Complainant is WeWork Companies Inc., United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is D M, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2019. On June 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 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 Respondent of the Complaint, and the proceedings commenced on June 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2019. Three email queries were received by the Center between July 7 and 12, 2019 from the Respondent. The Response was filed with the Center on July 16, 2019. On July 19, 2019, Complainant submitted a supplemental filing. On July 22, 2019, Respondent submitted a reply to Complainant’s supplemental filing. Both submissions were included in the case file, and subsequently considered by the Panel.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 23, 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
Complainant WeWork Companies Inc. (“WeWork” or “Complainant”) is a privately held company, with headquarters in New York, that operates co-working and office spaces. Complainant has over 600 co-working locations in more than 100 cities around the world, serving 400,000 members. Complainant operates under the WEWORK trademarks (the “WEWORK Marks”). Complainant owns valid and subsisting registrations for the WEWORK Marks, used in commerce in the United States since 2009, including United States Registration Number 4,015,942 (registered August 23, 2011). Complainant owns and operates its primary website in connection with its business at the domain names and .
The disputed domain name, , was registered on February 20, 2018. At the time of Complainant’s filing, the disputed domain name redirected to the domain name , which did not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is identical or confusingly similar to the WEWORK Marks. Complainant asserts strong rights in the WEWORK Marks based on its use in commerce in the United States since 2009, and registration of the mark since 2011. Complainant asserts the WEWORK Marks were registered and used prior to Respondent’s registration of the disputed domain name. Complainant asserts the disputed domain name incorporates Complainant’s entire registered trademark, with the descriptive term “team” and the Top-Level Domain (“gTLD”) “.com” extension. Complainant contends the disputed domain name is confusingly similar to Complainant’s registered WEWORK Marks.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts Respondent has not developed any rights or interests, since Respondent admitted that it never used the disputed domain name. Complainant further asserts that if Respondent planned to use the disputed domain name, such use would not be legitimate. Complainant contends there is no relationship that exists between Complainant and Respondent that would give rise to any license, permission, or authorization to use the WEWORK Marks. Complainant contends that because there is no relationship, Respondent cannot show rights or legitimate interests in the disputed domain name.
Complainant asserts Respondent registered and uses the disputed domain name in bad faith. Complainant contends that Respondent’s incorporation of the WEWORK mark into the disputed domain name shows Respondent’s familiarity and recognition of the WEWORK Marks. Complainant further asserts the WEWORK mark has been deemed well known in prior UDRP determinations, and therefore Respondent was aware of the mark when it registered the disputed domain name. Complainant further contends the disputed domain name is confusingly similar to the WEWORK trademarks, and given the fame of Complainant’s marks, consumers are likely to believe that the disputed domain name is related to or associated with Complainant. Complainant asserts that any use of the disputed domain name would cause confusion and would be considered use in bad faith. Complainant asserts that after delivering a cease and desist letter to Respondent, Respondent showed bad faith by attempting to profit from the disputed domain name, by requesting payment for the disputed domain name. Complainant asserts Respondent has not made any use of the disputed domain name.
In its unsolicited supplemental submission, Complainant also asserted Respondent failed to counter Complainant’s prima facie showing that the disputed domain name is identical or confusingly similar to Complainant’s WEWORK trademark, that Respondent does not have any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Complainant also asserts that Respondent has presented arguments and evidence that could not have been reasonably anticipated at the time the Complaint was filed. Complainant further contends Respondent did not provide evidence supporting Respondent’s alleged plans to use the disputed domain name, which it only raised for the first time in its formal Response in this proceeding. Complainant asserts Respondent’s alleged plans for the disputed domain name are nothing more than a ploy in order to try and establish legitimate use. Finally, Complainant asserts Respondent admits to using the disputed domain name in bad faith through non-use and by attempting to sell the disputed domain name. B. Respondent
Respondent asserts “WeWork” is not identical to “teamwework,” nor is it confusingly similar thereto.
Respondent asserts that it is creating a small local organization to provide services to kids of low income, single parent families in low income neighborhoods in San Francisco. Respondent asserts the market is entirely separate and unrelated to Complainant’s target market. Respondent therefore asserts rights and a legitimate interest in the disputed domain name.
