The We Company v. REDACTED FOR PRIVACY
Claim Number: FA2002001882512
DOMAIN NAME
<wework.fit>
PARTIES
Complainant: The We Company of New York, NY, United States of America
Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C. Todd Martin of New York, NY, United States of America
Respondent: Ye Zhao Long FOR of Shen Zhen Shi Guang Dong, II, USA
REGISTRIES and REGISTRARS
Registries: Minds + Machines Group Limited
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
EXAMINER
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 Examiner in this proceeding.
David J. Steele, as Examiner
PROCEDURAL HISTORY
Complainant Submitted: February 7, 2020
Commencement: February 26, 2020
Default Date: March 12, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the “Rules”).
RELIEF SOUGHT
Complainant requests that the domain name be suspended for the life of the registration.
STANDARD OF REVIEW
Clear and convincing evidence.
FINDINGS and DISCUSSION
Complainant states that it owns several trademarks of national effect for the WEWORK trademark and service around the world, including U.S. Reg. No. 5,276,604. Complainant has provided support for its trademark rights, including a table reciting numerous registrations of national effect from countries around the world. Complainant’s WEWORK mark is also registered in the TMCH. Complainant further submits proof of its current use of its mark. Complainant alleges that the subject domain name, wework.fit is identical or confusingly similar under the Policy.
Complainant alleges that Respondent is not affiliated with the Complainant in any way and was not authorized by Complainant to use the WEWORK trademark. Further, Complainant alleges that the Respondent has no legitimate interest in the domain name in question, Respondent is not named or commonly known as WEWORK. Lastly, Complainant alleges that Respondent has no connection to Complainant, its goods or services, nor is there any basis for Respondent’s use of Complainant’s trademark.
Complainant further alleges that the subject domain name, “[r]espondent is not making any use of wework.fit, as the domain is not configured for use as a website or otherwise. There is no evidence that Respondent intends to make any use of the domain name.”
Complainant asserts when Respondent attempted to register the wework.fit domain name he would have received a warning notice from the TMCH, as part of its Trademark Claims service regarding Complainant’s trademark rights.
Lastly, Complainant explains that “Respondent’s agent has demanded payment in exchange for the wework.fit domain name, stating that ‘I might be able to convince him to some other potential settlement option, with some expense, but lower than the UDRP procedure cost. Please let me know if you are interested to further discuss on it.’”
Respondent failed to file any reply.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Complaint has established its rights to the WEWORK mark under the Policy. The WEWORK mark is the subject of numerous trademark registrations of national effect. Further, the WEWORK mark has been verified by the TMCH.
The subject domain name, wework.fit is identical to Complainant’s mark, except for the addition of the TLD string “fit.” The incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. I find that the subject domain name is identical or confusingly similar to Complainant’s mark.
Determined: Finding for Complainant.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Complainant contends that Respondent has no trademark or other intellectual property rights to the disputed domain name or the WEWORK mark. Additionally, according to the registrar’s verification, the registrant is:
Ye Zhao Long
Shen Zhen Long Gang Zhong Xin Cheng Ai Lian Ru Yi Lu Long
Accordingly, Respondent is not known by the subject domain name.
Further, Respondent has failed to provide any evidence which support any legitimate rights or interests to the domain name.
Determined: Finding for Complainant.
[URS 1.2.6.3] The domain name(s) was registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.
The language of the Policy requires that Complainant show, by clear and convincing evidence that the domain name was registered and is being used in bad faith. (Emphasis added). In many circumstances, a respondent’s non-use of a domain name would place the case outside the scope of the Policy. However, it is important to note that the passive holding of a domain name can still constitute bad faith registration and use. Christian Dior Couture v. aris koulaidis, FA1546033 (Forum April 1, 2014) (passive holding adequate to establish bad faith under the URS “especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc.”); see e.g., Telstra Corporation Limited, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Here, it is inconceivable to this Examiner that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name which is identical to Complainant’s WEWORKS trademark. Complainant’s trademark was validated by the Trademark Clearinghouse prior to the registration of the dispute disputed domain name. As a result, Respondent must have been given a trademark claims notice of Complainant’s rights in the WEWORK trademark. It is apparent that Respondent had Complainant in mind when registering the disputed domain name and that Respondent registered the domain name either with the purpose of selling it to Complainant or in order to prevent Complainant from reflecting its trademark in a corresponding domain name.
Lastly, Complainant explained that “Respondent’s agent has demanded payment in exchange for the wework.fit domain name, stating that ‘I might be able to convince him to some other potential settlement option, with some expense, but lower than the UDRP procedure cost. Please let me know if you are interested to further discuss on it.’”
This response make plain that Respondent’s intent was to register the domain name primarily for the purpose of selling the domain name registration to Complainant, who is the owner of the WEWORK trademark, for valuable consideration in excess of documented out of pocket costs directly related to the domain name. The comment, that the cost to purchase the domain name would be “lower than the UDRP procedure cost” further substantiates Respondent’s intent and his bad faith. Deutsche Lufthansa AG v. jingjing tang et al., FA1558805 (Forum May 27, 2014).
Considering the facts before the Examiner, that the domain name is identical to Complainant’s mark, the worldwide repute of Complainant’s mark, Respondent’s passive use of the domain name, and the offer to sell the domain name for an amount “lower than the UDRP procedure costs,” the Examiner finds the domain name has been registered and is being used in bad faith.
Determined: Finding for Complainant
DETERMINATION
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:
wework.fit
David J. Steele Esq., Examiner
Dated: March 13, 2020
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