World Wrestling Entertainment, Inc. v. KAMAL PREET SINGH / XTREME-DOWNLOADS
Claim Number: FA1403001547368
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is KAMAL PREET SINGH / XTREME-DOWNLOADS (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ppvwwe.com>, registered with ENOM, 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.
Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 10, 2014.
On March 10, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <ppvwwe.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 March 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@ppvwwe.com. Also on March 11, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 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.
i. Complainant, World Wrestling Entertainment, Inc., is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company. Complainant is committed to family-friendly content across all of its platforms, including television programming, pay-per-view, digital media, and publishing.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WWE mark (e.g., Reg. No. 2,772,683, registered October 7, 2003).
iii. The <ppvwwe.com> domain name at issue incorporates Complainant’s WWE mark in its entirety, along with the generic term “ppv.”
i. Respondent should be considered as having no rights or legitimate interests in respect of the domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent registered and is using the domain name for its own commercial gain via pay-per-click advertisements offered on the sites along with unlicensed pirated streams of Complainant’s programming.
i. The domain name should be considered as having been registered and being used in bad faith.
ii. Respondent uses the <ppvwwe.com> domain name as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by Complainant on its own <wwe.com> and <wwenetwork.com> websites.
iii. Respondent’s site provides pay-per-click links to other third-party sites.
iv. Respondent knew of the fame and value of the WWE marks at the time the domain name was registered.
B. Respondent
Respondent failed to submit a 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 argues that it is an integrated media organization, a recognized leader in global entertainment, and a publicly traded company. Complainant asserts that it is committed to family-friendly content across all of its platforms, including television programming, pay-per-view, digital media, and publishing. Complainant contends that it owns trademark registrations with the USPTO for the WWE mark (e.g., Reg. No. 2,772,683, registered October 7, 2003). The Panel notes that although Respondent resides in India, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the 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.”). The Panel finds that Complainant’s registration of the WWE mark with the USPTO shows rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <ppvwwe.com> domain name at issue incorporates Complainant’s WWE mark in its entirety, along with the generic term “ppv.” The Panel finds that Respondent’s addition of a generic term to Complainant’s mark does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel determines that Respondent’s inclusion of a gTLD to the WWE mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel holds that Respondent’s <ppvwwe.com> domain name is confusingly similar to Complainant’s WWE mark under 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 is not commonly known by the <ppvwwe.com> domain name. Complainant contends that Respondent has no connection or affiliation with Complainant or its marks, and has not received license or consent, express or implied, to use Complainant’s marks in a domain name. Complainant asserts that it does not sponsor or endorse Respondent in any way. The Panel notes that the WHOIS information identifies “KAMAL PREET SINGH / XTREME-DOWNLOADS” as the registrant of the disputed domain name. In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. The Panel finds that Respondent is not commonly known by the <ppvwwe.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent registered and is using the <ppvwwe.com> domain name for its own commercial gain via pay-per-click advertisements offered on the sites. Complainant alleges that Respondent’s website purports to legitimately offer an avenue to view Complainant’s unlicensed and unauthorized video content. Id. The Panel finds that Respondent is using the disputed domain name to offer competing advertisements or to attempt to offer a competing website. The Panel holds that Respondent is not using the <ppvwwe.com> domain name in connection with 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)(ii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. 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).
Complainant has proven this element.
Complainant claims that Respondent uses the <ppvwwe.com> domain name as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by Complainant on its own <wwe.com> and <wwenetwork.com> websites. Complainant argues that upon arrival at Respondent’s website, consumers could certainly believe the sites are sponsored by, endorsed by, or affiliated with Complainant. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel held that “Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Thus, the Panel holds that Respondent’s competing use of the disputed domain name is disruptive to Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s site provides pay-per-click links to other third-party sites. Complainant contends that Respondent is using the <ppvwwe.com> domain name for its own commercial gain via pay-per-click advertisements offered on the sites. Complainant alleges that Respondent is benefitting financially when consumers are confused into thinking Respondent’s use of Complainant’s famed WWE marks is authorized, sponsored, or endorsed by Complainant. The Panel holds that Respondent is using the <ppvwwe.com> domain name to attract consumers to its website for commercial gain, demonstrating bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent knew of the fame and value of the WWE marks at the time the domain name was registered. Complainant alleges that Respondent registered its disputed domain name long after numerous trademark applications had been filed for and obtained by Complainant. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent’s decision to host pirated versions of Complainant’s programming is evidence that Respondent had actual knowledge of Complainant's WWE mark and rights and therefore the Panel finds that Respondent registered the <ppvwwe.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed 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 <ppvwwe.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 11, 2014
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