Respondent asserts the domain name is not being used in bad faith. Respondent asserts the disputed domain name is not visible anywhere on the Internet, and therefore questions how it can be used in bad faith. Respondent asserts the disputed domain name was parked by GoDaddy on the default GoDaddy parked page. Respondent asserts the term “teamwework” did not appear anywhere on the web page. Respondent asserts there was no offer to sell the disputed domain name, stated Respondent could sell it if trademark infringement was found. Respondent asserts there is no trademark infringement. Respondent asserts Complainant has been operating since 2009, and Respondent purchased the disputed domain name ten years after Complainant entered business. Respondent asserts that if the disputed domain name was critical or minimally useful to Complainant, Complainant would have purchased the domain name. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In addition to the Complaint and formal Response, the Panel has also considered the Parties’ additional submissions. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for the purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant provided evidence of ownership of the WEWORK Marks. With Complainant’s rights in the WEWORK Marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic gTLD in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2019-0842.
Here, the disputed domain name is confusingly similar to Complainant’s WEWORK Marks, because the WEWORK mark is fully incorporated into the disputed domain name at the second level, and the addition of the descriptive term “team” preceding the mark does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in the WEWORK Marks, and showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that a respondent possess no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1939. Once Complainant makes such a prima facie showing, the burden of production shifts to the respondent, through the burden of proof always remains on the complainant.
Paragraph 4(c) of the Policy further provides that the following circumstances can be situations in which Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. See WIPO Overview 3.0, sections 2.1, 2.2, 2.3, 2.4, and 2.5.
From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the WEWORK Marks. Furthermore, Respondent is not commonly known by “Team We Work” or “We Work” nor is it using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use. See, e.g., Playboy Enterprises, Inc. v. Tom Baert,WIPO Case No. D2007-0968. Respondent argues that it has rights and legitimate interest in the disputed domain name because Respondent is “creating a small local organization to provide services to kids of low income, single parent families in low income neighborhoods in San Francisco”. However, Respondent failed to include any evidence of business formation, evidence of credible investment in website development or promotional materials, proof of genuine business plans to utilize the disputed domain name, and/or credible signs of pursuit of a business plan. Moreover, Respondent admitted there was yet to be any use of the disputed domain name. See, e.g., Bruyerre S.A. v. Online Systems,WIPO Case No. D2016-1686 (“Given that there is no active website associated with the Disputed Domain Name, the Panel does not find that the Respondent is making any use of the Disputed Domain Name within the meaning of paragraph 4(c) of the Policy.”). This Panel cannot find that Respondent has any rights or legitimate interests in the disputed domain name without some evidence of bona fide pre-complaint preparations to use the disputed domain name in connection with the purported philanthropic endeavor.
Moreover, the Panel established Complainant’s registered, federal trademark rights in the WEWORK Marks. Respondent knew or should have known, even based on “the most rudimentary Internet search”, about Complainant’s business and its protectable rights in its WEWORK Marks. See Arne Jacobsen Design I/S v. Domain Administrator, DomainM,WIPO Case No. D2017-0552.
Respondent failed to submit any credible evidence demonstrating rights or legitimate interests in the disputed domain name, and therefore this Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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 web site 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 or service on your website or location.”
Complainant owns several WEWORK Marks in the United States, where Respondent is located. Given the Complainant’s prominent use of the WEWORK Marks across the United States, this Panel finds Respondent must have known or been aware of Complainant’s rights in the well-known mark.
Panels have found that non-use of a domain name may provide a finding of bad faith under the doctrine of passive holding. See, e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. God, Inc.,WIPO Case No. D2017-0246. In the instant proceeding, the disputed domain name merely redirects to another domain name, , which at the time the Complaint was filed, did not resolve.
Respondent provided a response to the Complaint, stating Respondent’s intent to use the disputed domain name as the “vision of the group [serving low income families in San Francisco] in development”. However, Respondent did not provide any credible, evidence-backed rationale for registration of the disputed domain name or present any evidence as to why Respondent would have any independent right to or legitimate interest use of the disputed domain name. The Panel therefore cannot find a plausible explanation of why Respondent selected the disputed domain name. See, e.g., Virgin Enterprises Limited v. Cesar Alvarez,WIPO Case No. D2016-2140; Missoni S.p.A. v.米索尼股份有限公司/Missoni Limited,WIPO Case No. D2015-0843. Respondent did not even provide the name of the purported group and any rationale as to why it selected the disputed domain name, containing Complainant’s WEWORK mark, in connection with this purported endeavor. Therefore, this Panel concludes, that the totality of the circumstances are indicative of bad faith.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) of 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 name, be transferred to the Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: August 22, 2019
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