WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WeWork Companies Inc. v. Stacey Marcelle
Case No. D2016-1762
1. The Parties
Complainant is WeWork Companies Inc. of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States.
Respondent is Stacey Marcelle of Seattle, Washington, United States.
2. The Domain Names and Registrar
The disputed domain names <weworkconsulting.com>, <weworksp.com>, and <weworkstrategists.com> are registered with FastDomain, Inc. (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 29, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information and other details of each registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. Respondent submitted an informal and profane email communication to the Center on September 12, 2016. Respondent did not submit a formal response. Accordingly, on September 27, 2016, the Center notified the parties about the commencement of the panel appointment process. Respondent submitted a second email communication to the Center on September 29, 2016.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 3, 2016. 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 owns several United States federal trademark registrations for the mark WEWORK, the earliest of which, for services related to “co-working facilities”, was registered in December 2013, claiming a date of first use of February 2010. Complainant has owned the domain name <wework.com> since late 2010 and has registered a number of other “wework”-based domain names.
In March 2016, Respondent registered the three disputed domain names; it does not appear that they are being used by Respondent. Instead, it appears that each has been “parked” by the Registrar. In response to Complainant’s objections to the registrations, Respondent offered to transfer them in exchange for an unspecified amount that would compensate for Respondent’s investment and intellectual property on a “cost‑plus consulting hourly fee” for the registrations and “ideation and business model development.”
5. Parties’ Contentions
1. Identical or Confusingly Similar
Beginning in 2009, Complainant offered work sharing spaces and support services under the WEWORK mark. It owns a United States federal trademark registration for those services, which issued in 2013, along with other registrations for WEWORK marks in the United States and elsewhere.
Each disputed domain name includes the WEWORK mark, followed by the generic terms “strategists” or “consulting” or the letters “sp” (which may be understood as an abbreviation for “service provider”). Each domain name is confusingly similar to Complainant’s WEWORK mark because each incorporates the mark in its entirety and adds a term that does not meaningfully distinguish the domain name from the mark.
2. Rights or Legitimate Interests
Complainant adopted and began using the WEWORK mark prior to Respondent’s registration of the domain names. Given Complainant’s use and registration of the WEWORK mark in many countries, Respondent had actual or constructive notice of Complainant’s rights.
Complainant has not authorized Respondent to use its WEWORK mark. In Complainant’s communications with Respondent, Respondent indicated having a “business model” involving the domain names, but has not provided Complainant with any information regarding that business model. Merely alleging bona fide intention to use the domain names does not establish one, however.
3. Registered and Used in Bad Faith
The fact that each of the three domain names includes Complainant’s well-known mark evidences Respondent’s familiarity with the mark.
The only reason that Respondent would use Complainant’s WEWORK mark in the disputed domain names would be to intentionally confuse consumers, trade on Complainant’s rights, and drive traffic to Respondent’s websites for commercial gain. Consumers are likely to believe that the disputed domain names are associated with Complainant when they are not.
The fact that the domain names are not being actively used constitutes bad faith.
Respondent has also shown bad faith by attempting to profit from the registration of the disputed domain names. In response to Complainant’s objection to the registrations, Respondent sought an unspecified sum in excess of the costs of registration.
Respondent did not formally respond to the Complaint; however, the second email communication to the Center included the following contentions that are pertinent to this proceeding:
- Complainant has no right to claim “any usage of the characters ‘w-e-w-o-r-k’ in any other [sic] context.”
- Respondent used “TESS” to search the domain names before registering them1 .
- There is no initial interest confusion between Complainant’s domain names and those registered by Respondent.
6. Discussion and Findings
Complainant must prove, as to each disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). As noted above, Respondent did not submit a formal response by the September 26, 2016 due date. Respondent did, however, send an informal response to the Center on September 29, 2016, which the Center forwarded to the Panel for consideration in its discretion pursuant to the Rules, paragraph 10.
The deadline for submitting a Response is intended to balance the need to give a respondent a reasonable time in which to submit arguments and evidence against the need to resolve the matter expeditiously to avoid prejudicing the complainant. Rule 10(b) requires the Panel to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” while Rule 10(c) requires the Panel to “ensure that the administrative proceeding takes place with due expedition.” The Panel concludes that under the factual circumstances of this case, Complainant has not been prejudiced. Here, the communication was submitted before the Panel was appointed and did not result in any delay in the proceedings. Accordingly, but without suggesting that the same result would obtain under other circumstances, the Panel will consider any relevant information or argument that it contains.
