WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WeWork Companies Inc. v. Dustin Mitchell / Dustin Mitchell LLC
Case No. D2016-2196
1. The Parties
The Complainant is WeWork Companies Inc. of New York, New York, United States of America ("USA" or "US"), represented by Fross Zelnick Lehrman & Zissu, PC, USA.
The Respondent is Dustin Mitchell of Plano, Texas, USA and Dustin Mitchell, Dustin Mitchell LLC of Saint Louis, Missouri, USA.
2. The Domain Names and Registrar
The disputed domain names <weworkindallas.com> and <weworkuptown.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2016. On October 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 1, 2016, 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 November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2016. On November 24, 2016, the Respondent sent an informal email communication to the Center, to which the Center replied on November 25, 2016, indicating that appointment of the Administrative Panel would commence.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 6, 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
The Complainant, founded in 2009, is organized as a Delaware business corporation and headquartered in New York, New York, USA. The Complainant leases office space in New York and 38 other cities in the US and other countries and then provides office space, technical services, support staff, shared conference rooms, cleaning services, and other infrastructure to its customers ("members"), offering facilities and services to individual entrepreneurs, start-up businesses, and more established businesses. The company is young but has made a name for itself quickly, advertising heavily and attracting media attention, as reflected in the record, with a strong online presence on social media as well as at "www.wework.com" (obtaining that domain name in October 2010 and similar domain names based on WEWORK since then). A Forbes magazine article dated November 24, 2014 reported that "WeWork is the fastest growing lessee of new office space in New York and next year will become the fastest growing lessee of new space in America as it spreads to cities such as Austin and Chicago, not to mention London, Amsterdam and Tel Aviv."
Each of the Complainant's locations is identified with a relevant geographical or descriptive name, such as "WeWork Harlem", "WeWork Empire State," and "WeWork Times Square". The Complainant is preparing to open its first office space in Dallas, Texas in early 2017, named "WeWork Uptown", and is already giving tours of that space to prospective members. The Complaint attaches screenshots from the Complainant's website dated October 26, 2016 advertising the facilities as "Dallas Coworking Office Space" and "Uptown Coworking Office Space" at "WeWork Uptown", "WeWork Office in Dallas."
The Complainant holds numerous trademarks consisting of, or including, WEWORK in more than 70 jurisdictions, including US Trademark Registration Number 4015942 (registered on August 23, 2011) for WEWORK as a standard character mark.
According to the Registrar, the Domain Name <weworkindallas.com> was created on September 26, 2016 and registered in the name of the Respondent Dustin Mitchell, showing a postal address in Plano, Texas, USA. The Domain Name <weworkuptown.com> was created a few days later, on October 1, 2016, also registered by Dustin Mitchell but on behalf of the organization "Dustin Mitchell LLC", with a postal address in St. Louis, Missouri, USA. Dustin Mitchell, LLC is currently registered as a limited liability company in Missouri, according to the online database maintained by the Missouri Secretary of State, at the same postal address shown in the Registrar's WhoIs database, with Mr. Mitchell shown as the company's organizer and registered agent. For purposes of this Decision, Mr. Mitchell and Dustin Mitchell LLC will be collectively referred to as the "Respondent".
The Domain Name <weworkindallas.com> currently resolves to a parking page hosted by the Registrar and headed, "This Web page is parked for FREE, courtesy of GoDaddy.com." The parking page displays pay-per-click ("PPC") advertising links for various third parties, including hotels and travel and employment services. The page also displays the Registrar's standard offers to the Domain Name owner develop a website, and to third parties who might be interested in purchasing the Domain Name. The heading on the parking page suggests that the Respondent has done nothing with the Domain Name to date but allow it to be parked by the Registrar for free and has not subscribed to the Registrar's "CashParking" program, which would allow the Respondent to share in PPC advertising revenues from the parking site.
