World Wrestling Entertainment, Inc. v. eslam mohamed
Claim Number: FA1611001701957
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is eslam mohamed (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <online-wwe.net>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <online-wwe.net> 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2016 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@online-wwe.net. Also on November 9, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 registered its famous WWE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <online-wwe.net> domain name is confusingly similar because it merely adds the generic term “online,” a hyphen, and a generic top-level domain (“gTLD”) to the entire WWE mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed Respondent to use its WWE mark in any fashion, nor has it created any relationship with Respondent where it could host Complainant’s videos. Respondent is not commonly known by <online-wwe.net> or any form of “ONLINE WWE.” Respondent is using the disputed domain name to illegally host Complainant’s copyrighted videos without a license. Such use cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using <online-wwe.net> in bad faith. Respondent is attempting to commercially gain and disrupt Complainant’s business in bad faith through an attempt to create confusion about a false relationship with Complainant. This fact, along with Respondent’s incorporation of Complainant’s marks and copyrighted videos on the disputed domain name clearly lead to a finding that Respondent had actual notice of Complainant’s rights in the WWE mark. Respondent is commercially gaining from the advertisements and pay-per-click links that it displays in congruence with Complainant’s copyrighted material.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is World Wrestling Entertainment, Inc. of Stamford CT, USA. Complainant is the owner of domestic and international registrations for the mark WWE, which it has used continuously since at least as early as 2002 in connection with its provision of entertainment goods and services. Complainant also owns registrations for more than 300 domain names incorporating the WWE mark including its primary website, <wwe.com>.
Respondent is Eslam Mohamed, of Cairo Egypt. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the <online-wwe.net> domain name on or about August 31, 2015.
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(f), 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 (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 contends it has registered its famous WWE mark with the USPTO (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003), and that it has rights in the mark under Policy ¶ 4(a)(i). Past panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country that a respondent is operating in. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). The Panel here finds that Complainant has Policy ¶ 4(a)(i) rights in its WWE mark.
Complainant further contends that Respondent’s <online-wwe.net> domain name is confusingly similar to its WWE mark. Complainant argues that Respondent has merely added the generic term “online” plus a hyphen and gTLD to its fully incorporated WWE mark. Prior panels have found that adding a generic term does not alleviate confusing similarity, and that hyphens and gTLDs are not relevant for comparing a domain name to a complainant’s mark under Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel here finds that Respondent’s <online-wwe.net> domain name is confusingly similar to Complainant’s WWE mark under Policy ¶ 4(a)(i).
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <online-wwe.net> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its WWE mark in any fashion, and that Respondent is not commonly known by the disputed domain name or “ONLINE WWE.” The Panel notes that the WHOIS information for the domain name in question lists “eslam mohamed” as the registrant. Previous panels have found that a respondent is not commonly known by a domain name, based on a lack of support from the WHOIS information, and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel here finds that Respondent is not commonly known by <online-wwe.net>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks and hosting Complainant’s video without a license on the resolving website of the disputed domain name. Complainant asserts this is an attempt to pass itself off as the Complainant, and to divert internet users away from Complainant’s legitimate copyrighted commercial content. Complainant has submitted screen shots of Respondent’s website that it contends is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. Previous panels have held that a respondent attempting to pass itself off as a complainant, or a respondent directly competing with the complainant on a confusingly similar domain name does not satisfy Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel here finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain name.
Complainant has proven this element.
Complainant states that Respondent has registered and is using the <online-wwe.net> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as having a relationship with Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of its WWE mark, in conjunction with the confusingly similar domain name, and the hosting of Complainant’s copyrighted videos creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel notes the evidence provided of the alleged resolving website of <online-wwe.net> and its comparison with Complainant’s content. Complainant presumes that Respondent is commercially gaining when mistaken Internet users click one of the advertisements or links and get referred to a third party website. The Panel agrees that any attempts by Respondent to pass itself off as Complainant, is indicative of bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel here finds that Respondent is attempting to pass itself off as Complainant, which supports a finding of bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <online-wwe.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 19, 2016
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