World Wrestling Entertainment, Inc. v augle thee / company
Claim Number: FA1409001580338
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is augle thee / company (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwe-market.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 18, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wwe-market.com> 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 September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@wwe-market.com. Also on September 22, 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 October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
A. Complainant’s Contentions
1. Complainant has rights in the WWE mark and uses this mark to promote a large wrestling entertainment business. The <wwe-market.com> domain name is confusingly similar to this mark.
2. Respondent has no rights in the <wwe-market.com> domain name because Respondent is not known by this name, and Respondent uses the domain name for purposes of promoting the sale of counterfeit WWE goods.
3. Respondent has registered and is using the <wwe-market.com> domain name in bad faith. First, Respondent is wrongfully profiting from the likelihood Internet users will mistake the counterfeit goods as legitimate WWE merchandise. Further, the use of WWE marks on the domain name’s website indicates the domain name was registered and used with full knowledge of Complainant’s rights.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <wwe-market.com> domain name is confusingly similar to Complainant’s WWE mark.
2. Respondent does not have any rights or legitimate interests in the <wwe-market.com> domain name.
3. Respondent registered or used the <wwe-market.com> domain name 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:
(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 claims that the WWE mark is used to promote wrestling services and that the mark’s USPTO registration (e.g., Reg. No. 2,772,683, registered Oct. 7, 2003) is evidence of such rights. The Panel concludes that these registrations are indeed solid evidence of Policy ¶ 4(a)(i) rights in the WWE mark. 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.”).
Complainant further argues that <wwe-market.com> domain name is confusingly similar to the mark
in that merely hyphenating on the generic sales term “market” and the gTLD
“.com” is not enough to distinguish an Internet domain name under Policy ¶
4(a)(i). This Panel agrees that such is true and the domain name here is
confusingly similar. See Google Inc. v. N/A/ k gautam, FA
1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name
is confusingly similar to the at-issue mark despite the misspelling of the mark
by omitting letters, the addition of a generic term, and the addition of a
generic top-level domain).
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 looks to the WHOIS record to show that there is no readily available information to illustrate Respondent is known by any name relevant to this domain name—the WHOIS record listing “augle thee / company” as the registrant. The Panel agrees there is no basis for finding under Policy ¶ 4(c)(ii) here. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant further argues that Respondent’s use of the domain name as a home for counterfeit WWE goods is illegitimate. The Panel agrees that the <wwe-market.com> domain name does seem to resolve to a website wherein goods are sold under the WWE mark without Complainant’s permission. See Compl., at Attached Ex. 8. In Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), the panel found that counterfeit sales could not amount to a use admissible under Policy ¶ 4(a)(ii). This Panel concludes that Respondent’s use of the domain name simply does not fall within the confines of Policy ¶ 4(a)(ii) nor its progeny in Policy ¶ 4(c).
First, Complainant argues that Respondent is wrongfully profiting from the likelihood Internet users will mistake the counterfeit goods as legitimate WWE merchandise. The Panel again notes Exhibit 8, showing use of the domain name to use Complainant’s marks to promote Respondent’s endeavor of selling counterfeits. As such, this Panel concludes that Policy ¶ 4(b)(iv) bad faith is present in this case. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Further, Complainant suggests that the use of WWE marks on the domain name’s website indicates the domain name was registered and used with full knowledge of Complainant’s rights. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwe-market.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 29, 2014
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