World Wrestling Entertainment, Inc. v. enhe li / LIENHE / 李恩河 / 李恩河
Claim Number: FA1703001724875
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is enhe li / LIENHE / 李恩河 / 李恩河 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2017; the Forum received payment on March 31, 2017.
On April 5, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 April 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2017 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@wweshop.top, postmaster@wweshop.wang, postmaster@wweshop.xyz, postmaster@wweshop.club, postmaster@wweshop.vip, postmaster@wweshop.xin, postmaster@wwesp.xyz. Also on April 7, 2017, 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 April 26, 2017.
On May 2, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the WWE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,772,683, registered October 7, 2003). Respondent’s <wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz> domain names are confusingly similar to the WWE mark because they contain the mark along with the generic terms “shop” or “sp.”
Policy ¶ 4(a)(ii)
Respondent has not been commonly known by the disputed domain names because it has no connection to Complainant or license to use the WWE mark. Respondent fails to use the domain names to make a bona fide offering or a legitimate noncommercial or fair use because the domains are offered for sale in excess of fair market value and otherwise used for Respondent to profit commercially.
Policy ¶ 4(a)(iii)
Respondent uses the domain names in bad faith because it has offered to sell them to Complainant for $500,000 and because the domain names resolve to inactive websites. Respondent has demonstrated a pattern of bad faith domain registration through the registration of multiple domain names at issue here.
Respondent registered the domain names in bad faith because it had constructive or actual knowledge of Complainant’s WWE mark based upon the dates of domain name registrations relative to the longstanding use of the WWE mark and demonstrated through Respondent’s use of the domain names.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent uses the disputed domain names for the legitimate purpose of operating a shop for 3C electronics products. Respondent registered the domain names as abbreviations for the terms “Wuwu eshop,” the terms chosen to represent Respondent’s brand. Respondent is still in the preparatory stages for the development of the non-active domain names and none of the websites contain information or products related to Complainant’s WWE mark. Respondent acquired the disputed domain names in a legitimate fashion, and is accordingly allowed to sell such domains. Complainant initiated offers to purchase the domain names from Respondent.
Policy ¶ 4(a)(iii)
Respondent registered the disputed domain names without knowledge of Complainant’s use of the WWE mark. Respondent uses the disputed domain names for the legitimate purpose of operating a shop for 3C electronics products. Respondent registered the domain names as abbreviations for the terms “Wuwu eshop,” the terms chosen to represent Respondent’s brand and none of the websites contain information or products related to Complainant’s WWE mark. Respondent acquired the disputed domain names in a legitimate fashion, and is accordingly allowed to sell such domains. Complainant initiated offers to purchase the domain names from Respondent. Respondent’s offers do not exceed fair market value.
ADDITIONAL SUBMISSION
On May 1, 2017 Complainant submitted an Additional Submission in reply to Respondent’s answer to the Complaint.
PRELIMINARY ISSUE
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
The Panel agrees that all the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
Complainant has rights in the WWE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,772,683, registered October 7, 2003).
Respondent owns <wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz> domain names.
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant. The fact that Respondent filed an Answer in the English language indicates the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
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.
Identical or Confusingly Similar
Complainant claims rights in the WWE mark through registration with the USPTO and other registration agencies (Reg. No. 2,772,683, registered Oct. 7, 2003) for use with entertainment services and consumer products. Complainant has provided such registrations in its Annex 3. As such, the Panel finds that Complainant has rights in the WWE mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant alleges that Respondent’s <wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz> domain names are confusingly similar to the WWE mark because they contain the mark along with the generic terms “shop” or “sp.” The Panel notes that the domain names also contain top-level domains, such as “.top,” “.wang,” “.xyz,” “.club,” “.vip,” or “.xin.” The Panel agrees that the terms “shop” or “sp” are generic and agrees that the domain names are confusingly similar to the WWE mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
Rights and Legitimate Interests
Complainant maintains that Respondent has not been commonly known by the disputed domain names according to Policy ¶ 4(c)(ii) because it has no connection to Complainant or license to use the WWE mark. The Panel agrees that Respondent lacks permission to use the mark and finds that Respondent has not been commonly known by the disputed domain names. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the dispute domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent fails to use the domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii) because the domains are offered for sale in excess of fair market value and otherwise used for Respondent to profit commercially. Respondent has provided screenshots of the disputed domain names’ resolving websites in its Annex 8 and e-mail correspondence related to sales offers in its Annex 9. The Panel considers this evidence sufficient to find that Respondent fails to use the domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.
The Panel finds that the failure to make an active use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the domain names in bad faith because it has offered to sell them to Complainant for $500,000. Complainant has provided correspondence demonstrating this sale offer in its Annex 9. The Panel finds this sufficient to show that Respondent is attempting to profit by selling the domain names for excessive costs and finds such use to be in bad faith according to Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000).
Complainant maintains that Respondent has demonstrated a pattern of bad faith domain registration through the registration of multiple domain names at issue here. The Panel agrees that Respondent has demonstrated a pattern of bad faith behavior under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant urges that Respondent uses the disputed domain names in bad faith because the domain names resolve to inactive websites. Complainant has provided screenshots to demonstrate such in its Annex 8. The Panel considers this sufficient to demonstrate inactive use and finds such use to be in bad faith. See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant contends that Respondent had constructive or actual knowledge of Complainant’s WWE mark based upon the dates of domain name registrations relative to the longstanding use of the WWE mark and demonstrated through Respondent’s use of the domain names. Complainant claims that each disputed domain name was registered between August 2016 and March 2017, while the WWE mark has been registered since 2002. Complainant provides evidence to support these claims in its Annexes 1 and 3. Further, Complainant urges that Respondent’s use of the domain names provides additional evidence of knowledge of Complainant’s WWE mark. The Panel finds these arguments and evidence sufficient to show actual, not merely constructive, knowledge of Complainant’s WWE mark at the time of registration and finds that Respondent registered the disputed domain names in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the<wweshop.top>, <wweshop.wang>, <wweshop.xyz>, <wweshop.club>, <wweshop.vip>, <wweshop.xin>, and <wwesp.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Panelist - Jaime Delgado, Esq.
Dated: May 9, 2017
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