[Indexed as: World Wrestling Federation
v. Bosman]
[Indexed as: WorldWrestlingFederation.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D99-0001
Commenced: 9 December 1999
Judgment: 14 January, 2000
Presiding Panelist: M. Scott Donahey
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.
Complainant was registrant of United States service mark and United States trademark. Registrant registered the domain name, worldwrestlingfederation.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.
Held, Name Transferred to Complainant.
Complainant must establish both bad faith registration and bad faith use
It is clear that the domain name WORLDWRESTLINGFEDERATION.COM is identical or confusingly similar to the service mark and trademark registered and used by Complainant, WORLD WRESTLING FEDERATION. It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.
Since domain name was registered on October 7, 1999 and since Respondent offered to sell it to Complainant three days later, for valuable consideration in excess of any out of pocket costs directly related to the domain name, Respondent demonstrated bad faith use of the mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
MelbourneIT Domain Name Registration
Agreement, effective October 7, 1999
Cases referred to
Panavision International, L.P. v.
Dennis Toeppen et al., 141 F. 3d 1316 (9th Cir. 1998)
Intermatic Inc. v. Toeppen, 947
F. Supp 1227 (N.D. III. 1996)
Panel Decision referred to
--
Donahey, Panelist: -
1. The Parties
The complainant is World Wrestling
Federation Entertainment, Inc., f/k/a Titan Sports, Inc., a corporation
organized under the laws of the State of Delaware, United States of America,
having its principal place of business at Stamford, Connecticut, United
States of America. The respondent is Michael Bosman, an individual resident
in Redlands, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <worldwrestlingfederation.com>,
which domain name is registered with Melbourne IT, based in Australia.
3. Procedural History
A Complaint was submitted electronically
to the World Intellectual Property Organization Arbitration and Mediation
Center (the "WIPO Center") on December 2, 1999, and the signed original
together with four copies forwarded by express courier under cover of a
letter of the same date. An Acknowledgment of Receipt was sent by the WIPO
Center to the complainant, dated December 3, 1999.
On December 3, 1999 a Request for
Registrar Verification was transmitted to the registrar, Melbourne IT requesting
it to: (1) confirm that the domain name at issue is registered with MelbourneIT;
(2) confirm that the person identified as the respondent is the current
registrant of the domain name; (3) provide the full contact details (i.e.,
postal address(es), telephone number(s), facsimile number(s), e-mail address(es))
available in the registrar's Whois database for the registrant of the disputed
domain name, the technical contact, the administrative contact and the
billing contact; (4) provide a copy of the registration agreement that
was in effect at the time of the original registration of the domain name,
as well as any subsequent amendments to the agreement; (5) provide a copy
of the domain name dispute policy (if different from ICANN's Uniform Domain
Name Dispute Resolution Policy) that was in effect at the time of the original
registration of the domain name, as well as any subsequent amendments to
the policy.
On December 8, 1999, MelbourneIT
confirmed by reply e-mail that the domain name <worldwrestlingfederation.com>
is registered with MelbourneIT and that the respondent, Michael Bosman,
was the current registrant of the name. The registrar also forwarded the
requested Who is details, as well as copies of the registration agreement
and applicable dispute resolution policy.
The policy in effect at the time
of the original registration of the domain name at issue provided that
"Registrant agrees to be bound by the terms and conditions of this Registration
Agreement." MelbourneIT Domain Name Registration Agreement, effective as
of October 7, 1999, para. 1. Paragraph 7 of the Registration Agreement,
entitled, "Dispute Policy," provides in pertinent part:
Registrant agrees, as a condition
to submitting this Registration Agreement, and if the Registration Agreement
is accepted by MelbourneIT, that the Registrant is bound by MelbourneIT's
current Dispute Policy ("Dispute Policy"). Registrant agrees that MelbourneIT,
in its sole discretion, may change or modify the Dispute Policy, incorporated
by reference herein, at any time. Registrant agrees that Registrant's maintaining
the registration of a domain name after changes or modifications to the
Dispute Policy become effective constitutes Registrant's continued acceptance
of these changes or modifications. Registrant agrees that if Registrant
considers any such changes or modifications to be unacceptable, Registrant
may request that the domain name be deleted from the domain name database.
Registrant agrees that any dispute relating to the registration or use
of its domain name will be subject to the provisions specified in the Dispute
Policy.
Effective December 1, 1999, MelbourneIT
adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the
Internet Corporation for Assigned Names and Numbers ("ICANN") on August
26, 1999 (the "Policy"). There is no evidence that respondent ever requested
that the domain name at issue be deleted from the domain name database.
Accordingly, respondent is bound by the provisions of the Policy.
On December 6, 1999, having received
written permission from the WIPO Center, the complainant submitted (electronically
and in hardcopy) a Supplemental Complaint under cover of a letter of the
same date. The Complaint and Supplemental Complaint will hereafter be referred
to as the "Complaint."