A. Identical or Confusingly Similar
Complainant’s United States federal trademark registration establishes its rights in the mark WEWORK.
The question then becomes whether each disputed domain name (disregarding “.com”) is identical or confusingly similar to Complainant’s WEWORK mark. None are identical, therefore Complainant must establish confusing similarity. Complainant argues that the addition of the additional terms and letters to “wework” does not sufficiently differentiate the domain names from Complainant’s WEWORK mark. Respondent seems to argue that because Complainant’s trademark rights do not extend to every formulation of the characters “w-e-w-o-r-k” in every other context, others should be free to use those characters in domain names.
In the Panel’s view, for purposes of proceedings under the UDRP, the question of confusing similarity is determined by comparing the mark at issue with each domain name to determine the degree of resemblance as to appearance, sound, and meaning. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (test for confusing similarity typically involves straightforward comparison of mark and alphanumeric string in the domain name). Here, each of the disputed domain names differs only as to the addition of an additional term or abbreviation following “wework”: “consulting”, “sp”, and “strategists.”2 In each case, the additional term does not serve to differentiate or distinguish the domain name from Complainant’s mark. The WEWORK mark remains the dominant portion of the domain name and the additional terms serve a generic function that seems to be related to (as opposed to distinguished from) Complainant’s services.
The Panel finds that each disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view of the Center’s UDRP panels, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of a disputed domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (after complainant makes prima facie case, burden shifts to respondent).
The Panel finds that Complainant has made a prima facie showing under paragraph 4(c) of the Policy, which Respondent has not rebutted. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by any of the domain names. Respondent is an individual named Stacey Marcelle. There is no evidence that Respondent is making a fair or noncommercial use of the disputed domain names or using them in connection with a bona fide offering. The disputed domain names appear to have been parked by the Registrar and to be used to generate “pay per click” revenue. While this is not inherently objectionable; it does not, in the Panel’s view, “of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ . . . or from ‘legitimate noncommercial or fair use’ of the domain name.” See WIPO Overview 2.0, paragraph 2.6. Respondent has not provided any evidence of demonstrable preparations to use any of the domain names in connection with a bona fide offering of goods or services; the bare assertion that Respondent has “invest[ed] time in creating the business concept” is not sufficient.
The Panel concludes that Complainant has established that Respondent lacks rights or legitimate interests in each of the disputed domain names.
C. Registered and Used in Bad Faith
Complainant must establish that each disputed domain name was registered and is being used in bad faith. The Panel finds that Complainant has established bad faith under paragraph 4(b)(i)-(iv) of the Policy.
The Panel finds that Complainant’s mark is well-known and predates registration of the disputed domain names. The Panel finds that it is most probable that Respondent was actually aware of Complainant’s WEWORK mark and services at the time the disputed domain names were registered and in fact registered all three with Complainant’s mark in mind. The Panel does not credit as establishing good faith what appears to be Respondent’s claim to have conducted a search of the United States Trademark Office online search system prior to registering the domain names. A search of “wework” ought to have disclosed Complainant’s registrations as would a search of “wework” followed by a “wildcard”3 . That a search of the specific combination of characters making up each of the disputed domain names would not have disclosed Complainant’s registrations does not, under these circumstances, demonstrate good faith.
As noted above, it appears that the disputed domain names are being used to attract visitors for commercial gain and that visitors are likely to believe that they are accessing sites affiliated with Complainant. The Panel disagrees with what appears to be Respondent’s contention that there is no “initial interest confusion” and draws adverse inferences from Respondent’s failure to submit a formal response to the Complaint.
The Panel finds that Complainant has established that Respondent has registered and is using the disputed domain names in bad faith.
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 <weworkconsulting.com>, <weworksp.com>, and <weworkstrategists.com> be transferred to the Complainant.
Debra J. Stanek
Date: October 17, 2016
1 This appears to be a reference to the United States Patent and Trademark Office’s “Trademark Electronic Search System,” known as “TESS.”
2 Spacing (or lack of spacing) between terms and the addition of the generic Top-Level Domain (“gTLD”) “.com” are not relevant for these purposes.
3 Respondent’s September 29, 2016 communication specifically referenced use of “*” as a wildcard before or after the term “wework” in challenging the scope of Complainant’s rights.