India: WWE wins www.wwetshirts.in domain case
On June 6, 2016, Dr. Vinod K. Agarwal, sole arbitrator appointed by National Internet Exchange of India (hereinafter mentioned as NIXI), has ruled in favor of World Wrestling Entertainment Inc., by transferring the domain name ‘www.wwetshirt.in’ to it.
Brief Background
Complainant, World Wrestling Entertainment Inc., is a well- known company, incorporated in State of Delaware, United States of America. Complainant had initially promoted its business under the name of World Wide Wrestling Federation. Complainant was then acquired by Titan Sports Co. and in 2002, its name was changed to World Wrestling Entertainment. On April 7, 2016, Complainant formally renamed itself ‘WWE’. It is involved in developing, producing and marketing television programmes, live events and licensing and sale of branded consumer products. Complainant has registered its trademark ‘WWE’, in various classes, and have also registered many domain names, incorporating WWE.
On April 18, 2016, the Complainant filed a complaint with the NIXI, stating that the Respondent has registered a domain name which is similar to the Complainant’s trademark. For the purpose of arbitrating the present matter, NIXI appointed a sole Arbitrator. Notice, dated May 20, 2016, was send to the Respondent, requesting him to submit his response latest by June 5, 2016. There was no response sent by the Respondent, hence the ex- party award is passed by the Arbitrator.
Contentions of the Complainant
Contentions regarding the similarity of the domain name
- Complainant’s trademark ‘WWE’, is registered in 63 regions including India. Complainant has also registered 300 domain name incorporating WWE trademark.
- Respondent’s domain name incorporates the entire trademark of the Complainant, hence Respondent’s domain name is identical and substantially similar to Complainant’s trademark. The Complainant also cited various case laws to support its contention.
- The Respondent has not been commonly known by the mark ‘WWE’, as the name of the Respondent organization is not known. Moreover, the Respondent does not have any legitimate interest in respect of the disputed domain name ‘www.wwetshirt.in’. Hence, the Respondent registered the domain name for the sole purpose of misappropriating its association with the Complainant and to create confusion in the minds of the general public.
- The main objective of registering the disputed domain name is to mislead the public. The Respondent has mala fide intention to earn profit from the reputation of Complainant’s trademark.
- There is a likelihood that the visitors of the Respondent’s website may believe that the Complainant has licensed the Respondent to register the disputed domain name or the Respondent has some connection with the Complainant.
- According to Indian Domain Name Dispute Resolution Policy, the Complainant have to prove;
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
- The Respondent has no rights or legitimate interests in respect of the domain name that is subject to the complaint;
- The domain name in question has been registered and is being used in bad faith;
Observations regarding the similarity of the domain name
- The word ‘wwetshirt’ may have many interpretations like, w we tshirt, w wet shirt, wwe tshirts, etc. In the present case, no response has been submitted by the Respondent, hence it may be concluded that the domain name includes the Complainant’s registered trademark ‘WWE’.
- The Complainant has registered many domain names with the word ‘WWE’ and most of them have been registered by the Complainant before the date of registration of Respondent’s domain name.
- It can be inferred that the disputed domain name is substantially similar to the registered trademark of the Complainant.
- The Respondent may establish his legitimate interest in the domain name, by proving any of the following;
- Before the notice of dispute to the Respondent, the Respondent’s use of the domain name is in connection with the bona fide offering of the goods or services;
- The Respondent is commonly known by the domain name;
- The Respondent is making legitimate non- commercial use of the domain name, without harming or using the reputation of the Complainant’s trademark.
- As there is no response from the Respondent, hence based on the contentions of the Complainant it can be concluded that the above circumstances does not exist in the present case and the Respondent does not have any right or legitimate interest in the disputed domain name.
Observations regarding the use in bad faith
- Any of the following circumstances may prove the bad faith of the Respondent;
- The Respondent has acquired the domain name for the purpose of transferring it to the Complainant or to the competitors of the Complainant, in exchange of the valuable consideration.
- The Respondent has registered the domain name, in order to restrict the Complainant from reflecting its trademark in the corresponding domain name.
- The Respondent has registered the domain name for the purpose of disputing the business of the Complainant.
- By using the domain name, Respondent is trying to gain commercial benefit by creating likelihood of confusion among the general public.
- The Respondent has provided an incomplete address, due to which the copy of the complaint sent by post could not be served to the Respondent. This lead to the presumption that the domain name in dispute was registered and used by the Respondent in bad faith.
Held
The disputed domain name is confusingly similar to the Complainant’s trademark. The Respondent has no legitimate interest in the disputed domain name and the same was registered by the Respondent in bad faith. The Arbitrator ordered that the domain name ‘www.wwetshirt.in’ shall be transferred to the Complainant.
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