WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Wrestling Federation Entertainment, Inc. (WWFE) v. M. de Rooij
Case No. D2000-0290
1. The Parties
The Complainant
The Complainant is World Wrestling Federation Entertainment Inc (WWFE) of Stamford, Connecticut.
The business of the Complainant is the provision of professional wrestling entertainment services (dating from 1979) and merchandising associated goods including computer games and software, T-shirts, posters, linens, dolls, toys and video cassettes.
The Respondent
The Respondent is M. de Rooij of Utrecht, Netherlands.
The Respondent is a Systems Engineer who in his spare time creates and maintains websites, partly as a hobby and partly for commercial gain.
2. The Domain Names and Registrar
The domain names at issue are:
and the Registrar is R.Inc.
3. Procedural History
The WIPO Arbitration and Mediation Centre (the Center) received the Complaint on April 12, 2000, [electronic version] and April 14, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of commencement of this administrative proceeding is May 5, 2000.
On April 17, 2000, the Center transmitted via email to R Inc a request for registrar verification in connection with this case and on April 27, 2000, R Inc transmitted via fax to the Center R's verification response confirming that registrant and contact for administrative purposes is the Respondent, M. de Rooij and the technical contact is parking@.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 5, 2000, to info@; internic-free@r; m.de.rooij@; parking@; postmaster@; and to postmaster@ the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response be due by May 24, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
M de Rooij
Selvasdreef 31
Utrecht 3563 X-H
Netherlands
On May 21, 2000, the Center received an email from the Respondent advising of a letter received by him from the WorldWide Fund for Nature ["the Fund"]. On May 23, 2000, the Center replied to the Respondent and copied both the Respondent's said email of May 21 and the Center's reply to the Complainant.
On May 24, 2000, the Center received an email from the Respondent setting out brief particulars of a dispute in the English High Court between the Fund and the Complainant in relation to use of the WWF mark. On May 25, 2000 the Center received a copy of the same information by fax from the Respondent. On May 25, 2000 the Center acknowledged receipt of these communications and copied them to the Complainant.
On May 24, 2000, the Center received a Response from GreatD the Technical Contact for the two domain names in issue.
On May 24, 2000, the Center also received the Respondent's Response (electronic form) and on May 31, 2000 with Annexes A to Q (hard copy).
On May 26, 2000, the Center received a fax from the solicitors representing the Fund.
On May 31, 2000, the Center received a Supplemental Response and on the same day the Center copied both the fax from the Fund's solicitors and the Supplemental Response by email to the Complainant.
On June 1, 2000, the Center received the Complainant's Reply to the ex parte communication from the Fund's solicitors and to the Supplemental Response. The Center duly communicated this to the Respondent.
On June 5, 2000, the Center received from the Respondent his Response to the Complainant's said Reply of June 1, 2000. For the reasons set out below in this Decision, the Panel admits the communication of May 26, 2000, from the Fund's solicitors, the Supplemental Response of May 31, 2000 and the Complainant's Reply of June 1, 2000. The Panel does not admit the Respondent's subsequent communication of June 5, 2000.
Having received on May 31, 2000, Mr. David Perkins� Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was June 15, 2000. Due to the receipt of the Respondent's further communication of June 5, 2000, delayed receipt by the Sole Panelist of documents and a public holiday in Europe, that Decision Date was extended to June 20, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to the Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Supplemental Response, the ex parte communication from the Fund's solicitors, the Complainant's Reply to the Supplemental Response, the Rules and the Supplemental Rules
4. The Complainant's TradeMarks
4.1 The Complainant relies upon the following registered trademarks.
Country
Registration No.
Mark
Class
Filed/Registered
US
2,131,847
WWF word mark
41
June 14, 1996: January 27, 1988
First used in commerce July 1, 1979
US
2,278,160
Stylised WWF word mark
41
September 11, 1998: September 14, 1999
First used in commerce November 9, 1997
US
2,291,141
Stylised WWF word mark
9
September 3, 1998: November 9, 1999
First used in commerce April 1, 1998
US
1,697,715
Stylised WWF word mark
25
March 1, 1991: June 30, 1992
First used in commerce August 6, 1990
The specifications of goods covered by the above US registrations comprise:
Class 41: entertainment services, namely, the production of professional wrestling events recorded live and through the media of television.
