World Wrestling Entertainment, Inc. v marcus ja
Claim Number: FA1410001585263
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut. Respondent is marcus ja (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwesale.com> and <wwemini.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2014; the National Arbitration Forum received payment on October 21, 2014.
On October 17, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwesale.com> and <wwemini.com> 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 October 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@wwesale.com, postmaster@wwemini.com. Also on October 21, 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 November 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant uses WWE to promote an entertainment business focusing on wrestling. The WWE mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,056,074, registered Jan. 31, 2006). Complainant believes that both of the <wwesale.com> and <wwemini.com> domain names are confusingly similar to Complainant’s mark because they just add generic terms to the mark.
2. Respondent has no rights or legitimate interests in the <wwesale.com> and <wwemini.com> domain names. First, Respondent is not known by these domain names. Further, Respondent is using the two domain names to sell counterfeit WWE goods. At the time of the Complaint’s filing, the <wwemini.com> domain name no longer has any active use.
3. Respondent registered and is using the <wwesale.com> and <wwemini.com> domain names in bad faith. Respondent’s use of <wwesale.com> to sell counterfeit goods is a use in bad faith. Respondent’s inactive holding of the <wwemini.com> domain name similarly amounts to bad faith. The reference to WWE counterfeit goods on Respondent’s website is indicative of Respondent’s registration of these <wwesale.com> and <wwemini.com> domain names with actual knowledge of Complainant’s rights.
4. The <wwesale.com> domain name was registered May 21, 2014, and the <wwemini.com> domain name was registered March 6, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WWE mark. Respondent’s domain names are confusingly similar to Complainant’s WWE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wwesale.com> and <wwemini.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 uses the WWE mark to promote an entertainment business focusing on wrestling. Complainant’s WWE mark is registered with the USPTO (e.g., Reg. No. 3,056,074, registered Jan. 31, 2006). USPTO registration is satisfactory evidence of Policy ¶ 4(a)(i) rights even when, as here, Respondent dwells in another country. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant contends that both of the <wwesale.com> and <wwemini.com> domain names are confusingly similar to Complainant’s mark because they merely add generic terms to the mark. Both domain names are formed by taking the entire mark, adding the gTLD “.com,” and a single generic term. These alterations are insufficient to avoid the conclusion that the domain names are confusingly similar to the WWE mark under Policy ¶ 4(a)(i). See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not known by these domain names. Complainant has not licensed or authorized Respondent’s use of the WWE mark. “Marcus Ja” is listed as the WHOIS registrant of record for both of the domain names. The Panel concludes Respondent is not commonly known by these domain names based upon the evidence available. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant has shown that Respondent is using the <wwesale.com> domain name to sell counterfeit WWE goods. Respondent’s use of Complainant’s own WWE mark to promote the sale of counterfeit goods does not amount to a bona fide offering of goods or legitimate noncommercial use within the meaning of Policy ¶¶ 4(c)(i) or (iii). 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).
Complainant also has shown that at the time of the complaint’s filing, the <wwemini.com> domain name no longer had any active use. An error message appears when an Internet user attempts to reach the website associated with this <wwemini.com> domain name. Hence, the Panel finds that this inactivity establishes that Respondent has no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in store for the domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of <wwesale.com> to sell counterfeit goods is a use in bad faith. The Panel agrees that the misuse of Complainant’s mark to promote the sale of counterfeit goods amount to bad faith under Policy ¶ 4(b)(iv) bad faith. 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).
Complainant goes on to argue that Respondent’s inactive holding of the <wwemini.com> domain name also constitutes bad faith. The Panel agrees. See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant claims that the reference to WWE counterfeit goods on Respondent’s resolving website is indicative of Respondent’s registration of these <wwesale.com> domain name with actual knowledge of Complainant’s rights. The Panel agrees. Because both domain names were registered within days of each other, the Panel concludes that Complainant has established Respondent’s actual knowledge of Complainant’s rights with respect to both domain names. 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”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwesale.com> and <wwemini.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 19, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page