DECISION

 

World Wrestling Entertainment, Inc. v. Ahmed Hamdy / projectrockshop

Claim Number: FA1903001836544

 

PARTIES

Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA.  Respondent is Ahmed Hamdy / projectrockshop (“Respondent”), Egypt.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <projectrock.store>, registered with Tucows Domains Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 29, 2019; the Forum received payment on March 29, 2019.

 

On March 29, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <projectrock.store> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2019 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@projectrock.store.  Also on April 2, 2019, 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 April 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, World Wrestling Entertainment, Inc., is an integrated media organization, and a recognized leader in global entertainment. Complainant has rights in the PROJECT ROCK mark based upon the registration with the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 017727884, registered Aug. 29, 2018). See Compl. Annex. 3.

Respondent’s <projectrock.store> is confusingly similar to Complainant’s mark as Respondent merely adds the “.store” generic top-level domain

(“gTLD”) to Complainant’s mark.

2.    Respondent does not have rights or legitimate interests in the <projectrock.store> domain name. Respondent is not permitted or licensed to use Complainant’s PROJECT ROCK mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <projectrock.store> domain name to sell counterfeit versions of Complainant’s products.

3.    Respondent has registered and uses the <projectrock.store> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Finally, Respondent must have had actual and/or constructive knowledge of Complainant’s PROJECT ROCK mark prior to registering the <projectrock.store> domain name.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <projectrock.store> domain name is confusingly similar to Complainant’s PROJECT ROCK mark.

 

2.    Respondent does not have any rights or legitimate interests in the <projectrock.store> domain name.

 

3.    Respondent registered or used the <projectrock.store> domain name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the PROJECT ROCK mark based upon registration with the EUIPO (e.g., Reg. No. 017727884, registered Aug. 29, 2018). See Compl. Annex. 3. Registration of a mark with EUIPO is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Wente Bros. v. I S / ICS INC, FA 1739664 (Forum Aug. 18, 2017) (finding the complainant’s registration of its WENTE and WENTE VINYARDS marks with the EUIPO sufficient to establish rights in the marks). Therefore, the Panel finds Complainant has rights in the PROJECT ROCK mark per Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the <projectrock.store> domain name is confusingly similar to the PROJECT ROCK mark as Respondent incorporates the mark in its entirety and adds the “.shop” gTLD. The addition of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that Respondent’s <projectrock.store> domain name is identical and/or confusingly similar to Complainant’s PROJECT ROCK mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in <projectrock.store> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the PROJECT ROCK mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The Panel notes the WHOIS information identifies the registrant as “Ahmed Hamdy / projectrockshop.” The Panel notes that while Respondent appears to be commonly known by the disputed domain name, it has failed to provide affirmative evidence to support the WHOIS information. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Specifically, Complainant argues Respondent uses the <projectrock.store> domain name to sell counterfeit products. Sale of counterfeit products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the resolving webpage, which displays a bull logo and an online store for “Project Rock Delta” sneakers. See Compl. Annex. 4. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and is using the <projectrock.store> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a confusingly similar domain name which sells counterfeit goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products.)  Complainant provides screenshots of the resolving webpage, which displays a bull logo and an online store for “Project Rock Delta” sneakers. See Compl. Annex. 4. Therefore, the Panel finds that Respondent attempts to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).

 

Finally, Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s mark. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark can provide evidence of bad faith under the Policy. 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.”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant asserts, given the global reach of the Internet, the fact that Respondent's website displays the PROJECT ROCK mark alongside counterfeit footwear products, Respondent must have been aware of Complainant and its marks prior to registering the disputed domain name. See  Compl. Annex. 4. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the PROJECT ROCK mark prior to registering the <projectrock.store> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

 

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 <projectrock.store> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  May 8, 2019