WIPO Arbitrationand Mediation Center
ADMINISTRATIVEPANEL DECISION
WorldWrestling Federation Entertainment, Inc. v. Michael Bosman
CaseNo. D99-0001
1. The Parties
The complainant is WorldWrestling Federation Entertainment, Inc., f/k/a Titan Sports, Inc., a corporationorganized under the laws of the State of Delaware, United States of America,having its principal place of business at Stamford, Connecticut, United Statesof 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 issueis , which domain name is registered withMelbourne IT, based in Australia.
3. Procedural History
A Complaint was submittedelectronically to the World Intellectual Property Organization Arbitrationand Mediation Center (the "WIPO Center") on December 2, 1999, andthe signed original together with four copies forwarded by express courierunder cover of a letter of the same date. An Acknowledgment of Receipt wassent by the WIPO Center to the complainant, dated December 3, 1999.
On December 3, 1999 aRequest for Registrar Verification was transmitted to the registrar, MelbourneIT requesting it to: (1) confirm that the domain name at issue is registeredwith MelbourneIT; (2) confirm that the person identified as the respondentis the current registrant of the domain name; (3) provide the full contactdetails (i.e., postal address(es), telephone number(s), facsimile number(s),e-mail address(es)) available in the registrar's Whois database for the registrantof the disputed domain name, the technical contact, the administrative contactand the billing contact; (4) provide a copy of the registration agreementthat was in effect at the time of the original registration of the domainname, as well as any subsequent amendments to the agreement; (5) provide acopy of the domain name dispute policy (if different from ICANN's UniformDomain Name Dispute Resolution Policy) that was in effect at the time of theoriginal registration of the domain name, as well as any subsequent amendmentsto the policy.
On December 8, 1999,MelbourneIT confirmed by reply e-mail that the domain name is registered with MelbourneIT and that the respondent, Michael Bosman, wasthe current registrant of the name. The registrar also forwarded the requestedWho is details, as well as copies of the registration agreement and applicabledispute resolution policy.
The policy in effectat the time of the original registration of the domain name at issue providedthat "Registrant agrees to be bound by the terms and conditions of thisRegistration Agreement." MelbourneIT Domain Name Registration Agreement,effective as of October 7, 1999, para. 1. Paragraph 7 of the RegistrationAgreement, entitled, "Dispute Policy," provides in pertinent part:
Registrant agrees,as a condition to submitting this Registration Agreement, and if the RegistrationAgreement is accepted by MelbourneIT, that the Registrant is bound byMelbourneIT's current Dispute Policy ("Dispute Policy"). Registrantagrees that MelbourneIT, in its sole discretion, may change or modifythe Dispute Policy, incorporated by reference herein, at any time. Registrantagrees that Registrant's maintaining the registration of a domain nameafter changes or modifications to the Dispute Policy become effectiveconstitutes Registrant's continued acceptance of these changes or modifications.Registrant agrees that if Registrant considers any such changes or modificationsto be unacceptable, Registrant may request that the domain name be deletedfrom the domain name database. Registrant agrees that any dispute relatingto the registration or use of its domain name will be subject to the provisionsspecified 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 respondentever requested that the domain name at issue be deleted from the domain namedatabase. 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 aletter of the same date. The Complaint and Supplemental Complaint will hereafterbe referred to as the "Complaint."
A Formal RequirementsCompliance Checklist was completed by the assigned WIPO Center Case Administratoron December 8, 1999. The Panel has independently determined and agrees withthe assessment of the WIPO Center that the Complaint is in formal compliancewith the requirements of the Policy, the Rules for Uniform Domain Name DisputeResolution Policy, as approved by ICANN on October 24, 1999 (the "UniformRules"), and the WIPO Supplemental Rules for Uniform Domain Dispute ResolutionPolicy, 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 requiredamount by the complainant.
