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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wrestling Federation Entertainment, Inc. v. Michael Bosman
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)
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:
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 <firstname.lastname@example.org>; 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
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
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
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.
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
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:
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.
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.