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on December 8, 1999. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant.
No formal deficiencies having been recorded, on December 9, 1999, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, MelbourneIT and ICANN), setting a deadline of December 28, 1999, by which the respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in MelbourneIT's Whois confirmation, as well as to <[email protected]>; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the complaint was sent by express courier to all available postal addresses. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, evidence of proper notice is provided by the evidence in the record of the respondent's participation in the settlement negotiations with the complainant.
On December 14, 1999, in view of the complainant's designation of a single panelist (but without prejudice to any election to be made by the respondent) the WIPO Center invited M. Scott Donahey to serve as a panelist in Case No. D99-0001, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
On December 29, 1999, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.
Having received on December 14, 1999, M. Scott Donahey's Statement of Acceptance and Declaration of Impartiality and Independence, also on December 29, 1999, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was January 11, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
Following these transmittals, the WIPO Center received a series of emails from the respondent and the complainant's representative, indicating that the parties intended to settle and had reached a settlement in principle. On January 6, 2000, the WIPO Center received a copy of an unsigned settlement agreement, with assurances that a signed copy would be transmitted by facsimile. On January 6, 2000, in view of the settlement negotiations between the parties, the Case Administrator notified the parties that the time in which the Panel was to issue a decision on the merits had been extended to January 15, 2000.
Following repeated requests from the WIPO Center for a copy of the fully executed final settlement agreement, on January 12, 2000, a copy of an agreement, signed only by respondent, was received. While the Panel is aware that the parties are close to completing their settlement, the Panel is also mindful of its responsibility to issue a timely decision, and one in compliance with the deadlines established by the Uniform Rules, the WIPO Supplemental Rules, and those established by the WIPO Center in accordance with those rules. See, e.g., Uniform Rules, paras. 10(c) and 15(b). Accordingly, this decision is issued prior to having received completely executed settlement documents, and, as such, does not rely on any purported settlement agreement.
The Administrative Panel shall issue its Decision based on the Complaint, the e-mails exchanged, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from respondent.
4. Factual Background
The complainant has provided evidence
of the registration of the following marks:
1. Service Mark - WORLD WRESTLING
FEDERATION, registered for a term of 20 years from January 29, 1985, with
the United States Patent and Trademark Office;
2. Trademark - WORLD WRESTLING FEDERATION,
registered for a term of 20 years from November 7, 1989, with the United
States Patent and Trademark Office.
Complaint, Annexes B and C.
The respondent registered the domain
name <worldwrestlingfederation.com> for a term of two years from October
7, 1999. E-mail dated December 7, 1999, from Jan Webster to the WIPO Center
Case Administrator, providing Whois details. The respondent is not a licensee
of complainant, nor is he otherwise authorized to use complainant's marks.
Complaint, para. 14.
Complainant is authorized to use
and has used its service mark in connection with entertainment services,
namely the provision of sporting events such as wrestling exhibitions for
television. Complaint, para. 17 and Annex B. Complainant is authorized
to use and has used its trademark in connection with metal key chains,
phonograph records, prerecorded audio and video cassettes, switch plates,
computer programs concerning the sport of wrestling, watches, stickers,
book markers, book plates, collection books, pictorial biographies, blowouts,
paper napkins, paper table covers, memo boards, posters, stationery-type
portfolios, memo pads, book covers calendars, trading cards, pens, pencils,
magazines, decals, umbrellas, backpacks, roll bags, seat cushions, towels,
shoes, bibs, children's pajamas, T-shirts, sweatshirts, ties, caps, sweaters,
sports shirts, headbands, sweatbands, belts, fleece sets comprising warm-up
pants and warm-up jacket, puzzles, board games, workout sets comprising
exercise equipment in the nature of barbells, dumbbells, handgrips, wristbands.
Charts, and/or audio cassette tapes. Complaint, para. 18 and Annex C. Complainant
has also used its mark in connection with the promotion of wrestling entertainment
services on its internet web site which may be found at <wwf.com>. Complaint,
para. 19.
On October 10, 1999, three days
after registering the domain name at issue, respondent contacted complainant
by e-mail and notified complainant of the registration and stated that
his primary purpose in registering the domain name was to sell, rent or
otherwise transfer it to complainant for a valuable consideration in excess
of respondent's out-of-pocket expenses. Complaint, paras. 25 and 26. By
e-mail dated December 3, 1999, respondent contacted complainant's representative
and offered to sell the complainant the domain name at issue for the sum
of US$1,000.00. Supplemental Complaint, para. 4 and Annex A. In his e-mail,
respondent stated that cybersquatting cases "typically accomplish very
little and end up costing the companies thousands of dollars in legal fees,
wasted time and energy." Supplemental Complaint, Annex A. The payment of
US$1,000 would represent more than payment for respondent's time and money,
but also and "most important" [sic] would serve as consideration for "the
right of current ownership of the domain name `worldwrestlingfederation.com.'"
