World Wrestling Entertainment, Inc. v. irfan saqlain / IRFANSAQLAIN
Claim Number: FA1410001585268
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is irfan saqlain / IRFANSAQLAIN (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwefullshow.com>, registered with Name.com, Inc.
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 October 16, 2014; the National Arbitration Forum received payment on October 21, 2014.
On October 17, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwefullshow.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@wwefullshow.com. Also on October 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.
On October 22, 2014, the Forum received correspondence from Respondent which was not a proper Response to the Complaint.
Having received no proper Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 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. 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.
Complainant
i. Complainant owns the WWE marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2772683, registered October 7, 2003).
ii. Complainant uses the WWE mark in connection with its business in global entertainment.
i. Policy ¶ 4(a)(i)
1. The <wwefullshow.com> domain name is confusingly similar to Complainant’s WWE mark because Respondent has simply added the generic terms “full” and “show” in the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <wwefullshow.com> domain name. Respondent is neither licensed nor authorized to use the WWE mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent is intentionally diverting Internet users to its own website where it receives commercial profit via pay-per-click advertisements offered on the website.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to display videos of Complainant’s property, which disrupts Complainant’s business.
2. Respondent uses the <wwefullshow.com> domain name for its own commercial gain by providing pay-per-click links to other third party sites.
3. Due to the fame of Complainant’s mark, Respondent must have had actual or constructive knowledge of Complainant’s rights in the WWE mark.
Respondent
Respondent did not submit a proper Response in this proceeding.
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.
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 in connection with its business in the global entertainment industry. Complainant claims to own the WWE mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,772,683, registered October 7, 2003). Complainant argues that such registrations are sufficient to establish rights in the WWE mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <wwefullshow.com> domain name is confusingly similar to Complainant’s WWE mark because Respondent has simply added the generic terms “full” and “show” to the mark. The disputed domain name also differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Past panels have generally found that a domain name differing from a mark by the addition of generic terms does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). As such, the Panel finds that Respondent’s <wwefullshow.com> domain name is confusingly similar to Complainant’s WWE mark pursuant to 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 lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <wwefullshow.com> domain name. The WHOIS information identifies “Irfan Saqlain” as the registrant of the disputed domain name. Complainant claims that Respondent is neither licensed nor authorized to use the WWE mark. Respondent has failed to submit a response refuting any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <wwefullshow.com> domain name pursuant to Policy ¶ 4(c)(ii). 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 also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that the disputed domain name currently diverts Internet users to its own website, in which Respondent allegedly profits. Specifically, Complainant alleges that Respondent commercially benefits from “pay-per-click” links posted on the disputed domain name. Past panels have held that such a use of a disputed domain name does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Therefore, the Panel finds that Respondent’s current use of the disputed domain name to host these unauthorized replays of Complainant’s legitimate WWE content does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant has proven this element.
Complainant claims that Respondent has registered and is using the <wwefullshows.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). Complainant argues that Respondent illegally displays videos of Complainant’s entertainment business, which disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). Past panels have held that displaying illegal videos of a complainant’s own products demonstrates bad faith disruption under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Thus, the Panel finds that Respondent’s use of the disputed domain name to display videos of Complainant’s own product qualifies as bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent is using the disputed domain name to commercially benefit from the Internet traffic visiting the website. Specifically, Complainant argues that Respondent profits from the “pay-per-click” links posted on the disputed domain name website. Complainant’s exhibits show the presence of ripped WWE videos. Complainant argues that such a use of a disputed domain name qualifies as evidence of bad faith pursuant to Policy ¶ 4(b)(iv). Past panels have agreed with similar arguments. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). The Panel finds that Respondent’s use of the disputed domain name to commercially benefit is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that due to its worldwide fame and trademark registrations, as well as the obvious link between both parties’ websites, Respondent must have had actual or constructive knowledge of Complainant’s rights in the WWE mark. 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 and the connection between Respondent’s disputed domain name and Complainant’s website, 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); see also 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”)."
Complainant has proven this element.
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 <wwefullshow.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 24, 2014
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