World Wrestling Entertainment, Inc. v. Jimmy Short
Claim Number: FA1207001455669
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Jimmy Short (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwespot.com>, registered with eNom.com.
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.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2012; the National Arbitration Forum received payment on July 30, 2012.
On July 30, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <wwespot.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@wwespot.com. Also on July 30, 2012, 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.
A timely Response was received on August 14, 2012 and determined to be complete on August 15, 2012.
Complainant submitted an additional submission to the above listed ICANN case on August 16, 2012 in a timely manner in accordance with Supplemental Rule #7.
On August 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. 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$569 million as of July 2012. It has spent many years and hundreds of millions of dollars to globally promote its goods and services under its WWE marks (the “WWE Marks”).
2. Complainant owns and uses the WWE Marks for consumer products and retail and entertainment services, including television programming, digital media and Pay-Per-View (“PPV”) services.
3. Applications for the WWE Marks were first filed in 2002 in the United States and Complainant now owns trademark rights in its WWE Marks 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 with the Industrial Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. 658,701 registered June 12, 2002);
4. Respondent registered the <wwespot.com> domain name in July 2010, long after Complainant had obtained registrations for its WWE Marks;
5. Respondent’s <wwespot.com> domain name is confusingly similar to Complainant’s WWE Marks;
6. Respondent is not known by the disputed domain name, nor could it be;
7. Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without the intent for commercial gain;
8. Respondent resolves the disputed domain name to a website offering Complainant’s own copyrighted material for the viewing pleasure of diverted Internet users;
9. Respondent prominently displays Complainant’s WWE Marks on Respondent’s website, while also offering pay-per-click links to third-party websites;
10. Respondent is capitalizing on the likelihood that consumers will confuse the source of the disputed domain names as being affiliated with Complainant;
11. Respondent had actual and constructive knowledge of Complainant’s rights in the WWE Marks when Respondent registered the disputed domain name.
B. Respondent makes the following contentions:
1. Respondent is not using content on its website that is not already published publicly;
2. Respondent is running the website to offer WWE content to people who do not have access to it otherwise;
3. Respondent has not used the disputed domain name in bad faith to cause any loss to Complainant.
C. Additional Submissions – Complainant
1. Respondent does not have authorization to post or utilize the copyrighted works of Complainant, who has entered into many other agreements with online content providers to offer Complainant’s videos;
2. Respondent offers links to videos of live PPV events offered by Complainant.
Complainant owns trademark rights in the WWE Marks through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683 registered October 7, 2003) and independently through registration with the Industrial Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. 658,701 registered June 12, 2002).
Respondent registered the <wwespot.com> domain name in July 2010, long after Complainant had obtained registrations for its WWE Marks.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant’s rights in the WWE Marks.
Respondent is not authorized to use Complainant’s WWE Marks 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.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Complainant claims to have established rights in the WWE Marks by registering them with the USPTO (e.g., Reg. No. 2,772,683 registered October 7, 2003) and IPONZ (e.g., Reg. No. 658,701 registered June 12, 2002). Complainant provides an extensive listing of its various trademark registrations, as well as the certificates issued by the USPTO, for the WWE Marks. See Complainant’s Annex 3. Therefore, the Panel finds that Complainant’s registration of the WWE Marks with the USPTO and IPONZ establishes rights in the WWE Marks under 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); 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’)”).
Respondent’s <wwespot.com> domain name is confusingly similar to Complainant’s WWE Marks. The at-issue domain name includes the entirety of Complainants mark, WWE, merely adding the generic term “spot” and necessarily a generic top-level domain (“gTLD”), here “.com.” These changes fail to sufficiently distinguish the disputed domain name from Complainant’s WWE Marks, and, therefore, the Panel finds that Respondent’s <wwespot.com> domain name is confusingly similar to Complainant’s WWE Marks under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also 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.”).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Respondent lacks rights and legitimate interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, 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 known by the disputed domain name, nor could it be. While Respondent does not claim to be commonly known by the disputed domain name in its Response, the WHOIS record identifies the registrant of the disputed domain name as “Jimmy Short.” Based upon the evidence on record, therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent has not made a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain. Complainant states that Respondent resolves the disputed domain name to a website offering Complainant’s own copyrighted material for the viewing pleasure of diverted Internet users, as well as pay-per-click advertisements. The printout provided by Complainant from the resolving website depicts a website offering pay-per-click advertisements and links and a search function wherein Internet users may search the web for Complainant’s videos. See Complainant’s Annex 7. In its Additional Submission, Complainant asserts that Respondent does not have authorization to post or utilize the copyrighted works of Complainant and Complainant has entered into many other agreements with online content providers to offer Complainant’s videos in a legitimate fashion. Complainant also asserts in its Additional Submission that Respondent offers links to videos of live PPV events offered by Complainant. The Panel finds, therefore, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); 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.”).
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).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is capitalizing on the likelihood that consumers will confuse the source of the disputed domain names as being affiliated with Complainant. Respondent resolves the disputed domain name to a website offering Complainant’s own copyrighted material for the viewing pleasure of diverted Internet users. Respondent prominently displays Complainant’s WWE Marks on Respondent’s offending website, while also offering pay-per-click links to third-party websites. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). 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 and constructive knowledge of Complainant’s rights in the WWE Marks when Respondent registered the <wwespot.com> disputed domain name.
Respondent’s inclusion of the WWE Marks on the resolving website evidences a prior knowledge of the importance of the WWE Marks and Complainant’s rights in them. Respondent’s diversion of Internet users to Complainant’s own copyrighted content indicates a modicum of knowledge as well. While Complainant also claims that its pre-existing trademark registrations confer upon Respondent constructive knowledge of Complainant’s rights in the WWE Marks, prior panels have been reluctant to base a finding of bad faith on constructive knowledge alone. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). 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 WWE Marks demonstrates that Respondent must have had actual knowledge of Complainant’s rights in the mark at the time the domain name was registered. The Panel is persuaded that Respondent had actual knowledge of Complainant’s rights in the WWE Marks, and finds, therefore, that Respondent registered the disputed domain name in bad faith 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 <wwespot.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: September 13, 2012
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