Class 9: video cameras, pre-recorded video cassettes featuring television films in the field of wrestling; gramophone records featuring music; pre-recorded CD discs and video cassettes featuring wrestling music and wrestling events; coin feed amusement gaming machines, gaming equipment, namely slot machines with or without video output, computer game tapes, computer game cartridges, pre-recorded audio cassettes and video cartridges all featuring wrestling songs and events.
Class 25: T-shirts
4.2 Additional registrations relied upon by the Complainant comprise:
Country
Registration No.
Mark
Class
Filed/Registered
US
2,279,168
WWF ATTITUDE
Not stated
Not stated
US
1,775,253
WWF SUPERSTARS
Not stated
Not stated
US
1,775,328
WWF SUPERSTARS
Not stated
Not stated
US
1,802,373
WWF Monday Night Raw
Not stated
Not stated
Canadian
TMA 430854
Stylised WWF
March 23, 1990
July 29, 1994
The Canadian registration is associated with TMA 308,168: 379,781; and 886,794. It is stated to be used in the United States under US 1,574,169. The goods covered by the Canadian registration are stated to be "sold in association with the promotion of wrestling or individuals associated therewith" and include
children's soap and shampoo: metal key chains: phonograph records, pre-recorded audio and video cassettes: switch plates, computer programs containing the sport of wrestling, plastic megaphones; 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 and decals; umbrellas; back packs; roll bags, plastic licence plate holders, seat cushions, novelty items in the nature of non-metallic signs; paper plates, paper cups, lunch boxes and insulated bottles; towels; shoes, bibs, children's pyjamas, t-shirts, sweatshirts, ties, caps, sweaters, fleece sets comprising warm-up pants and warm-up jackets, sport shorts, headbands, sweatbands, belts and bandannas; puzzles, board games, workout sets comprising exercise equipment in the nature of barbells, dumbbells, hand grips, sweatbands, wristbands, poster, chart and/or audio cassette tapes, dolls and balloons; ice cream bars.
4.3 The Complainant also relies on use of the WWF mark on websites including WWF.com and WWFSHOPZONE.com, from which latter it sells merchandising goods associated with its provision of professional wrestling entertainment services.
5. The Complainant's right to use the WWF mark
5.1 It is a requirement of the Policy that the Complainant have rights in the trade mark(s) asserted [Policy, para. 4a(i)]. It appears that the Complainant's exclusive rights to the WWF mark are subject to challenge by the World Wide Fund for Nature [formerly, the World Wild Life Fund] which is also known by the acronym WWF. The WorldWide Fund for Nature has drawn to the attention of the Center the following:
h It is the registered proprietor of 6 UK trade mark registrations for the mark WWF. These are Nos. 1,520,386 - 389 and 1,574,895 in Classes 3: 9: 16: 21: and 25.
h It is also the registered proprietor of International Registrations for the mark WWF under Nos. 286,412: 473,398: 499,160: 595,021: and 596,952 covering a wide variety of goods in Classes 1-6: 8-9: 11-12: and 14-34
h The earliest of the UK registrations dates from October 31, 1994, and the earliest of the International registrations dates from July 14, 1984.
h The International registrations cover variously, Austria: Algeria: Bosnia-Herzegovina: Benelux: Bulgaria: China: Croatia: Czechoslovakia: Cuba: Egypt: France: Germany: Hungary: Italy: Liechtenstein: Korea: Morocco: Monaco: Macedonia: Mongolia: Poland: Portugal: Romania: San Marino: Slovenia: Sudan: Spain: Tunisia: Vietnam: and Yugoslavia.
h On January 6, 2000, the Fund brought proceedings in the English High Court against the Complainant concerning use by the Complainant of the WWF mark, including such use as part of any internet domain names. Those proceedings were re-issued on April 17, 2000, and served (with leave of the English Court) on the Complainant at its address at Stamford, Connecticut on April 24, 2000.
