The Complainant is WeWork Companies Inc., United States (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondent is Aryeh Rapaport, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 13, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 19, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant rents out shared office spaces, including desk space, conference rooms, and common areas, on a monthly or annual basis to its members. As of May 2019, the Complainant had more than 650 co-working locations in more than 100 cities around the world. The Complainant owns trademark registrations for the mark WEWORK and several other WEWORK-inclusive marks, including United States. Reg. No. 4,015,942 for the mark WEWORK, issued on August 23, 2011.
The Respondent registered the disputed domain names and on November 7, 2018, and registered on November 8, 2017. None of the disputed domain names is currently being used by the Respondent in connection with an active website other than the parked page to which each of the disputed domain names resolves. In initial communications with the Complainant, the Respondent observed he was not using the disputed domain names in connection with any active website. He also offered to sell the disputed domain names. But those communications ended without a successful transaction. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel proceeds to discuss all three of these elements below. A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark WEWORK in its entirety. The additional words “help” and “helps” do not eliminate such similarity. The addition of the Top-Level Domain “.com” to the disputed domain names also does not eliminate the confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark WEWORK as noted above.
Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights and has prevailed on this first element of the Policy. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See, Canon U.S.A., Inc. v. Miniatures Town,WIPO Case No. D2019-0948.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Complainant observed the following:
- There has never been any relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain names.
- The Complainant has not authorized the Respondent to use the WEWORK mark in a
domain name, at any website, or for any other purpose.
- The Respondent has not provided any evidence of demonstrable preparation to use any of the disputed domain names in connection with a bona fide offering of goods or services.
The Panel agrees with the Complainant’s arguments and accordingly finds that it has established this element under the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
These criteria are not exclusive and the Panel may conclude that the Respondent has acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain names.
In support of its argument under this element of the Policy, the Complainant asserts the following, among other things:
- The Respondent’s use of the WEWORK marks in the disputed domain names shows both the Respondent’s familiarity with the marks and the Respondent’s recognition of the renown of the marks. Given that the Respondent has no connection with the Complainant and has never been authorized by the Complainant to use or register the disputed domain names, the very fact that the Respondent registered the disputed domain names establishes opportunistic bad faith use and registration.
- The disputed domain names all incorporate the Complainant’s registered WEWORK trademark and are confusingly similar to the WEWORK trademark. Given the fame of the Complainant’s marks, almost no matter how the Respondent uses the disputed domain names, consumers are likely to believe that the disputed domain names are related to or associated with the Complainant. Because the ultimate effect of any use of the disputed domain names will likely be to cause (or seek to cause) confusion with the Complainant, the use and registration of the disputed domain names must be considered to be in bad faith.
- The Respondent admits that he has never made any actual use of the disputed domain names other than in connection with the parked pages that currently appear in connection with each of the disputed domain names. Failing to make an active use of a domain name (beyond parking) can constitute bad faith registration and use of the domain name.
The Panel agrees with the Complainant’s arguments and accordingly finds that it has established this element under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: July 3, 2019
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