No formal deficiencieshaving been recorded, on December 9, 1999, a Notification of Complaint andCommencement of Administrative Proceeding (the "Commencement Notification")was transmitted to the respondent (with copies to the complainant, MelbourneITand ICANN), setting a deadline of December 28, 1999, by which the respondentcould file a Response to the Complaint. The Commencement Notification wastransmitted to the respondent by e-mail to the e-mail addresses indicatedin the Complaint and specified in MelbourneIT's Whois confirmation, as wellas to On December 14, 1999,in view of the complainant's designation of a single panelist (but withoutprejudice to any election to be made by the respondent) the WIPO Center invitedM. Scott Donahey to serve as a panelist in Case No. D99-0001, and transmittedto him a Statement of Acceptance and Request for Declaration of Impartialityand Independence. On December 29, 1999,having received no Response from the designated respondent, using the samecontact 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 December14, 1999, M. Scott Donahey's Statement of Acceptance and Declaration of Impartialityand Independence, also on December 29, 1999, the WIPO Center transmitted tothe parties a Notification of Appointment of Administrative Panel and ProjectedDecision Date, in which M. Scott Donahey was formally appointed as the SolePanelist. The Projected Decision Date was January 11, 2000. The Sole Panelistfinds that the Administrative Panel was properly constituted and appointedin 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'srepresentative, indicating that the parties intended to settle and had reacheda settlement in principle. On January 6, 2000, the WIPO Center received acopy of an unsigned settlement agreement, with assurances that a signed copywould be transmitted by facsimile. On January 6, 2000, in view of the settlementnegotiations between the parties, the Case Administrator notified the partiesthat the time in which the Panel was to issue a decision on the merits hadbeen extended to January 15, 2000. Following repeated requestsfrom 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, wasreceived. While the Panel is aware that the parties are close to completingtheir settlement, the Panel is also mindful of its responsibility to issuea timely decision, and one in compliance with the deadlines established bythe Uniform Rules, the WIPO Supplemental Rules, and those established by theWIPO Center in accordance with those rules. See, e.g., Uniform Rules,paras. 10(c) and 15(b). Accordingly, this decision is issued prior to havingreceived completely executed settlement documents, and, as such, does notrely on any purported settlement agreement. The Administrative Panelshall issue its Decision based on the Complaint, the e-mails exchanged, thePolicy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefitof any Response from respondent. 4. Factual Background The complainant has providedevidence of the registration of the following marks: 1. Service Mark - WORLDWRESTLING FEDERATION, registered for a term of 20 years from January 29, 1985,with the United States Patent and Trademark Office; 2. Trademark - WORLD WRESTLINGFEDERATION, registered for a term of 20 years from November 7, 1989, with theUnited States Patent and Trademark Office. Complaint, Annexes B andC. The respondent registeredthe domain name for a term of two yearsfrom October 7, 1999. E-mail dated December 7, 1999, from Jan Webster to theWIPO Center Case Administrator, providing Whois details. The respondent isnot a licensee of complainant, nor is he otherwise authorized to use complainant'smarks. Complaint, para. 14. Complainant is authorizedto use and has used its service mark in connection with entertainment services,namely the provision of sporting events such as wrestling exhibitions fortelevision. Complaint, para. 17 and Annex B. Complainant is authorized touse and has used its trademark in connection with metal key chains, phonographrecords, prerecorded audio and video cassettes, switch plates, computer programsconcerning the sport of wrestling, watches, stickers, book markers, book plates,collection books, pictorial biographies, blowouts, paper napkins, paper tablecovers, memo boards, posters, stationery-type portfolios, memo pads, bookcovers 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, boardgames, 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 withthe promotion of wrestling entertainment services on its internet web sitewhich may be found at . Complaint, para. 19. On October 10, 1999,three days after registering the domain name at issue, respondent contactedcomplainant by e-mail and notified complainant of the registration and statedthat his primary purpose in registering the domain name was to sell, rentor otherwise transfer it to complainant for a valuable consideration in excessof respondent's out-of-pocket expenses. Complaint, paras. 25 and 26. By e-maildated December 3, 1999, respondent contacted complainant's representativeand offered to sell the complainant the domain name at issue for the sum ofUS$1,000.00. Supplemental Complaint, para. 4 and Annex A. In his e-mail, respondentstated that cybersquatting cases "typically accomplish very little andend up costing the companies thousands of dollars in legal fees, wasted timeand energy." Supplemental Complaint, Annex A. The payment of US$1,000would represent more than payment for respondent's time and money, but alsoand "most important" [sic] would serve as consideration for "theright of current ownership of the domain name `.'"Supplemental Complaint, para. 7. Respondent has not developeda Web site using the domain name at issue or made any other good faith useof 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 memberof his family, the name of a household pet, or in any other way identifiedwith or related to a legitimate interest of respondent. 5. Parties' Contentions A. Complainant Complainant contendsthat respondent has registered as a domain name a mark which is identicalto the service mark and trademark registered and used by complainant, thatrespondent has no rights or legitimate interests in respect to the domainname at issue, and that respondent has registered and is using the domainname at issue in bad faith. B. Respondent Respondent has not contestedthe allegations of the Complaint. 