5.2 Nothing in the communication to the Center from the Fund's solicitors indicates a challenge to the US or Canadian trademarks relied upon in this Complaint. It does, however, appear to indicate a challenge to the Complainant's right to continue to use WWF as part of an internet domain name, which is central to the issue in this Complaint. Although the Complainant, through its London solicitors, was apparently made aware of the first issue of the English High Court action by letter dated February 2, 2000, the Complaint (which was served on April 12, 2000,) makes no mention of this challenge to its right to use the WWF mark as a domain name.
5.3 Although the Panel does not rule the Complaint inadmissible on account of this omission, the Complainant and its Counsel should have particular regard to paragraph 3(b)(xiv) of the Rules. The communication from the Fund of May 26, 2000, was copied to the Complainant's Counsel on May 31, 2000, by the Center.
6. Admissibility of Third Party Communications
6.1 The Panel finds nothing in the Rules which precludes the Panel taking into account the Third Party Communication of May 26, 2000, on behalf of the Fund. Indeed, the Panel has a broad discretion in the conduct of the administrative proceeding, provided always that the parties are treated with equality and that each party is given a fair opportunity to present its case [Rules para. 10].
6.2 The Response dated May 24, 2000, [which complied with the deadline given in para. 2 of the Center's Notification of Complaint and Commencement of Administrative Proceeding dated May 5, 2000,] contained the Certification required by para. 5(b) (viii) of the Rules. That Response refers to a communication between the Fund and the Respondent of May 20, 2000. Indeed, the Respondent notified the Center of that communication by email on May 21, 2000, before the Response was subsequently filed on May 24, 2000. That email and the Center's reply of May 23, 2000, were copied to the Complainant. Additional information relating to the English proceedings between the Fund and the Complainant was emailed and faxed by the Respondent to the Center on May 24 and 25, 2000, respectively.
6.3 This Supplementary Response is not inadmissible for failure to reiterate the Certification contained in the main Response. As a supplement to the Response it is covered by the Certification in the Response. The facts of the Talk City Case D2000-0009 are entirely different. In that case, there was default of Response. The Communication from the Respondent subsequently received, after the deadline for Response, contained no Certification. Here, however, the Response (incorporating the required Certification) was received in due time. The additional information relating to the English litigation was merely a supplement to that Response.
6.4 In this case, it ill befits the Complainant to attempt to have the matter excluded, which there is every indication was known to the Complainant at the time the Complaint was filed and which the Complainant chose not to disclose. This Administrative proceeding is concerned with doing justice between the parties and Panel has the discretion to and does admit the communications which the Complainant seeks to exclude.
7. The Complainant's Reply
7.1 In the light of the above ruling, the Panel admits the Complainant's Reply dated June 1, 2000.
7.2 The Panel agrees with the Complainant's Submission that there is nothing in evidence to suggest that the Complainant is in breach of para. 3(b)(xi) of the Rules. The English proceedings do not involve the domain names in issue in this Complaint, which are the domain names register by the Respondent. The English proceedings are involved with the Complainant's marks and domain names. However, for the reasons set out above, the existence of the apparent challenge in the English proceedings to the Complainant's trademarks and to its right to use internet domain names using the WWF mark is material to the issues in this Case.
8. The Respondent's Response to the Complainant's Reply
8.1 This document is dated June 2, 2000. The Panel has ruled that the Respondent's Supplementary Response of May 24, 2000, and the Third Party Communication from the Fund of May 26, 2000, are admissible. The Panel has also admitted the Complainant's Reply of June 1, 2000.
8.2 The Respondent's Response adds nothing to this dispute, whether admitted or not. Communications cannot continue ad infinitum. The Panel has a discretion as to what to admit. In this Case, the Respondent filed a Supplementary Response and the Complainant objected. The Panel rules in favour of the Complainant. That is the end of the matter. The Respondent's further communication of June 2, 2000, is not admitted.
9. The Parties' Contentions
A The Complainant
The Complainant contends that the Respondent has registered as domain names marks which are confusingly similar and practically identical to the Complainant's WWF and WWFSHOPZONE marks, that the Respondent has no rights or legitimate interests in respect of those domain names and that the Respondent has registered and is using those domain names in bad faith.
