World Wrestling Entertainment, Inc. v. wwegp d/b/a duan wenxu
Claim Number: FA1204001439779
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is wwegp d/b/a duan wenxu (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwegp.com>, registered with ASIAREGISTER, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2012; the National Arbitration Forum received payment on April 18, 2012. The Complaint was submitted in both English and Cinese.
On May 2, 2012, ASIAREGISTER, INC. confirmed by e-mail to the National Arbitration Forum that the <wwegp.com> domain name is registered with ASIAREGISTER, INC. and that Respondent is the current registrant of the name. ASIAREGISTER, INC. has verified that Respondent is bound by the ASIAREGISTER, INC. 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 May 4, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 24, 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@wwegp.com. Also on May 4, 2012, the Chinese language 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 May 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant World Wrestling Entertainment, Inc. ("WWE" or "Complainant") is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company (NYSE: WWE) with a market capitalization of approximately USD$603 million as of April 2012. It has spent many years and hundreds of millions of dollars to globally promote its goods and services under its WWE Marks, including in the United States and China.
Complainant uses its WWE mark in entertainment and retail services, including television programming, digital media, and pay-per-view services.
Complainant own trademark rights in its WWE mark through its registrations with authorities in over sixty countries, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772.683 registered October 7, 2003) and the Hong Kong Intellectual Property Department (“HKIPD”) (e.g., Reg. No. 2004B01024 registered June 12, 2002).
Complainant has used the WWE mark since 2002, when it changed its name from “World Wrestling Federation Entertainment” to “World Wrestling Entertainment,” and uses the abbreviation WWE in business.
Respondent registered the <wwegp.com> domain name in March 2004.
The domain name resolves to a website that displays links to enable Internet users to purchase televised video content that is owned and copyrighted by Complainant and counterfeit merchandise, such as apparel that uses trademarks owned by Complainant.
Respondent does not have authorization to use Complainant’s mark or sell content belonging to Complainant.
Respondent’s disputed domain is confusingly similar to Complainant’s WWE mark.
Respondent sells counterfeit items and content on the resolving website for its own commercial gain and had constructive and actual knowledge of Complainant’s rights in the WWE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark rights in its WWE mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772.683 registered October 7, 2003) and independently via registrations with the Hong Kong Intellectual Property Department (“HKIPD”) (e.g., Reg. No. 2004B01024 registered June 12, 2002).
Respondent registered the <wwegp.com> domain name in March 2004.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant’s rights in the WWE mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
When Complainant filed the Complaint, the at-issue domain name resolved to a website that displayed links to enable Internet users to purchase televised video content that is owned and copyrighted by Complainant and counterfeit merchandise, such as apparel that uses trademarks owned by Complainant.
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(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.”).
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Pursuant to Policy ¶ 4(a)(i)Complainant owns trademark rights in the WWE mark through its registrations thereof with the USPTO (e.g., Reg. No. 2,772.683 registered October 7, 2003) and the HKIPD (e.g., Reg. No. 2004B01024 registered June 12, 2002). See ITG Software Solutions, Inc. v. Hao, FA 1427294 (Nat. Arb. Forum Mar. 23, 2012) (finding that the complainant’s registrations with various trademark agencies around the world, including the USPTO and the HKIPD, are sufficient to confer rights in the mark); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
The <wwegp.com> domain name is confusingly similar to Complainant’s WWE mark. Respondent’s domain name contains Complainant’s entire WWE mark and adds the letters “gp.” The at-issue domain name necessarily also includes a generic top-level domain, here “.com.” These alterations are insufficient to distinguish the at-issue domain name from Complainant’s trademark. See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003), (a domain name was confusingly similar when two letters were added to the complainant’s mark because the changes did nothing to distinguish the domain name from the complainant’s registered trademarks); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), (finding that adding a gTLD is irrelevant when analyzing a domain name under Policy ¶ 4(a)(i)).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Respondent is not connected with the WWE mark and has not received consent to use the mark in a domain name or otherwise. Furthermore, Respondent is not known by the <wwegp.com> domain name since Complainant owns rights in the WWE mark globally.
WHOIS information for the at-issue domain name identifies “wwegp / duan wenxu” as the registrant. While “wwegp” reflects the <wwegp.com> domain name, “duan wenxuin” does not. Even though WHOIS information indicates that “wwegp” may be part of the registrant’s name, Respondent is nevertheless not shown to be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“…because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”); see also Cricket Techs., L.L.C. v. Martin, FA 311353 (Nat. Arb. Forum Sept. 27, 2004) (“Although Respondent is listed as the Administrative contact in the WHOIS domain name registration information, nothing suggests that Respondent is commonly known by the <crickettechnologies.com> domain name pursuant to Policy ¶ 4(c)(ii).”).
Furthermore, Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. As also discussed below with regard to bad faith, Respondent used the domain name to host unlicensed video content and counterfeit apparel thereby misleading consumers. Respondent’s use of the <wwegp.com> domain name to compete with Complainant’s business, as well as to offer counterfeit versions of Complainant’s products, does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates that Respondent lacks both rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent engages in bad faith registration and use of the <wwegp.com> domain name because the referenced website is confusingly similar to the WWE mark and offers counterfeit merchandise in order to make, or attempt to make, a monetary gain. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), (finding that the respondent registered and used the disputed domain name in bad faith because the respondent attempted to make a commercial gain by creating a likelihood of confusion as to the complainant’s affiliation with the website by selling counterfeit goods); see also, In Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003), (respondent’s use of the disputed domain name to advertise its business, which sold goods that competed with those of the complainant, establishes bad faith). Therefore, the at-issue domain name confuses consumers and improperly attracts Internet traffic to its website, resulting in Respondent’s monetary gain, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Respondent had actual knowledge of Complainant’s rights in the WWE mark at the time Respondent registered the <wwegp.com> domain name. Respondent’s actual knowledge of Complainant’s mark is conclusively suggested by Respondent’s use of the domain name to host competing services as well as the obvious and undenied connection between Respondent’s hosted content and Complainant’s business. The connection between the content displayed on Respondent’s website and Complainant’s mark demonstrates that Respondent must have had actual knowledge of Complainant’s rights in the mark at the time the domain name was registered. These circumstances evidence bad faith registration under Policy ¶ 4(a)(iii). See 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwegp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 29, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page