World Wrestling Entertainment, Inc. v. Damn Crise
Claim Number: FA1602001662389
Complainant is World Wrestling Entertainment, Inc. (“Complainant”), represented by Matthew C. Winterroth of World Wrestling Entertainment, Inc., Connecticut, USA. Respondent is Damn Crise (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwevideoz.com> (“the Domain Name”), registered with GoDaddy.com, LLC.
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.
Alan L Limbury as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 25, 2016.
On February 24, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the 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 February 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2016 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@wwevideoz.com. Also on February 25, 2016, 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 March 7, 2016.
A timely Additional Submission from Complainant was received and determined to be complete on March 7, 2016.
On March 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, World Wrestling Entertainment, Inc., uses the WWE mark in connection with its business as a leader in entertainment and retail products. Complainant has rights in the WWE mark based on registration of the mark with many intellectual property organizations including the United States Patent and Trademark Office (e.g., Reg. No. 2,772,683, registered May 7, 2002).
The Domain Name is confusingly similar to Complainant’s famous trademark WWE and other WWE-formative marks in which Complainant has rights; Respondent has no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Respondent has no connection with Complainant, has no consent to use Complainant’s WWE marks and is not sponsored or endorsed by Complainant in any manner. Respondent is not known as “WWE VIDEOZ” and has not made legitimate, non-commercial or fair use of the Domain Name, without intent for commercial gain or without intent misleadingly to divert consumers.
Respondent uses the Domain Name to divert money from would-be visitors to Complainant’s websites and its video partners’ respective websites, resulting in a loss of sales of Complainant’s video media. No such use of the Domain Name and website can be considered legitimate or fair. Customers looking for Complainant’s video services online are highly likely to come across Respondent’s fraudulent site and partake in the viewing of unauthorized video content owned and copyrighted by Complainant and legitimately offered online by Complainant and its other authorized parties.
As to bad faith registration, the Domain Name was registered to Respondent in February 2016, long after Complainant obtained numerous trademark registrations, first filed in the United States, Hong Kong, China and India in 2002 and Russia in 2003.
The content of Respondent’s website makes it clear that Respondent knew of and sought to capitalize on the fame and value of the WWE marks at the time the Domain Name was registered. It is inconceivable that Respondent could have registered in good faith a domain name that merely adds a generic term to the WWE® trademark.
Further, on information and belief, the Indian address and phone number Respondent provided to the Registrar are patently false and inoperative, respectively, demonstrating bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent is using the Domain Name in bad faith as part of an operation to allow its viewers to watch unlicensed video material copyrighted and monetized by Complainant.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the WWE marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of services purportedly offered from Respondent’s website
B. Respondent
Respondent says he has removed all the WWE data from his website, is sorry and will not again copy any video.
C. Additional Submission
In reply, Complainant says Respondent continues to use WWE marks in the Domain Name and could restore infringing website content at any time, absent a transfer decision in favour of Complainant. Respondent should not be rewarded for sanitizing its website upon notice of infringement, particularly since Complainant contends that bad faith use and registration have been clearly established in these proceedings.
This dispute should be decided with regard only to the facts and evidence as they existed at the time the Complaint was filed.
The Domain Name was registered in the name of Respondent on February 2, 2016. When the Complaint was filed the Domain Name resolved to a website depicting the WWE mark and, inter alia, offering videos of wrestling events.
The Complainant has established all the elements entitling it to transfer of the Domain Name.
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 Complainant to prove each of the following three elements to obtain an order that the 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.
Complainant has shown that it has rights in the WWE mark and other WWE-formative marks, as well as in numerous domain names incorporating the WWE mark.
The Domain Name comprises the Complainant’s WWE mark, together with the misspelled generic word “videoz” and the inconsequential gTLD “.com”, which may be disregarded.
The Panel is satisfied that the Domain Name is confusingly similar to Complainant’s WWE Mark.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate her rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that, years prior to the registration of the Domain Name, the WWE mark had become distinctive and famous. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that he does have rights or legitimate interests in the Domain Name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
In Response to the Complaint, Respondent has stated that he has removed all WWE content from the website but Respondent has made no attempt to show that he has rights or legitimate interests in the Domain Name. The Panel must decide this case on the state of affairs that existed at the time when the Complaint was filed.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Relevant to this case is paragraph 4(b)(iv):
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
As mentioned, the relevant time at which Respondent’s conduct is to be evaluated is the date of the filing of the Complaint. The claimed removal by Respondent from its website of WWE content subsequent to the filing of the Complaint is not an answer to the Complaint, while constituting an acknowledgement that the website did display Complainant’s WWE mark and other content likely to be associated by Internet users with Complainant.
Given the manner in which Respondent has used the Domain Name, the Panel accepts Complainant’s submission that Respondent must have had actual knowledge of Complainant’s rights in the WWE marks when Respondent registered the Domain Name and that Respondent did so in order to trade off the reputation of Complainant’s WWE marks. Further, at the date of the filing of the Complaint, Respondent intentionally used the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s WWE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the video services offered on its website.
Accordingly the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwevideoz.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Alan L Limbury, Panelist
Dated: March 15, 2016
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