B The Respondent
The Respondent contends that it has legitimate interests in the domain names in issue, that such domain names were registered in good faith and that one of those domain names, is being used in good faith.
10. Discussions and Findings
10.1 The Policy para 4a provides that the Complainant must prove each of the following:
- that the Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain names have been registered and are being used in bad faith.
Identical or Confusingly Similar
10.2 All but one of the Complainant's US and Canadian registered trademarks are for the word mark WWF in stylised form. There is one registration for the word mark WWF in plain lettering - US 2,131,847. The Complainant's right to use WWF as an internet domain name is apparently under challenge in the English High Court.
The Respondent's and domain names are not identical to the WWF marks of the Complainant, nor [save as regards US 2,131,847] on the face of it are they confusingly similar. The Complainant has produced no evidence of confusion. However, the Respondent's use of the domain name in the form of the Respondent's website [Annex G to the Complaint] is clearly calculated to be associated with the Complainant's mark and - subject to para. 10.4 below - it follows is confusingly similar to the Complainant's WWF mark. This is the more so given the Complainant's use of its WWF mark as the dominant element of its domain names and from which its sells merchandising goods associated with professional wrestling. It is not, in the Panel's opinion necessary for the purposes of para. 4a(i) of the Policy that the Complainant's trade mark must be a registered right. It is sufficient if, according to applicable laws, the Complainant has trade mark rights and such rights may exist regardless of and in the absence of registration. The US Patent Office Guidelines to which the Respondent refers [Annex J to the Response] concern criteria for registrability only.
10.3 The Respondent's mark is not currently used for an active website. But, given the way in which the Respondent has used it is not unreasonable to foresee confusingly similar use of the domain name in issue, particularly since it is so close to the Complainant's domain name which the Complainant uses as a website from which to sell merchandising goods associated with professional wrestling and which is a mark the Complainant relies upon in this Complaint.
10.4 The Complainant must, therefore, succeed in satisfying this requirement of the Policy but for the unresolved issue as to whether the Complainant has rights in its WWF mark which entitle it to use that mark as a domain name or part of a domain name.
Here, the situation is as follows:
h The domain names in issue are not identical to nor confusingly similar to the Complainant's WWF stylised registered marks. Not in the Panel's Opinion are the other WWF pre-fixed registrations any more in point.
h The domain names in issue are, however, to all intents and purposes identical to and are confusingly similar to US 2,131,847 and to the unregistered marks asserted by the Complainant, namely its internet domain names and from which it sells merchandising goods associated with its business of providing professional wrestling entertainment services.
h But, the Complainant's rights to use those marks/domain names is subject to challenge at the suit of the Fund in the English Courts.
10.5 Until it has been determined whether the Complainant can use its WWF marks as part of any internet domain names, does this raise an issue as to whether the Complainant has rights which it can enforce under the Policy against a third party, here the Respondent? Here, the dispute is between the Complainant and the Respondent: the Fund is not a party. This Panel must take the Complainant's trademark rights as it finds them. The Panel is satisfied that the Complainant's and domain names constitute trade mark rights for the purpose of the Policy and that those rights subsist until such time (if ever) as the Fund or any other party obtain an Order disentitling the Complainant from continued use of those marks and/or its registered trade marks. The Complainant, therefore, satisfies the first hurdle of para. 4a of the Policy.
Rights or Legitimate Interests
10.6 Para. 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interest for the purpose of para. 4a(ii). Those circumstances are that;
(i) before any notice to the Respondent of the dispute, the Respondent's use of or demonstrable preparations to use the domain name or a domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
10.7 On February 16, 2000, within 3 days of registering the domain names in issue on February 13, 2000, the Respondent wrote to the Complainant in the following terms [Annex E]:
"Dear Sirs,
I would like to inform you that I reserved the following domain names which might be interesting for your type of business:
h
great for WWF interactivity or wwfbroadcasts
h
commercial better alternative to for example
If you would like more information on obtaining one of these names, they are being auctioned at www..
For other information contact info@.
