World Wrestling Entertainment, Inc. v. xie yue hong / Li xiao an
Claim Number: FA1307001511882
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is xie yue hong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <shopswwe.com> and <wwestores.com> registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn, and <topwwe.com> and <wweshopfr.com> registered with 35 Technology 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2013; the National Arbitration Forum received payment on July 30, 2013. The Complaint was submitted in English and Chinese.
On July 29, 2013, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <shopswwe.com> and <wwestores.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and that Respondent is the current registrant of the names. Also on July 29, 2013, 35 Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <topwwe.com> and <wweshopfr.com> domain names are registered with 35 Technology Co., Ltd and that Respondent is the current registrant of the names. Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and 35 Technology Co., Ltd have verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and 35 Technology Co., Ltd registration agreements 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 31, 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 20, 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@shopswwe.com, postmaster@topwwe.com, postmaster@wweshopfr.com, postmaster@wwestores.com. Also on July 31, 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 26, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company operating a global business centered on goods and services that involve wrestling performances and related entertainment.
2. Complainant has obtained trademark registrations for the WWE mark. See United States Patent and Trademark Office ("USPTO") Reg. No. 3,412,177 registered Apr. 15, 2008; see also China’s State Administration for Industry and Commerce (“SAIC”) Reg. No. 3,211,642 registered Sep. 21, 2003.
3. Respondent registered the disputed domain names on the following dates: <shopswwe.com>, March 5, 2013, <topwwe.com>, March 8, 2013,<wweshopfr.com>, July 27, 2012 and <wwestores.com>, March 6, 2013.
4. Respondent uses the <shopswwe.com> and <topwwe.com> domain names to operate an online store specializing in the sale of counterfeit WWE merchandise. Respondent uses the <wweshopfr.com> domain name to run an unrelated business. Respondent has made no active use of the <wwestores.com> domain name.
.
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.”).
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, 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 each domain name’s WHOIS information shares the same email address and the same phone number. Complainant claims that as in Las Vegas Sands Corp. v. Paul Pave co a/k/a Pavelco Associates Inc., FA 1157028 (Nat. Arb. Forum Apr. 25, 2008), these similarities between the listed registrants suggest that all of the domain names are owned by Respondent.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark Complainant argues that it uses the WWE mark to operate a global business centered on goods and services that involve wrestling performances and related entertainment. Complainant states that it has obtained trademark registrations for the WWE mark. See USPTO Reg. No. 3,412,177 registered Apr. 15, 2008; see also SAIC Reg. No. 3,211,642 registered Sep. 21, 2003. The Panel finds that Complainant’s showing of SAIC and USPTO registration satisfies Policy ¶ 4(a)(i). See 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’)”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WWE mark .Complainant argues that Respondent’s domain names add generic terms to the WWE mark, along with the gTLD “.com.” The Panel agrees that all of the terms added to the domain names are merely generic and thus amplify the confusing similarity of the name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel concludes that the domain names is confusingly similar to the mark under Policy ¶ 4(a)(i), as the gTLD is also an irrelevant addition. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WWE trademark and to
use it in its domain names, merely adding the word “shops” before the trademark in the case of the <shopswwe.com> domain name, the word “top” before the trademark in the case of the <topwwe.com> domain name, the word “shop” and the letters “fr” after the trademark in the case of the <wweshopfr.com> domain name and the word “stores” after the trademark in the case of <wwestores.com>;
(b) Respondent has then used the <shopswwe.com> and <topwwe.com> domain names to operate an online store specializing in the sale of counterfeit WWE merchandise , the <wweshopfr.com> domain name to run an unrelated business and has made no active use of the <wwestores.com> domain name;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent is not known by these domain names. Complainant attests that Respondent has not been licensed, authorized, or approved to use the WWE mark in domain names. The Panel notes that the WHOIS information for the disputed domain names does not provide any evidence that Respondent goes by any of these domain names. The Panel finds that Respondent is not commonly known by the 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);
(e) Complainant also claims that Respondent uses the <shopswwe.com> and <topwwe.com> domain names to operate online stores specializing in the sale of counterfeit WWE merchandise. The Panel notes that the domain names resolve to online stores that explicitly use the WWE mark in selling what appear to be counterfeit versions of Complainant’s WWE-branded goods. See Complainant’s Ex. 8. The Panel finds that Respondent’s unauthorized sale of these counterfeit goods does not create either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”);
(f)The Panel next notes that the <wweshopfr.com> domain name is being used for an unrelated business conducted in the Chinese language. See Complainant’s Ex. 8. The Panel agrees that registration of a domain name that infringes on the WWE mark for purposes of hosting an unrelated business brings to question Respondent’s Policy ¶ 4(a)(ii) rights in this domain name. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant);
(g) Complainant next notes that the <wwestores.com> domain name does not resolve to any active website. The Panel notes that the record supports this contention, and it appears that entering the domain name into a web browser produces an error message. See Complainant’s Ex. 8. In Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) the panel agreed that the respondent could not have had any rights or legitimate interests in the disputed domain name when the respondent registered the domain name and then failed to make even the most minimal active use of the domain name. The Panel here agrees that Respondent is without any Policy ¶ 4(a)(ii) rights or legitimate interests with regard to the <wwestores.com> domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in any of the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s registration of four infringing domain names showcases a pattern of bad faith use and registration. In Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004), the panel agreed that the presence of multiple domain names in a single dispute gives rise to an inference of Policy ¶ 4(b)(ii) bad faith. The Panel agrees that Respondent’s bad faith in regards to each of the disputed domain names may be inferred from the fact that Respondent registered each of these domain names, which are now the subject of a single proceeding.
Secondly, Complainant avers that Respondent is conducting an unauthorized and illegitimate sale of counterfeit WWE goods through the <shopswwe.com> and <topwwe.com> domain names’ websites. The Panel again notes that the domain names resolve to online stores promoting various unlicensed and potentially counterfeit copies of Complainant’s WWE goods. See Complainant’s Ex. 8. The sale of counterfeit goods through a confusingly similar domain name such as <shopswwe.com> or <topwwe.com> suggests Policy ¶ 4(b)(iv) bad faith and the Panel so finds. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Thirdly, Complainant argues that Respondent’s use of the <wweshopfr.com> domain name for an unrelated business is in bad faith. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel agreed that the respondent’s use of a confusingly similar domain name to divert Internet users searching for the complainant to respondent’s own website, where respondent was likely profiting, illustrated an attempt to capitalize on the likelihood that Internet users would mistake the complainant as the source of the domain name’s content. The Panel here agrees that Respondent’s Policy ¶ 4(b)(iv) bad faith in regards to the <wweshopfr.com> domain name can be inferred from Respondent’s use of the domain name to obtain commercial gains through an enterprise unrelated to Complainant’s legitimate WWE business.
Fourthly, Complainant submits that Respondent’s inactive use of the <wwestores.com> domain name creates an inference of bad faith. The Panel again notes that the domain name does not resolve to any active website. See Complainant’s Ex. 8. Previous panels have found that the inactive holding of a domain name can present an inference of bad faith when it appears that the domain name would immediately be operating in bad faith when the respondent elects to put it to use. See, e.g., Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel thus agrees that Respondent’s inactive holding of the <wwestores.com> domain name suggests Policy ¶ 4(a)(iii) bad faith.
Fifthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names
using the WWE mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopswwe.com>, <topwwe.com>, <wweshopfr.com>, and <wwestores.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 30, 2013
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