The Domain Name <weworkuptown.com> redirects to a Facebook page at "www.facebook.com/weworkuptown" that now produces the error message, "Sorry, this page isn't available," following the Complainant's takedown request to Facebook in October 2016. The Complaint attaches screenshots of the content to which that Facebook page previously directed visitors: a "Workspace Tour" of "WeWork Dallas" with updates on the Complainant's upcoming Dallas Uptown workspace. Visitors were invited to "Share our Facebook page with your friends and receive a free invitation to our kickoff happy hour!" and to "schedule a workplace tour". According to the Complainant, the Respondent is not affiliated with the Complainant, was not authorized to post content or make invitations on the Complainant's behalf, and did not communicate any requests for workspace tours to the Complainant.
The Respondent has also claimed a relationship with the Complainant on social media, describing the WeWork Uptown location in Dallas as "A WeWork Companies Inc. and Dustin Mitchell, LLC workspace" on Mr. Mitchell's Twitter account at "www.twitter.com/dustincmitchell". The Complainant denies any relationship with the Respondent, and the Respondent has not replied substantively in this proceeding.
5. Parties' Contentions
The Complainant asserts that both Domain Names are confusingly similar to its registered WEWORK trademarks and that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant argues that the Respondent deliberately misled Internet users concerning a supposed relationship with the Complainant and the planned Dallas WEWORK facility, presumably to attract visitors to the Respondent's social media pages for ultimate commercial gain, which must be considered bad faith registration and use for purposes of the Policy.
The Respondent sent an email to the Center on November 24, 2016, saying, "This is the first communication that I have received from you." The Center replied on November 25, 2016, recounting its prior electronic and courier communications to the Respondent, using the contact details furnished by the Registrar and the publicly available WhoIs, and inviting the Respondent to submit a late Response that would be brought to the Panel's attention when it was appointed. The Respondent did not communicate further.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The first element of a UDRP complaint "serves essentially as a standing requirement" and entails "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
The Complainant holds registered WEWORK trademarks, and both Domain Names incorporate that mark in its entirety, adding a geographical or descriptive term that does not eliminate confusion, particularly in these circumstances, where the Complainant was in the process of launching a WEWORK facility in Dallas named "WeWork Uptown". See id. ("the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold Internet user confusion"). The ".com" generic top-level domain name portion of the URL is also not materially distinctive in this case and does not eliminate confusion.
Accordingly, the Panel finds confusing similarity with respect to both Domain Names and concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, it is undisputed that the Complainant has not given the Respondent permission to use its mark, which is incorporated in its entirety in the Domain Names. The Respondent has not made noncommercial fair use of the Domain Names. The Respondent has allowed one to be parked indefinitely for a PPC advertising portal, while using the other to redirect visitors to the Respondent's commercial Facebook page pretending to have a relationship with the Complainant that the Complainant denies. In his email of November 24, 2016, the Respondent did not come forward to establish rights or legitimate interests in the Domain Names in this proceeding. The Panel concludes that the Complainant has met its burden of establishing the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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."
While the Complainant's WEWORK mark is comprised of a common English phrase, the Respondent was clearly aware of the mark and its value in connection with the imminent opening of the Complainant's Dallas "Uptown" shared office space. Within days of the Domain Name registrations, one of the Domain Names redirected Internet users to a photographic tour of the Complainant's Dallas Uptown office facilities, provided information about it, and offered to obtain invitations to tours and events there. Other social media posts by the Respondent claimed an affiliation with the Complainant's project, presumably to add luster to the Respondent's professional reputation and attract attention to Mr. Mitchell's various "entrepreneurial" ventures. Given the timing of the Domain Name registrations (the Panel notes that local media reported on the Complainant's Dallas plans before October 2016) and the Respondent's Facebook and Twitter content, it is probable that the Respondent selected the Domain Names to exploit the Complainant's mark and the publicity surrounding the impending launch of the Complainant's Dallas facility. The Respondent has not advanced any alternative motivation for acquiring the Domain Names. The Respondent acted promptly to exploit one of the Domain Names by redirecting visitors to the Respondent's Facebook page, while allowing the other to be used by the Registrar, for the time being, for commercial gain from unrelated PPC advertising. In either case, the Panel finds this use of the Domain Names to be bad faith within the meaning of the Policy.
The Panel concludes that the third element of the Policy, registration and use in bad faith, has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <weworkindallas.com> and <weworkuptown.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: December 15, 2016