6. Discussion and Findings Paragraph 15(a) of theRules instructs the Panel as to the principles the Panel is to use in determiningthe dispute: "A Panel shall decide a complaint on the basis of the statementsand documents submitted in accordance with the Policy, these Rules and anyrules and principles of law that it deems applicable." Since both thecomplainant and respondent are domiciled in the United States, and since UnitedStates' courts have recent experience with similar disputes, to the extentthat it would assist the Panel in determining whether the complainant hasmet its burden as established by Paragraph 4(a) of the Policy, the Panel shalllook to rules and principles of law set out in decisions of the courts ofthe United States. Paragraph 4(a) of thePolicy directs that the complainant must prove each of the following: 1) that the domainname registered by the respondent is identical or confusingly similar toa trademark or service mark in which the complainant has rights; and, 2) that the respondenthas no legitimate interests in respect of the domain name; and, 3) the domain namehas been registered and used in bad faith. It is clear beyond cavilthat the domain name is identical orconfusingly similar to the trademark and service mark registered and usedby complainant, WORLD WRESTLING FEDERATION. It is also apparent that the respondenthas no rights or legitimate interests in respect of the domain name. Sincethe domain name was registered on October 7, 1999, and since respondent offeredto sell it to complainant three days later, the Panel believes that the namewas registered in bad faith. However, the name mustnot only be registered in bad faith, but it must also be used in badfaith. The issue to be determined is whether the respondent used the domainname in bad faith. It is not disputed that the respondent did not establisha Web site corresponding to the registered domain name. Accordingly, can itbe said that the respondent "used" the domain name? It is clear from thelegislative history that ICANN intended that the complainant must establishnot only bad faith registration, but also bad faith use. "These commentspoint out that cybersquatters often register names in bulk, but do not usethem, yet without use the streamlined dispute-resolution procedure is notavailable. 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 requiredboth registration and use in bad faith before the streamlined procedurewould be invoked. Staff recommends that this requirement not be changed withoutstudy and recommendation by the DNSO." Second Staff Report on ImplementationDocuments for the Uniform Dispute Resolution Policy, submitted for Board meetingof October 24, 1999, para. 4.5,a. Paragraph 4,b,i of thePolicy, provides that "the following circumstances . . . shall be evidenceof the registration and use of a domain name in bad faith: . . . circumstancesindicating that you have registered or you have acquired the domain name primarilyfor the purpose of selling, renting or otherwise transferring the domain nameregistration to the complainant who is the owner of the trademark or servicemark . . . for valuable consideration in excess of the documented out-of-pocketcosts directly related to the domain name." (Emphasis added.) Because respondent offeredto sell the domain name to complainant "for valuable consideration inexcess of" any out-of-pocket costs directly related to the domain name,respondent has "used" the domain name in bad faith as defined inthe Policy. Although it is thereforeunnecessary to consult decisions of United States' courts, the panel notesthat 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 thepanel'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 domainname to the plaintiff constituted "use" of the plaintiff's mark: "Toeppen's argumentmisstates his use of the Panavision mark. His use is not as benign ashe suggests. Toeppen's `business' is to register trademarks as domainnames and then sell them to the rightful trademark owners. He `acts asa `spoiler,' preventing Panavision and others from doing business on theInternet under their trademarked names unless they pay his fee.' . . .As the district court found, Toeppen traded on the value of Panavision'smarks. So long as he held the Internet registrations, he curtailed Panavision'sexploitation of the value of its trademarks on the Internet, a value whichToeppen then used when he attempted to sell the domainname to Panavision." Id., at 1325. To the same effect isthe decision in Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D.Ill. 1996). In that case the Federal District Court determined that "Toeppen'sintention to arbitrage the `' domain name constitutes a commercialuse. . . . Toeppen's desire to resell the domain name is sufficient to meetthe `commercial use' requirement of the Lanham Act. Id., 1239. The Panel notes withapproval that the Policy and Rules set out by ICANN encourage thesettlementand 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 possiblesettlement that, while it was not the complainant's policy to pay individualsto stop infringing its intellectual property, it was also complainant's policynot to litigate against its fans. Email from Complainant's Representativeto Respondent, dated December 09, 1999. Complainant acknowledged that it couldhave proceeded to litigation under the United States "AnticybersquattingConsumer Protection Act," but that it elected not to. By engaging inthis proceeding, complainant has sought to protect complainant's intellectualproperty interests while preserving the relationship between complainant andits fans at a minimal cost to all concerned. 7. Decision For all of the foregoingreasons, the Panel decides that the domain name registered by respondent isidentical or confusingly similar to the trademark and service mark in whichthe complainant has rights, and that the respondent has no rights or legitimateinterests in respect of the domain name, and that the respondent's domain namehas been registered and is being used in bad faith. Accordingly, pursuant toParagraph 4,i of the Policy, the Panel requires that the registration of thedomain name be transferred to the complainant. M. ScottDonahey Dated: January14, 2000
Presiding Panelist
Full & Egal Universal Law Academy