World Wrestling Entertainment, Inc. v. Kiet Nguyen
Claim Number: FA1704001727511
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, United States. Respondent is Kiet Nguyen (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwefull.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2017; the Forum received payment on April 18, 2017.
On April 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wwefull.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 April 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 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@wwefull.net. Also on April 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant World Wrestling Entertainment, Inc. is a global integrated sports broadcast media entertainment enterprise.
Complainant holds a registration for the WWE trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,621,017, registered May 12, 2009.
Respondent registered the domain name <wwefull.net> on July 27, 2016.
The domain name is confusingly similar to Complainant’s WWE mark.
Respondent has not been commonly known by the domain name.
Complainant does not sponsor Respondent, nor is Respondent affiliated with Complainant in any way.
Complainant has not given Respondent permission to use the WWE mark for any purpose.
Respondent does not use the <wwefull.net> domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead Respondent uses the domain name to host pay-per-click advertisements on its landing site.
Respondent has no rights to or legitimate interests in the domain name.
Respondent displays on the resolving website Complainant’s copyrighted commercial content, which likely confuses users into believing that Respondent is affiliated with Complainant when it is not.
Respondent uses the disputed domain name as part of an operation to allow Internet users to watch unlicensed video material copyrighted by Complainant and hosted on its own <wwe.com> website.
Respondent thus uses the domain name to profit by diverting revenue from would-be visitors to Complainant’s websites, resulting in a loss of sales of Complainant’s video media.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the WWE mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of that mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in a mark sufficient for purposes of Policy ¶ 4(a)(i) through its registration with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Vietnam). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <wwefull.net> domain name is confusingly similar to Complainant’s WWE mark. The domain name fully incorporates the mark and adds the generic word “full” and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (determining that confusing similarity existed where a disputed domain name contained a UDRP Complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and a generic Top Level Domain, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other for purposes of the Policy.). See also Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum December 22, 2010) (finding that: “The addition of the gTLD “.net” also has no effect on the Policy ¶ 4(a)(i) analysis.”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <wwefull.net> domain name, that Respondent is not affiliated with Complainant, and that Complainant has not given Respondent permission to use the WWE mark for any purpose.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Kiet Nguyen,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the relevant WHOIS record listed the registrant of a disputed domain name only as “Dale Anderson,” that respondent failed to show that it was not commonly known by the <statefarmforum.com> domain name for purposes of Policy ¶ 4(c)(ii)). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to incorporate its NAVISTAR mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <wwefull.net> domain name to redirect Internet users to a website controlled by Respondent on which are offered Complainant’s copyrighted videos, likely for the financial benefit of Respondent by means of pay-per-click fees. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ashley Furniture Industries, Inc. v. domain admin, FA1506001626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.
See also The Lincoln Electric Company v. Privacy protection service, FA 1651493 (Forum January 13, 2016) (noting that, as a respondent used a disputed domain to promote a UDRP complainant’s distributor without license to do so, that respondent did not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use). Further, see Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum September 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <wwefull.net> domain name as alleged in the Complaint disrupts Complaint’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum August 1, 2006) (finding that a respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website, thus disrupting a UDRP complainant’s business).
We are also convinced by the evidence that Respondent uses the <wwefull.net> domain name, which we have found to be confusingly similar to Complainant’s WWE mark, in order to benefit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too demonstrates Respondent’s bad faith in registering and using the domain name. See Fossil, Inc. v. NAS, FA 92525 (Forum February 23, 2000) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a product dealer not authorized to sell a UDRP complainant’s goods nonetheless attempted to profit by doing so under the banner of a domain name confusingly similar to that complainant’s mark).
Finally, under this head of the Policy it is evident from the record before us that Respondent knew of Complainant and its rights in the WWE mark when it registered the <wwefull.net> domain name. This further shows Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when registering that domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wwefull.net> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 17, 2017
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