World Wrestling Entertainment, Inc. v. REDA EL KASRAOUI / RAP2NORD.MA
Claim Number: FA1208001456457
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is REDA EL KASRAOUI / RAP2NORD.MA (“Respondent”), Morocco.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <superwwe.com> and <wwe-download.com>, registered with Name.com Llc, and <wwestreaming.com>, registered with Godaddy.com, Llc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2012; the National Arbitration Forum received payment on August 3, 2012.
On August 2, 2012, Name.com Llc confirmed by e-mail to the National Arbitration Forum that the <superwwe.com> and <wwe-download.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 August 3, 2012, Godaddy.com, Llc confirmed by e-mail to the National Arbitration Forum that the <wwestreaming.com> domain name is registered with Godaddy.com, Llc and that Respondent is the current registrant of the names. Godaddy.com, Llc has verified that Respondent is bound by the Godaddy.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 August 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@superwwe.com, postmaster@wwe-download.com, and postmaster@wwestreaming.com. Also on August 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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
1. Complainant uses the WWE mark to provide retail and entertainment services relating to its television programming, pay-per-view programming, and digital media.
2. Complainant owns trademark registrations for the WWE mark with the Moroccan Industrial and Commercial Property Office (“MICPO”) (Reg. No. 82.106 registered June 14, 2002) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683 registered October 7, 2003).
3. Respondents’ <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names are confusingly similar to Complainant’s WWE mark.
4. Respondents are not commonly known by the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names.
5. Respondents are not connected or affiliated with Complainant and Complainant did not license or authorize Respondent to use the WWE mark.
6. Respondents use the <superwwe.com> domain name to resolve to a website that contains unlicensed copies of Complainant’s video content.
7. Respondents commercially benefit from the advertisements found on the resolving website.
8. Respondents do not make an active use of the <wwe-download.com> and <wwestreaming.com> domain names.
9. Respondents were previously ordered to transfer domain names to Complainant by a UDRP panel. See World Wrestling Entm’t. v. REDA EL KASRAOUI, FA 1416010 (Nat. Arb. Forum Dec. 29, 2011).
10. Respondents use the <superwwe.com> domain name to host Complainant’s unlicensed content and to provide advertisements, from which Respondent commercially benefits.
11. Respondents are attempting to create confusion as to Complainant’s affiliation with the disputed domain name for Respondent’s commercial benefit.
12. Respondents fail to make an active use of the <wwe-download.com> and <wwestreaming.com> domain names.
13. Respondents registered the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names with knowledge of Complainant’s WWE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Worldwide Wrestling Entertainment, Inc., uses the WWE mark to provide retail and entertainment services relating to professional wrestling and to its television programming, pay-per-view programming, and digital media. Complainant owns trademark registrations for the WWE mark with the Moroccan Industrial and Commercial Property Office (“MICPO”) (Reg. No. 82.106 registered June 14, 2002) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683 registered October 7, 2003).
Respondents registered the <superwwe.com> and <wwe-download.com> domain names in May 2012 and the <wwestreaming.com> domain name in November, 2011. Respondents use the <superwwe.com> domain name to resolve to a website that contains unlicensed copies of Complainant’s video content. Respondents do not make an active use of the <wwe-download.com> and <wwestreaming.com> domain names.
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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent, REDA EL KASRAOUI, has the contact e-mail address of macroserver@hotmail.com and Respondent, RAP2NORD.MA, has the contact e-mail address of macroserver@hotmail.com. Complainant further argues that the WHOIS information for all three of the disputed domain names lists the same address. The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings. Throughout this Decision, Respondents are collectively referred to as “Respondent.”
Complainant uses the WWE mark to provide retail and entertainment services relating to its television programming, pay-per-view programming, and digital media. Complainant owns trademark registrations for the WWE mark with the MICPO (Reg. No. 82.106 registered June 14, 2002) and USPTO (e.g., Reg. No. 2,772,683 registered October 7, 2003). In Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), the panel found that the complainant’s numerous registrations for its HONEYWELL mark throughout the world were sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i). Based on Complainant’s trademark registrations, the Panel finds that Complainant owns rights in the WWE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names are confusingly similar to Complainant’s WWE mark. The disputed domain names feature the combination of Complainant’s mark with generic terms, such as “super,” “download,” or “streaming.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term. Therefore, the Panel finds that the addition of generic terms to Complainant’s mark does not remove the disputed domain names from the realm of confusing similarity. The <wwe-download.com> domain name also adds a hyphen and all of the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names contain the generic top-level domain (“gTLD”) “.com.” In Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), and Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panels found that the additions of a hyphen or a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. Thus, the Panel finds Respondent’s <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names are confusingly similar to Complainant’s WWE mark pursuant to Policy ¶ 4(a)(i).
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. 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).
Complainant contends that Respondent is not commonly known by the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names. Respondent is not connected or affiliated with Complainant and Complainant did not license or authorize Respondent to use the WWE mark. The WHOIS information is not similar to any of the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names. Respondent did not provide any evidence that it is commonly known by the domain names. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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. The Panel finds that Respondent is not commonly known by the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names for the purpose of Policy ¶ 4(c)(ii).
Respondent uses the <superwwe.com> domain name to resolve to a website that contains unlicensed copies of Complainant’s video content. Complainant argues that Respondent commercially benefits from the advertisement hyperlinks found on the resolving website. In Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), the panel determined that use of the complainant’s mark to offer the complainant’s perfume without a license or authorization from the complainant was not bona fide use. In Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003), the panel held that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees was not a bona fide offering of good or services. The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <superwwe.com> domain name under Policy ¶ 4(c)(iii).
Respondent does not make an active use of the <wwe-download.com> and <wwestreaming.com> domain names. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel concluded that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name. Therefore, the Panel determines that Respondent’s failure to use the <wwe-download.com> and <wwestreaming.com> domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names.
Respondent was previously ordered to transfer domain names to Complainant by a UDRP panel. See World Wrestling Entm’t. v. REDA EL KASRAOUI, FA 1416010 (Nat. Arb. Forum Dec. 29, 2011). This previous UDRP case and the registration of three confusingly similar disputed domain names indicate that Respondent registered the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names in bad faith. In Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005), the panel found that the “[r]espondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and took notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations.” In Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel determined that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Consequently, the Panel finds that Respondent registered and uses the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Respondent uses the <superwwe.com> domain name to host Complainant’s unlicensed content and to provide advertisements, from which Respondent commercially benefits. Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name for Respondent’s commercial benefit. In Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), the panel stated that “[t]he contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.” In ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000), the panel found bad faith where the respondent linked the domain name to another domain name, <iwin.com>, and was presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there. Thus, the Panel finds that Respondent registered and uses the <superwwe.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent fails to make an active use of the <wwe-download.com> and <wwestreaming.com> domain names. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Therefore, the Panel finds that Respondent registered and uses the <wwe-download.com> and <wwestreaming.com> domain names in bad faith.
Respondent registered the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names with actual knowledge of Complainant’s WWE mark. Actual knowledge is evidence of 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <superwwe.com>, <wwe-download.com>, and <wwestreaming.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 14, 2012
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