Supplemental Complaint, para. 7.
Respondent has not developed a Web site using the domain name at issue or made any other good faith use of the domain name. Complaint, para. 28. The domain name at issue is not, nor could it be contended to be, a nickname of respondent or other member of his family, the name of a household pet, or in any other way identified with or related to a legitimate interest of respondent.
5. Parties' Contentions
A. Complainant
Complainant contends that respondent
has registered as a domain name a mark which is identical to the service
mark and trademark registered and used by complainant, that respondent
has no rights or legitimate interests in respect to the domain name at
issue, and that respondent has registered and is using the domain name
at issue in bad faith.
B. Respondent
Respondent has not contested the
allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs
the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable." Since both the complainant
and respondent are domiciled in the United States, and since United States'
courts have recent experience with similar disputes, to the extent that
it would assist the Panel in determining whether the complainant has met
its burden as established by Paragraph 4(a) of the Policy, the Panel shall
look to rules and principles of law set out in decisions of the courts
of the United States.
Paragraph 4(a) of the Policy directs
that the complainant must prove each of the following:
1) that the domain name registered
by the respondent is identical or confusingly similar to a trademark or
service mark in which the complainant has rights; and,
2) that the respondent has
no legitimate interests in respect of the domain name; and,
3) the domain name has been
registered and used in bad faith.
It is clear beyond cavil that the domain name <worldwrestlingfederation.com> is identical or confusingly similar to the trademark and service mark registered and used by complainant, WORLD WRESTLING FEDERATION. It is also apparent that the respondent has no rights or legitimate interests in respect of the domain name. Since the domain name was registered on October 7, 1999, and since respondent offered to sell it to complainant three days later, the Panel believes that the name was registered in bad faith.
However, the name must not only be registered in bad faith, but it must also be used in bad faith. The issue to be determined is whether the respondent used the domain name in bad faith. It is not disputed that the respondent did not establish a Web site corresponding to the registered domain name. Accordingly, can it be said that the respondent "used" the domain name?
It is clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use. "These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO." Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5,a.
Paragraph 4,b,i of the Policy, provides that "the following circumstances . . . shall be evidence of the registration and use of a domain name in bad faith: . . . 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 . . . for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name." (Emphasis added.)
Because respondent offered to sell the domain name to complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, respondent has "used" the domain name in bad faith as defined in the Policy.
Although it is therefore unnecessary
to consult decisions of United States' courts, the panel notes that decisions
of those courts in cases which determine what constitutes "use" where the
right to a domain name is contested by a mark owner support the panel's
conclusion. For example, in the case of Panavision International, L.P.
v. Dennis Toeppen, et al., 141 F. 3d 1316 (9th Cir. 1998), the Court of
Appeals held that the defendant's intention to sell the domain name to
the plaintiff constituted "use" of the plaintiff's mark:
"Toeppen's argument misstates his
use of the Panavision mark. His use is not as benign as he suggests. Toeppen's
`business' is to register trademarks as domain names and then sell them
to the rightful trademark owners. He `acts as a `spoiler,' preventing Panavision
and others from doing business on the Internet under their trademarked
names unless they pay his fee.' . . . As the district court found, Toeppen
traded on the value of Panavision's marks. So long as he held the Internet
registrations, he curtailed Panavision's exploitation of the value of its
trademarks on the Internet, a value which Toeppen then used when he attempted
to sell the panavision.com domain name to Panavision." Id., at 1325.
To the same effect is the decision
in Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996). In that
case the Federal District Court determined that "Toeppen's intention to
arbitrage the `intermatic.com' domain name constitutes a commercial use.
. . . Toeppen's desire to resell the domain name is sufficient to meet
the `commercial use' requirement of the Lanham Act. Id., 1239.
The Panel notes with approval that the Policy and Rules set out by ICANN encourage thesettlement and that the parties in this case have engaged in extensive settlement negotiations. It was noted by the complainant in an email to the respondent regarding possible settlement that, while it was not the complainant's policy to pay individuals to stop infringing its intellectual property, it was also complainant's policy not to litigate against its fans. Email from Complainant's Representative to Respondent, dated December 09, 1999. Complainant acknowledged that it could have proceeded to litigation under the United States "Anticybersquatting Consumer Protection Act," but that it elected not to. By engaging in this proceeding, complainant has sought to protect complainant's intellectual property interests while preserving the relationship between complainant and its fans at a minimal cost to all concerned.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by respondent is identical or confusingly similar to the trademark and service mark in which the complainant has rights, and that the respondent has no rights or legitimate interests in respect of the domain name, and that the respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4,i of the Policy, the Panel requires that the registration of the domain name <worldwrestlingfederation.com> be transferred to the complainant.
Domain Name Transferred