World Wrestling Entertainment, Inc. v. Mohan Paul c/o Roamsoft Technologies
Claim Number: FA1407001569608
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Mohan Paul c/o Roamsoft Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwenetwork.info> and<wwetelevision.com>, registered with GoDaddy.com, LLC (R171-LRMS).
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 14, 2014; the National Arbitration Forum received payment on July 14, 2014.
On July 15, 2014, GoDaddy.com, LLC (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <wwenetwork.info> and<wwetelevision.com> domain names are registered with GoDaddy.com, LLC (R171-LRMS) and that Respondent is the current registrant of the names. GoDaddy.com, LLC (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com, LLC (R171-LRMS) 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 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@wwenetwork.info, postmaster@wwetelevision.com. Also on July 15, 2014, 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.
A timely Response was received and determined to be complete on August 4, 2014.
A timely Additional Submission from Complainant was received and determined to be complete on August 5, 2014.
On August 11, 2014, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant
Complainant has used the WWE mark for years to market its professional wrestling business. The WWE mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,772,683 registered Oct. 7, 2003). The <wwenetwork.info> and<wwetelevision.com> domain names are confusingly similar to the WWE mark in that the only differences are the adding of a generic top-level domain ("gTLD") and a generic term.
Respondent has no rights in the domain names. Respondent is not commonly known by this domain name, and Respondent has no right or legitimate interest in holding the domain names as websites promoting the sale of counterfeit WWE goods.
Respondent registered and is using these names in bad faith. Respondent registered multiple domain names that infringe on Complainant’s mark. Respondent’s use of the domain names to host a storefront for counterfeit goods is unacceptable. The sale of counterfeit WWE merchandise makes it clear the domain name was registered with Complainant’s mark in mind—evidence of bad faith at registration.
Respondent
Respondent does business as Worldwide Entertainment Network. GoDaddy allowed it to buy these domain names, so it must be legal to hold them.
Additional Submission By Complainant
Respondent has failed to certify and acknowledge his Response, Respondent makes only broad and conclusory rejections of the Complainant without any detail, and the Response did not conform to the formatting requirements.
The alleged “Worldwide Entertainment Network” did not exist at all until the day after this UDRP action was filed. Complainant concludes this “entity” is thus a pretext and presents no legitimacy to the decision to use the domain names to sell unauthorized counterfeits of WWE goods.
For the 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.
Complainant has used the WWE mark for years to market its professional wrestling business. The WWE mark is registered with the USPTO (e.g., Reg. No. 2,772,683 registered Oct. 7, 2003). The Panel finds this registration is sufficient evidence of Policy ¶ 4(a)(i) rights in the WWE mark. See 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.”).
Complainant further claims the <wwenetwork.info> and<wwetelevision.com> domain names are confusingly similar to the WWE mark in that the only differences are the adding of a gTLD and a generic term. In Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013), the panel agreed that a gTLD or generic term cannot distinguish a domain name from a mark in any distinctive manner. The Panel concludes both the <wwenetwork.info> and <wwetelevision.com> domain names are confusingly similar to the WWE 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 claims that Respondent is not commonly known by this domain name. Respondent claims it is “Worldwide Entertainment Network” but provides little evidence to support this claim. The only verifiable information related to Respondent’s identity is the e-mail from “Paul Mohan.” The Panel finds there is insufficient evidence to conclude that Respondent has ever been commonly known by these domain names under Policy ¶ 4(c)(ii). See True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013) (“The Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than…the disputed domain name…every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name. The Panel believes it is within the consensus of opinions of previous UDRP panels by requiring that Respondent’s company be commonly known as the disputed domain name prior to that name’s registration for Policy ¶ 4(c)(ii) to be invoked successfully.”).
Complainant alleges that Respondent has no right or legitimate interest in holding the domain names as websites promoting the sale of counterfeit WWE goods. The Panel notes there is no evidence in this record showing the domain names have been used for such a purpose. The record does show the domain names may be used to promote hyperlink advertising. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel agreed that there was no bona fide offering when the domain name was used to promote hyperlink ads. The Panel here similarly finds that these domain names are used for 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 has proven this element.
Respondent registered domain names that infringe on Complainant’s mark. In Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004), the panel found that registering more than one infringing domain name could serve as evidence under Policy ¶ 4(b)(ii) bad faith. The Panel finds evidence of bad faith under Policy ¶ 4(b)(ii) in this case.
Complainant argues that Respondent’s use of the domain names to host hyperlink ads is unacceptable. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found the presence of hyperlinks to create an inference of Policy ¶ 4(b)(iv) bad faith—the respondent being able to generate advertising revenue through Internet users who mistakenly viewed the website believing it was associated with the complainant. Here the Panel likewise concludes there is evidence of Policy ¶ 4(b)(iv) bad faith based on the use of the domain name for hyperlink advertisements.
The domain name is not currently in active use, however, such a use does not defeat Policy ¶ 4(a)(iii) bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
In the Additional Submission, Complainant asserts that no entity called “Worldwide Entertainment Network” existed in India until after this UDRP action was instituted. As such, the Panel considers this entity to be a pretext and accordingly finds Respondent is liable of Policy ¶ 4(a)(iii) bad faith by registering domain names with knowledge of their infringing purpose. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wwenetwork.info> and <wwetelevision.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 20, 2014
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