national arbitration forum

 

DECISION

 

World Wrestling Entertainment, Inc. v. adil zahid

Claim Number: FA1307001510265

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwe-tv.com>, registered with GODADDY.COM, LLC.

 

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2013; the National Arbitration Forum received payment on July 19, 2013.

 

On July 18, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <wwe-tv.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 July 22, 2013, the Forum served the Complaint and all Annexes, including a 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@wwe-tv.com.  Also on July 22, 2013, 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

a)    Complainant contends it has rights in the WWE mark, used in connection with global entertainment services. Complainant hosts television broadcasting that extends to over 145 countries, reaching 500 million homes worldwide.

b)    Complainant is the owner of registrations for the WWE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,777,683 registered Oct. 7, 2003) as well as with the Office for the Harmonization of the International Market (“OHIM”) of the European Union (Reg. No. 2,732,493 registered June 11, 2002).

c)    Respondent’s <wwe-tv.com> domain name is confusingly similar to Complainant’s WWE mark. The disputed domain name contains Complainant’s mark in its entirety while adding the letters “tv.”

d)    Respondent does not own any rights or legitimate interests in the <wwe-tv.com> domain name.

a.    Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way.

b.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The <wwe-tv.com> domain name resolves to a website featuring pay-per-click advertisements as well as unlicensed video content that is identical to Complainant’s legitimate copyrighted commercial content.

e)    Respondent registered and is using the <wwe-tv.com> domain name in bad faith.

a.    Respondent’s <wwe-tv.com> domain name is disrupting Complainant’s business because the resolving website allows Internet users to view unlicensed material that Complainant’ would otherwise profit from.

b.    Respondent is intentionally attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s WWE mark. Respondent receives pay-per-click revenue from the advertisements displayed on the resolving website via a confusingly similar domain name.

c.    Respondent has knowledge of Complainant’s WWE mark at the time of registering the disputed domain name because of Respondent’s use of Complainant’s WWE mark in the disputed domain name and the many reference made to Complainant on the resolving website.

f)     Respondent registered the <wwe-tv.com> domain name in February 2011.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its WWE mark.

2.    Respondent’s <wwe-tv.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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

 

Complainant contends it has rights in the WWE mark, used in connection with global entertainment services. Complainant asserts it is the owner of registrations for the WWE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,777,683 registered Oct. 7, 2003) as well as with the Office for the Harmonization of the International Market (“OHIM”) of the European Union (Reg. No. 2,732,493 registered June 11, 2002). Past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a trademark registration with a government agency of a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights the WWE mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant next alleges Respondent’s <wwe-tv.com> domain name is confusingly similar to Complainant’s WWE mark. Complainant asserts that the disputed domain name contains Complainant’s mark in its entirety while adding the letters “tv.” Additionally, the Panel notes that the disputed domain name also adds a hyphen and the generic top level domain (“gTLD”) “.com.” First, the Panel  finds that the addition of the letters “tv” does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Veniece Newton v. Trevon Angulo, FA 1011424 (Nat. Arb. Forum Aug. 3, 2007) (finding that the addition of “tv” did not distinguish the <fashionfrenzytv.com> domain name from the complainant’s FASHION FRENZEY mark). Next, the Panel finds that the addition of a gTLD and a hyphen are irrelevant in regards to Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <wwe-tv.com> domain name is confusingly similar to Complainant’s WWE mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 contends that Respondent does not own any rights or legitimate interests in the <wwe-tv.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS information for the disputed domain name lists “adil zahid” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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). Therefore, because Respondent was not authorized by Complainant to use the WWE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <wwe-tv.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant claims 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. Complainant states that the <wwe-tv.com> domain name resolves to a website featuring pay-per-click advertisements as well as unlicensed video content that is identical to Complainant’s legitimate copyrighted commercial content. Past panels have found that diverting Internet users to a confusingly similar domain name for the benefit of a respondent is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Previous panels have also held that competing with the complainant’s business does not give rise to rights or legitimate interests in the disputed domain name under the Policy. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). The Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or 4(c)(iii) by posting competing content and pay-per-click advertisements at the resolving website.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and uses the <wwe-tv.com> domain name in bad faith. Complainant asserts that Respondent’s <wwe-tv.com> domain name is disruptive to Complainant’s business because the resolving website allows Internet users to view unlicensed material that Complainant would otherwise profit from. Past panels have found such a competitive use of a disputed domain name to be in 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).”).  The Panel agrees that Respondent’s use of the disputed domain name to host unlicensed video content constitutes disruption to Complainant’s business. The Panel finds that Respondent’s competitive use of the <wwe-tv.com> domain name is disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii).

 

Complainant claims that Respondent is intentionally attracting Internet users for commercial gain by creating a likelihood of confusion with Complainant’s WWE mark. Complainant states that Respondent receives pay-per-click revenue from the advertisements displayed on the resolving website via a confusingly similar domain name. Past panels have found that such a competing use is in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Therefore, the Panel finds that Respondent has attempted to obtain commercial gain by creating a likelihood of confusion with Complainant’s mark in violation of Policy ¶ 4(b)(iv).

 

Lastly, Complainant contends that Respondent has knowledge of Complainant’s WWE mark at the time of registering the disputed domain name because of Respondent’s use of Complainant’s WWE mark in the disputed domain name and the many reference made to Complainant on the resolving website. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).

 

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 <wwe-tv.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August  29, 2013

 

 

 

 

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