Regards
M. de Rooij."
10.8 The Complainant, through its counsel, by email and certified mail on March 30, 2000 requested transfer of those domain names. However, before that time the Complainant responded on February 17, 2000, by email:
"Thanks but no thanks."
and on February 23, 2000, the Respondent's website went online. Thus, on the face of it, the Respondent began use of one of the domain names in issue before notice from the Complainant of this dispute.
10.9 Was such use "... in connection with a bona fide offering of goods"? In this respect, the Respondent relies upon an Affiliate Agreement with the Complainant's WWF Shop Zone operation referred to above [Annexes D and E of the Response.] That Agreement at Clause 8 provides, inter alia, as follows:
"8. Limited Licenses
We grant you a non-exclusive right to use our buttons, banners and logos, solely on your site, for the purpose of allowing users of your site access to our shopping site. ... We reserve all rights in and to our ... trade names, trademarks or other intellectual property rights that we provide or use.
...
The trade marks logos and service marks, including World Wrestling Federation and WWF.com and their related logos are the registered and unregistered trademarks of World Wrestling Federation Entertainment Inc. Such trademarks may not be used by you ... in any manner. Nothing herein shall be construed as granting you, by implication, estoppel or otherwise, any licence to use any trademark displayed on WWF.com."
10.10 The Respondent exhibits [Annex L to the Response] the webpage of WrestlingMegaS which depicts 2 products which bear the Complainant's stylised WWF mark, SUMMERSLAM and AGRESSION. Such use is, however, quite different from that of the Respondent's webpage [Annex G to the Complaint]. That webpage uses the domain name with the WWF component in the stylised form of the Complainant's registered trademarks. These two webpages are, in the Panel's opinion, worlds apart. The Respondent's appears to be a blatant breach of the Affiliate Agreement, whereas the WrestlingMegaS webpage is not.
10.11 But, even if that is an incorrect interpretation of the Affiliate Agreement, it is certainly not a use contemplated by that Agreement. The Respondent himself states that his website gives "... customers a directory of links to wrestling products sold by other parties." The whole purpose of the WWFShopZone Affiliate Agreement appears to be to encourage customers to purchase the Complainant's products for which the Affiliate is rewarded with a commission based on such sales.
10.12 In the light of the evidence as a whole, the Panel takes the view that the Respondent's use of one of the domain names in issue does not fulfil the circumstances set out in para. 4c(i) of the Policy. The Complainant has not licensed or otherwise permitted the Respondent to use its WWF marks to apply for or use domain names incorporating that mark.
Plainly, the Respondent does not fulfil either of the circumstances demonstrating rights to and legitimate interests in the domain names in issue illustrated in para. 4c(ii) and (iii) of the Policy. In the circumstances, the Panel finds that the Complainant succeeds in satisfying the second requirement of para. 4a of the Policy.
Bad Faith
10.13 Para. 4a(iii) of the Policy requires that Respondent's domain name must both have been registered and be being used in bad faith. Both requirements must be met.
Para. 4b of the Policy sets out circumstances which, if found by the Panel to be present "...shall be evidence of the registration and use of a domain name in bad faith."
Registered in Bad Faith
10.14 The Respondent registered the domain names in issue on February 13, 2000, by which time the Complainant had been trading under and by reference to the WWF mark since 1979. It is clear that the Respondent was well aware of the Complainant's use of the WWF mark from the Respondent's email of February 16, 2000, to the Complainant offering to sell the two domain names in issue to the Complainant.
Used in Bad Faith
10.15 The circumstances of the Respondent's use of one of the domain names in issue, , have been set out earlier in this Decision. As to use of the other domain name in issue, , the Complainant refers to the Decision in Case D99-0001, with which this Panel agrees.
Furthermore, the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts [Case D2000-0003].
In all the circumstances of this Complaint, the Panel finds that the Complainant succeeds in establishing the third requirement of para. 4a of the Policy. Any one or all of the examples of registration and use in bad faith set out in para. 4b of the Policy are fulfilled in this case.
11. Decision
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the 3 elements of para. 4a of the Policy. Accordingly, the Panel requires that the registrations of the domain names and be transferred to the Complainant.
David Perkins
Presiding Panelist
Dated: June 20, 2000
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