national arbitration forum

 

DECISION

 

World Wrestling Entertainment, Inc. v. Tanxinqi

Claim Number: FA1204001441115

 

PARTIES

Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA.  Respondent is Tanxinqi (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwesm.com>, registered with XIN NET TECHNOLOGY CORPORATION.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2012; the National Arbitration Forum received payment on April 27, 2012. The Complaint was submitted in both English and Chinese.

 

On April 27, 2012, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <wwesm.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 April 27, 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 17, 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@wwesm.com.  Also on April 27, 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 23, 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <wwesm.com> domain name is confusingly similar to Complainant’s WWE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <wwesm.com> domain name.

 

3.    Respondent registered and used the<wwesm.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations for its WWE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683 registered October 7, 2003), and with the State Administration for Industry and Commerce of the People's Republic of China (“SAIC”) (e.g., Reg. No. 3,211,638 registered August 7, 2003).  Complainant uses the WWE mark in retail and entertainment services, and consumer products, including television programming, and digital media.

 

Respondent registered the <wwesm.com> domain name in September of 2009.  The disputed domain name resolves to a website that displays unlicensed video material copyrighted and monetized by WWE on its own website and through authorized partners.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s trademark registrations with the USPTO and the SAIC secure its rights in the WWE mark pursuant to Policy ¶ 4(a)(i).

See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).

 

Respondent’s <wwesm.com> domain name is confusingly similar to Complainant’s WWE mark, as it incorporates the WWE mark in its entirety and attaches the letters “s” and “m,” along with the generic top-level domain (“gTLD”) “.com,” which does not distinguish the domain name from Complainant’s mark.  The panel in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) found that a gTLD added to a mark does not properly distinguish the domain name from the mark.  The panel in Nintendo of Am., Inc. v. Lizmi, FA 94329 (Nat. Arb. Forum Apr. 24, 2000) stated that the respondent’s domain names included extra numerals and letters, which did not change its confusing similarity to the complainant’s mark.  Thus, the Panel conclude that despite the changes made to Complainant’s mark, Respondent’s wwesm.com> domain name is confusingly similar to Complainant’s WWE mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the <wwesm.com> domain name, and has no license or authorization to use the domain name.  The WHOIS information for the disputed domain name identifies “Tanxinqi” as the domain name registrant, which is not similar to the disputed domain name.  The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) concluded that a respondent is not commonly known by a domain name when the WHOIS information and other evidence on record does not support such a finding.  In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel stated that a respondent that is not known by a mark does not have rights in a domain name.  The Panel finds that based on the WHOIS information and lack of other supporting evidence, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), and therefore lacks rights and legitimate interests in the <wwesm.com> domain name.

 

Complainant submits evidence that the <wwesm.com> domain name resolves to a website that displays unlicensed content identical to the content offered by Complainant and its authorized partners, such as videos and goods, from which Respondent derives revenue.  Complainant alleges that such use is not consistent with a bona fide offering of goods or services, and is not a legitimate noncommercial or fair use of the domain name.  The Panel agrees and finds that Respondent is not using the disputed domain name to make 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 Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see also 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.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s unauthorized use of Complainant’s mark to sell Complainant’s products and to divert Internet users to Respondent’s competing business constitutes a disruption to Complainant’s business, and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).  Respondent uses the <wwesm.com> domain name “as part of an operation to allow its viewers to watch unlicensed video material” belonging to Complainant, further evidence of bad faith registration and use under Policy ¶ 4(b)(iii).

 

Respondent registered the domain name with the purpose of confusing consumers, attracting Internet traffic, and generating revenue by hosting “pay-per-click” links on its resolving website.  The Panel finds that Respondent intentionally registered and uses the <wwesm.com> domain name to attract Internet users and create a likelihood of confusion, resulting in a profit to Respondent.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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)(iv) 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 alleges that Respondent had both constructive and actual knowledge of Complainant’s rights in the WWE mark prior to the time Respondent registered the disputed domain name.  Complainant contends that its many trademark registrations give Respondent constructive notice of Complainant’s rights in the mark, and that Respondent’s use of the disputed domain name to display content belonging to Complainant is evidence that Respondent had actual knowledge of Complainant’s rights in the mark.  The Panel agrees and finds that this is further evidence that Respondent registered and used the <wwesm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwesm.com> domain name be TRANSFERRED from Respondent to Complianant.

 

 

Sandra J. Franklin, Panelist

Dated:  May 29, 2012

 

 

 

 

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