay-per-click advertisements.
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.
The Panel finds that registration of the WWE mark with various trademark authorities indicates establishes Complainant’s rights in the WWE mark for the purposes of Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <wwe520.com> and <wwewwf.com> domain names are confusingly similar to Complainant’s WWE mark as both domain names combine Complainant’s mark with either a string of letters or numerals and the generic top-level domain (“gTLD”) “.com.” Prior panels have held that added letters or numerals do not alleviate confusing similarity. See Am. Online, Inc. v.. Fu, D2000-1374 (WIPO Dec. 11, 2000) (holding that the addition of the numerals “502” and “520” to the mark did not create a domain name distinct 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.”). Prior UDRP cases have also shown that a gTLD is irrelevant for a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel concludes that Respondent’s <wwe520.com> and <wwewwf.com> domain names are confusingly similar to Complainant’s WWE mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names.
Complainant asserts that Respondent has no connection or affiliation with Complainant and that Respondent does not have any license or consent to use Complainant’s WWE mark in any way. Complainant also states that it does not sponsor or endorse Respondent in any manner. Complainant alleges that Respondent is not known as either of the disputed domain names. The WHOIS information for the disputed domain names lists the registrant as “chen xiufen,” which suggests no apparent connection with the disputed domain names. The Panel accordingly determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Complainant contends that the websites resolving from the disputed domain names distribute Complainant’s video content and display pay-per-click advertisements to other third-party websites, including some which also distribute Complainant’s video content. Complainant argues that Respondent uses the disputed domain names to earn profit from the diverted traffic it sends to its partners, which does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). The Panel agrees with Complainant. See 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); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <wwe520.com> and <wwewwf.com> domain names to divert Internet users from Complainant and to allow viewers to watch unlicensed, copyrighted video materials at the resolving websites, and to collect pay-per-click fees. Respondent’s unauthorized provision of the videos competes with Complainant’s offerings and disrupts Complainant’s business by diverting consumers away from Complainant. The Panel finds that Respondent’s activities at the resolving websites demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).
Respondent attempts to attract and confuse Internet users for profit through the pay-per-click links at the websites resolving from the disputed domain names. The Panel concludes that Respondent’s aim to profit from the confusion resulting from its use of Complainant’s WWE mark indicates bad faith registration and use pursuant to 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); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent’s disputed domain names were registered long after Complainant registered its WWE trademark. Complainant argues that one look at Respondent’s website makes it clear that Respondent knew of Complainant’s mark and rights. As a result, Complainant asserts that Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark. Although constructive knowledge is not sufficient by itself to find bad faith, the Panel concludes that adequate evidence exists to find that Respondent had actual knowledge of Complainant’s mark and therefore registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) (“Mere constructive notice will usually not support a finding of bad faith.”); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <wwe520.com> and <wwewwf.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page