World Wrestling Entertainment, Inc. just gained control of wwe.org.
The domain name was parked and the domain owner just months after registering the domain name offered to sell the trademark holder the domain for $50,000
Here are the highlights from the one panel decision:
Complainant has rights in the WWE mark through registrations with trademark agencies worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 2,772,683 registered Oct. 7, 2003, filed May 7, 2002), and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,211,638 registered August 7, 2003). Complainant uses the WWE mark in furtherance of its professional wrestling events and related products. The domain name is identical to the WWE mark.
Respondent registered the disputed domain name in April 2014.
On September 4, 2014, Respondent contacted Complainant’s offices to discuss the possible sale of the wwe.org domain name.
Respondent indicated that the asking price for the domain name was $50,000.
Such inquiry and correspondence, so shortly after registration, evinces bad faith.
Early in September, Respondent resolved the domain name to promote pay-per-click links to other third-party sites.
Later in the month Respondent altered the landing page in an effort to make it appear that the name was used by “Western Women Entrepreneurs.” A Google search for “Western Women Entrepreneurs” does not correspond to a single reliable link.
Still, the domain name does not resolve to an active page, but instead leads to an “under constructive” page.
Further, Respondent had constructive knowledge of Complainant’s rights in the WWE mark at the time the domain name was acquired in April 2014.
Complainant uses the WWE mark in furtherance of its professional wrestling events and related products. Complainant has rights in the WWE mark through registrations with trademark agencies worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 2,772,683 registered Oct. 7, 2003, filed May 7, 2002), and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,211,638 registered August 7, 2003).
The Panel concludes that such trademark registrations with the USPTO and SAIC satisfy the initial rights requirement of Policy ¶ 4(a)(i).
Respondent argues that the domain name is comprised merely of three generic letters which can serve a variety of acronyms. However, prior panels have concluded that this argument is not pertinent to the Policy ¶ 4(a)(i) analysis, but is instead relevant to Policy ¶¶ 4(a)(ii) and (iii).
In light of the evidence presented, the Panel finds that Respondent is not commonly known by the name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent has not made a legitimate, noncommercial or fair use of the domain name.
Instead, Complainant argues Respondent is using the disputed domain name for commercial gain. Complainant urges that Respondent initially used the disputed domain name to promote click-through links.
Respondent admits such use, albeit for minimal gain.
The Panel notes that Respondent alludes to an effort under the name “Western Women Entrepreneurs,” but fails to provide any evidence of its progress or recognition of Respondent with that name.
Prior panels have found that the promotion of hyperlinks for purposes of click-through revenue may demonstrate that a respondent lacks rights in the disputed domain name.
Accordingly, this Panel agrees that Respondent’s prior use of featuring click-through fees unrelated to Complainant through the wwe.org domain name amounts to neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
Further, Complainant argues that by September 15, 2014, Respondent redirected the domain name to display an under construction page featuring the header “Western Women Entrepreneurs.”
Respondent purportedly plans to launch the website under this name in connection with legal services for businesswomen. However, Respondent provides no corroborating evidence of such a plan. Complainant notes that a Google search for “Western Women Entrepreneurs” does not correspond to a single reliable link.
In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), the panel wrote, “Respondent’s unsupported statement that a potentially legitimate [genealogy] website will be coming soon will not suffice to demonstrate rights or interests under Policy ¶ 4(a)(ii)” where the respondent provided no evidence that it actually planned to host a genealogy site and misspelled the only instance of the word “genealogy” on its website. Other panels have similarly been skeptical of “under construction pages.”
Accordingly, the Panel holds that Respondent’s reliance on this under construction page is insufficient under the circumstances to evince legitimate use.
Complainant claims Respondent has attempted to sell the domain name for an amount that far exceeds its fair market value, which further demonstrates a lack of rights or legitimate interests.
In Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), the panel wrote, “An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”
Here, Complainant urges that Respondent initiated the offer to sell. Further, Complainant recalls that Respondent indicated that the asking price for the domain name was $50,000.
The Panel finds that under the facts and circumstances, Respondent’s efforts to sell the domain name to Complainant reveal a lack of rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
The Panel notes that Respondent’s current landing page also includes a disclaimer.
Prior panels have concluded that a disclaimer fails to mitigate confusion.
Accordingly, the Panel agrees that this disclaimer is insufficient per Policy ¶ 4(a)(ii).
Based on all of the above discussion, the Panel holds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s efforts to sell Complainant the domain name for significant profit. Complainant explains that Respondent registered the disputed domain name in April 2014, then on September 4, 2014, Respondent contacted Complainant’s offices to discuss the possible sale of the domain name. Respondent indicated that the asking price for the domain name was $50,000.
Complainant asserts that such inquiry and correspondence, so shortly after registration, evinces bad faith.
Respondent argues that its efforts to sell the domain name were not directed at Complainant. Instead, Respondent explains he had been attempting to sell the domain name for five months before approaching Complainant. The Panel notes that Respondent has provided evidence of his marketing efforts. Further, Respondent claims he is in the business of selling domain names.
However, the Panel believes that based on the facts and circumstances Respondent did intend to target Complainant.
The Panel concludes that Respondent’s sales efforts demonstrate bad faith in that Respondent registered the domain name with the intent of capitalizing on the Complainant’s trademark interest.
The Panel further concludes that while Respondent is a seller of generic domain names, Respondent registered its domain name after the Complainant’s registration of its WWE mark and subject to actual knowledge of Complainant’s rights in its marks.
The Panel agrees, under the facts and circumstances of the case, that Respondent’s actions of approaching Complainant and offering to sell the name at a considerable price evinces Policy ¶ 4(b)(i) bad faith.
Complainant urges that the disputed domain name previously resolved to a pay-per-click website, from which Respondent generated revenue in violation of Policy ¶ 4(b)(iv).
Prior panels have found evidence of bad faith where the domain name resolves to promote hyperlinks for profit. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel notes that Respondent has admitted to having generated some revenue, albeit nominal, from the pay-per-click activity.
Complainant argues that Respondent’s alteration of the domain name from a revenue generating website with pay-per-click links to one that mirrors a prior holder’s legitimate use (Wisconsin Women Entrepreneurs) does not avoid bad faith. Complainant notes that Respondent admitted in his Response that he only made this change after notice of this UDRP complaint. Further, Complainant cites a Google search for “Western Women Entrepreneurs” to argue that the plan is a guise as the name does not correspond to a single reliable link.
Prior panels have found bad faith where the respondent has made no demonstrable preparations to use.
The Panel finds that Respondent has failed to provide any evidence supporting his Western Women Entrepreneurs venture, and that the under construction page amounts to an inactive use in violation of Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the WWE mark at the time the domain name was acquired in April 2014. In its Additional Submission, Complainant urges that Respondent also had actual knowledge of Complainant’s rights.
Based on the facts and circumstances in this case, including Respondent’s efforts to sell the domain name to Complainant, the Panel infers that Respondent registered the domain name with actual knowledge of Complainant’s rights in the WWE mark, and therefore finds evidence of bad faith under Policy ¶ 4(a)(iii).
