World Wrestling Entertainment, Inc. v. Rigen Wu
Claim Number: FA1312001532821
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Rigen Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwe9.com> and <wwe7.net>, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on December 5, 2013.
On December 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwe9.com> and <wwe7.net> domain names are 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 December 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@wwe9.com, postmaster@wwe7.net. Also on December 5, 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 January 2, 2014, 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.
i. Respondent is not actually known as “WWE9” or “WWE7,” nor could it be.
ii. Respondent registered and is currently using these domain names for its commercial gain via pay-per-click advertisements offered on the sites.
i. Respondent has registered multiple domain names that incorporate WWE marks in their entirety.
ii. Respondent uses the <wwe9.com> and <wwe7.net> domain names in bad faith, as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by WWE on its own <wwe.com> website. Such conduct disrupts Complainant’s business.
iii. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the WWE marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of services purportedly offered from Respondent’s websites.
iv. Respondent is charged with constructive knowledge of Complainant’s trademark rights in the WWE marks. Respondent actually knew of, and sought to capitalize on, the game and value of the WWE marks, at the time the domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an integrated media organization and a recognized leader in global entertainment.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WWE mark (e.g., Reg. No. 2,772,683, registered October 7, 2003).
3. Respondent registered the <wwe9.com> domain name on August 17, 2010 and the <wwe7.net> domain name on November 19, 2009.
4. Respondent uses the <wwe9.com> and <wwe7.net> domain names to allow its viewers to watch unlicensed video material copyrighted and monetized by WWE on its own <wwe.com> website.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that it is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company with a market capitalization of approximately $1.07 billion USD as of November 2013. Complainant argues that it is committed to family-friendly content across all of its platforms including television programming, pay-per-view, digital media, and publishing. Complainant claims that it is the owner of trademark registrations with the USPTO for the WWE mark (e.g., Reg. No. 2,772,683, registered October 7, 2003). See Complainant’s Annex 3. The Panel finds that while WHOIS information suggests that Respondent resides and operates in China, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the WWE mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s WWE trademark. Complainant contends that Respondent’s <wwe9.com> and <wwe7.net> domain names incorporate Complainant’s WWE trademark in its entirety, along with the respective numbers “9” and “7.” The Panel finds that Respondent’s inclusion of random numbers in these domain names does not negate a finding of confusing similarity between the domain names and Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel observes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the <wwe9.com> and <wwe7.net> domain names. The Panel holds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Therefore, the Panel concludes that Respondent’s <wwe9.com> and <wwe7.net> domain names are confusingly similar to Complainant’s WWE trademark pursuant to Policy ¶ 4(a)(i).
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 names 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 them in its domain names, adding only the respective numbers “9” and “7”;
(b) Respondent has then used the disputed domain names as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by WWE on its own <wwe.com> website;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is not actually known as “WWE9” or “WWE7,” nor could it be. Complainant contends that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s WWE marks in a domain name or otherwise. The Panel notes that the WHOIS information identifies “Rigen Wu” as the registrant of the <wwe9.com> and <wwe7.net> domain names. See Complainant’s Annex 1. Thus, the Panel determines that Respondent is not commonly known by the <wwe9.com> and <wwe7.net> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant alleges that Respondent registered and is currently using these <wwe9.com> and <wwe7.net> domain names for its commercial gain via pay-per-click advertisements offered on the sites. The Panel notes that Respondent’s disputed domain names link to Chinese language webpages offering links for Complainant’s services and links of Complainant’s competitors. See Complainant’s Annex 8. Additionally, Complainant argues that Respondent’s websites contain unlicensed content identical to the legitimate copyrighted commercial content offered by Complainant and its video partners on their respective websites, diverting would-be visitors from Complainant’s websites. Id. The Panel notes that Complainant suggests that the <wwe7.net> domain name resolves to the <wwe9.com> domain name’s website. As the Panel finds that both domain names are used for similar or identical purposes, the Panel finds that Respondent’s use of the <wwe9.com> and <wwe7.net> domain names to offer competing links or to divert consumers from Complainant’s website is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also 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).”).
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 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 argues that Respondent has registered multiple domain names that incorporate WWE marks in their entirety. Complainant alleges that Respondent has registered, and is using, in bad faith, domain names that are identical or confusingly similar to Complainant’s WWE mark, both in the United States and in over 60 additional countries, including Hong Kong and China. Complainant bases this claim off the use of the “wwechina@126.com” e-mail address in the registration information of these disputed domain names, when that e-mail address is associated with several other disputed domain names that were ordered transferred to Complainant. See Complainant’s Annex 7: World Wrestling Entertainment, Inc. v. xie yue hong / Li ziao an, FA 1511882 (Nat. Arb. Forum Aug. 30, 2013); World Wrestling Entertainment, Inc. v. Fuchaoqiang / fuzhaoqiang, FA 1510044 (Nat. Arb. Forum Aug. 26, 2013); World Wrestling Entertainment, Inc. v. Ryan Oelkers, FA 1474128 (Nat. Arb. Forum Jan. 21, 2013). As the Panel finds that Respondent’s prior UDRP proceedings resulting in bad faith and transfer, the Panel holds that Respondent’s use of the <wwe9.com> and <wwe7.net> domain names is in bad faith pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). In any case, the Panel agrees that Respondent’s registration of both of these infringing <wwe9.com> and <wwe7.net> domain names is in itself evidence of Policy ¶ 4(b)(ii) bad faith. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Secondly, Complainant asserts that Respondent uses the <wwe9.com> and <wwe7.net> domain names in bad faith, as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by WWE on its own <wwe.com> website. The Panel notes that Respondent’s disputed domain names lead to webpages providing Complainant’s videos and other services. See Complainant’s Annex 8. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel held that “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).” Accordingly, the Panel concludes that Respondent is using the <wwe9.com> and <wwe7.net> domain names in bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the WWE marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of services purportedly offered from Respondent’s websites. The Panel observes that Respondent’s <wwe9.com> and <wwe7.net> domain names both resolve to the same website at the <wwe9.com> domain name—a website that provides hyperlinks and video content that directly compete with Complainant. See Complainant’s Annex 8. Complainant argues that Respondent is capitalizing on the likelihood that consumers will confuse Complainant as the source or origin of the unauthorized and copyright-infringing videos. Prior panels have determined that a respondent’s use of a domain name to provide competing links evidences bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Fourthly, Complainant alleges that Respondent is charged with constructive knowledge of Complainant’s trademark rights in the WWE marks. Complainant argues that Respondent knew of, and sought to capitalize on, the game and value of the WWE marks, at the time the domain names were registered. 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. Thus, the Panel holds that Respondent registered the disputed domain name 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).
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 <wwe9.com> and <wwe7.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: January 3, 2014
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