World Wrestling Entertainment, Inc. v. Fuchaoqiang / fuzhaoqiang
Claim Number: FA1307001510044
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Fuchaoqiang / fuzhaoqiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwezhijia.com> and <wwezj.com>, registered with HangZhou AiMing Network Co.,Ltd.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2013; the National Arbitration Forum received payment on July 18, 2013. The Complaint was submitted in both English and Chinese.
On July 17, 2013, HangZhou AiMing Network Co.,Ltd confirmed by e-mail to the National Arbitration Forum that the <wwezhijia.com> and <wwezj.com> domain names are registered with HangZhou AiMing Network Co.,Ltd and that Respondent is the current registrant of the names. HangZhou AiMing Network Co.,Ltd has verified that Respondent is bound by the HangZhou AiMing Network Co.,Ltd 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 22, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 12, 2013 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@wwezhijia.com, postmaster@wwezj.com. Also on July 22, 2013, 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 August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
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
Policy ¶ 4(a)(i):
Policy ¶ 4(a)(ii):
Policy ¶ 4(a)(iii):
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant states that it uses the WWE mark for retail and entertainment services. Complainant notes that it has registered the WWE mark with the USPTO. See Reg. No. 3,412,177 registered on April 15, 2008; Reg. No. 2,772,683 registered on October 7, 2003. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country”), the panel concluded that a USPTO registration was compelling evidence of the complainant’s rights in its mark, regardless of where the respondent resided. The Panel agrees that this USPTO registration satisfies Complainant’s showing of Policy ¶ 4(a)(i) rights in the WWE mark.
Complainant next argues that Respondent has registered the <wwezhijia.com> and <wwezj.com> domain names, and that these domain names are confusingly similar to the WWE mark. Complainant notes that the domain names add the letters “zhijia” and “zj” to the WWE mark. The Panel also notes that the domain names include the generic top-level domain (“gTLD”) “.com.” The Panel agrees that gTLDs are irrelevant to this discussion. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). In Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001), the panel found that the introduction of generic terms cannot distinguish a domain name from a mark. Likewise, the Panel agrees that the <wwezhijia.com> and <wwezj.com> domain names merely add generic Chinese phrases or terms to Complainant’s mark, and thus are not distinguishable from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); 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 these contested domain names. Complainant attests that Respondent has never been authorized to make use of the registered WWE mark. The Panel notes that the WHOIS information lists “fuchaoqiang” as the registrant of both domain names. In Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000), the panel concluded that when a respondent was not referred to as the domain names, and complainant contended that it never authorized the respondent in any way, there could be no finding under Policy ¶ 4(c)(ii). The Panel agrees and concludes that Respondent is not known by either of the <wwezhijia.com> and <wwezj.com> domain names under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent uses the <wwezhijia.com> domain name to host unlicensed and unauthorized copies of Complainant’s pay-per-view WWE film productions. Complainant claims that Respondent also provides hyperlinks that redirect Internet users to an array of third-party businesses. The Panel notes that the <wwezhijia.com> domain name resolves to a website that makes explicit use of the WWE mark in promoting an array of hyperlinks, along with a service that appears to stream Complainant’s wrestling videos for free. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel agreed that there was no bona fide offering when the respondent engaged in a commercial venture that sought to create the impression that the complainant was responsible for the content on the respondent’s websites. The Panel agrees that Respondent’s use of the <wwezhijia.com> domain name to send Internet users to a website that resembles Complainant’s official WWE websites, for Respondent’s exclusive commercial gain through marketing and click-through advertisement revenues, constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant also argues that Respondent makes no active use of the <wwezj.com> domain name beyond offering it for sale. The Panel notes that the <wwezj.com> domain name appears to resolve to a Chinese language website, which in turn sends the Internet user through to a bidding service where the user can attempt to purchase the domain name. The Panel finds that Respondent’s Policy ¶ 4(a)(ii) rights and legitimate interests in this domain name are undercut by its willingness to sell this domain name to the highest bidder. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Complainant has proven this element.
Complainant argues that Respondent is holding the <wwezj.com> domain name for resale, evidencing bad faith. The Panel notes that the domain name appears to be up for auction through the domain name’s resolving websites. The Panel agrees that the registration and use of a domain name such as <wwezj.com> for purposes of reselling the domain name for a profit is evidence of Policy ¶ 4(b)(i) bad faith use and registration. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”)
Complainant next alleges that Respondent registered both of the <wwezhijia.com> and <wwezj.com> domain names in a bad faith attempt to prevent Complainant from reflecting its mark in domain names. In EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005), the panel held that a respondent’s registration of multiple domain names that infringed on the same mark could serve as evidence of Policy ¶ 4(b)(ii) bad faith. The Panel agrees and concludes that Respondent registered both of the wwezhijia.com> and <wwezj.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant claims that its business is being disrupted because Respondent is hosting Complainant’s video content for free through the <wwezhijia.com> domain name, without authorization to do so. The Panel notes that the record appears to verify Respondent’s use of the domain name to host free streams of Complainant’s own WWE content. The Panel finds that the unauthorized distribution of free streams of Complainant’s content evidences Respondent’s Policy ¶ 4(b)(iii) bad faith attempt to disrupt Complainant’s business. See, e.g., 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).
Complainant also argues that Respondent seeks to deceive Internet users into visiting the <wwezhijia.com> domain name under the belief that the content therein is associated with Complainant. The Panel notes that Complainant’s marks and licensed videos are featured prominently throughout the <wwezhijia.com> domain name’s resolving websites. In Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the panel determined that the respondent was “passing off” as the complainant when the domain name’s resolving website took efforts to mimic the appearance of a website the Internet user would associate with Complainant’s business. The Panel agrees that Respondent engaged in Policy ¶ 4(b)(iv) bad faith use and registration of the <wwezhijia.com> domain name for purposes of creating the impression that the hyperlinks, videos, and content on the domain name, from which Respondent generated a pecuniary gain, were being hosted by Complainant.
Complainant contends that Respondent clearly knew of Complainant’s rights when registering the domain names. Complainant claims that the content of the <wwezhijia.com> domain name illustrates that the domain name’s website is filled with unauthorized use of Complainant’s WWE mark as well as Complainant’s copyrighted materials. Furthermore, Complainant claims that Respondent is charged with constructive notice of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding. The Panel finds that due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. The Panel holds that Respondent registered one or both of the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The 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."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
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 <wwezhijia.com> and <wwezj.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 26, 2013
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