World Wrestling Entertainment, Inc. v. willis thee
Claim Number: FA1409001580351
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is willis thee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wweshoponline.com>, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 18, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <wweshoponline.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@wweshoponline.com. Also on September 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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. 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 has rights in the WWE mark and uses this mark to promote a large wrestling entertainment business and related subsidiary matters. The <wweshoponline.com> domain name is confusingly similar to this mark.
Respondent has no rights in the <wweshoponline.com> domain name because Respondent is not known by this name, and Respondent uses the domain name for purposes of promoting the sale of counterfeit WWE goods.
Respondent has registered and is using the <wweshoponline.com> domain name in bad faith. First, Respondent wrongfully profits from the likelihood Internet users will mistake the counterfeit goods as legitimate WWE merchandise. Second, the use of WWE marks on the domain name’s website indicates the domain name was registered and used with full knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, World Wrestling Entertainment, Inc., is an integrated media organization, and a recognized leader in global entertainment. Complainant has rights in the WWE mark under Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003).
Respondent, willis thee, registered the <wweshoponline.com> domain name on September 2, 2013. Respondent uses the domain name for purposes of promoting the sale of counterfeit WWE goods.
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.”).
Complainant has rights in the WWE mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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.”).
The <wweshoponline.com> domain name is confusingly similar to the WWE
mark because Respondent merely added the generic sales phrase “shop online” and
the gTLD “.com,” which is not enough to distinguish an Internet domain name
under Policy ¶ 4(a)(i). See Mead Johnson & Company, LLC v.
noom kung, FA 1521731 (Nat. Arb. Forum Oct. 24, 2013) (holding that the
addition of multiple terms, both generic and descriptive, do not negate a
finding of confusing similiarity).
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).
Respondent is not commonly known by the<wweshoponline.com> domain name. The WHOIS record lists “willis thee” as the registrant of this domain name. See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Respondent’s use of the domain name as a home for counterfeit WWE goods is illegitimate. The <wweshoponline.com> domain name resolves to a website where goods are sold under the WWE mark without Complainant’s permission. Counterfeit sales are not a permissible use under the Policy, because such uses merely misappropriate the other party’s rights in a trademark. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). The Panel finds that Respondent’s use of the domain name is not a bona fide use under Policy ¶ 4(c)(i) or legitimately noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent is wrongfully profiting from the likelihood Internet users will mistake the counterfeit goods as legitimate WWE merchandise. Therefore, Respondent registered and uses the <wweshoponline.com> domain name in bad faith under Policy ¶ 4(b)(iv). 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).
Respondent had actual knowledge of the mark and Complainant's rights when registering the the <wweshoponline.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wweshoponline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2014
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