World Wrestling Entertainment, Inc. v. Cao Mr / Mr Fang
Claim Number: FA1403001547365
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Cao Mr / Mr Fang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onewwe.com>, registered with HICHINA ZHICHENG TECHNOLOGY 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 10, 2014. The Complaint was submitted in both Chinese and English.
On March 10, 2014, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <onewwe.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY 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 March 11, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 31, 2014 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@onewwe.com. Also on March 11, 2014, 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 April 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, as Panelist.
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.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, World Wrestling Entertainment, Inc. is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company. Complainant is committed to family-friendly content across all of its platforms, including television programming, pay-per-view, digital media, and publishing.
Complainant owns 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).
The <onewwe.com> domain name at issue incorporates Complainant’s WWE mark in its entirety, along with the generic word “one.”
Policy ¶ 4(a)(ii)
Respondent should be considered as having no rights or legitimate interests in respect of the domain name.
Respondent is not commonly known by the disputed domain name. Respondent registered and is using the domain name for its own commercial gain via the sale of counterfeit goods on its redirected website.
The domain name should be considered as having been registered and being used in bad faith. Respondent uses the <onewwe.com> domain name as part of an unauthorized and illegal Chinese-based enterprise to sell counterfeit goods.
Respondent knew of the fame and value of the WWE marks at the time the domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns numerous registrations for the WWE mark with the USPTO, as well as numerous other registrars worldwide.
Respondent registered the at-issue domain name after Complainant acquired rights in the WWE mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <onewwe.com> domain name redirects to website where counterfeit WWE branded goods are marketed.
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 at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights.
Pursuant to Policy ¶ 4(a)(i), Complainant owns trademark rights in the WWE mark through its registrations thereof with the USPTO and independently through numerous registrations with other registrars worldwide, including having registered the mark in Hong, China in 2002. 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).
Respondent’s <onewwe.com> domain name is composed of Complainant’s entire WWE trademark prefixed by the generic word “one” and appended with the top-level domain name “.com.” Under Policy ¶ 4(a)(i), the addition of a generic term to Complainant’s mark does not differentiate the domain name from the mark; nor is the necessary inclusion of a top-level domain name material to the Panel’s analysis. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also, 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the <onewwe.com> domain name lists “Cao Mr / Mr Fang” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <onewwe.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <onewwe.com> domain name redirects users to a website addressed by <wrestlinggift.com>. That website markets counterfeit WWE branded merchandise thereby improperly diverting commerce away from Complainant and to Respondent. Respondent’s use of the <onewwe.com> domain name to sell counterfeit products suggests neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As alluded to above, Respondent uses the confusingly similar <onewwe.com> domain name as part of an unauthorized scheme to profit from the sale of counterfeit WWE goods. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (finding that respondent’s selling of counterfeit products creates the likelihood of confusion as to complainant’s affiliation with the disputed domain name and allows respondent to profit from that confusion).
Complainant’s WWE mark is well known worldwide. Further, the commercial website ultimately reached via Respondent’s confusingly similar domain name displays characters and terms related to Complainant, as well as links to merchandise associated with Complainant. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the WWE mark prior to registering the <onewwe.com> domain name. It follows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii) for the purpose of inappropriately trading on the goodwill associated with Complainant’s WWE trademark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); 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); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onewwe.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 13, 2014
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