LeitsätzlichesIn diesem ersten veröffentlichten Verfahren sind die Voraussetzungen für eine positive Entscheidung zugunsten des Antragstellers (Complainent) sorgfältig herausgearbeitet. Die Domain worldwrestlingfederation.com wurde u.a. aufgrund Identität mit dem Namen des Complainents und festgestellter Registrierung und Nutzung in "bad faith" übertragen. Eine Nutzung in "bad faith" liegt vor, wenn die Domain zum Verkauf angeboten wird.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D99-0001
Entscheidung vom 14. Januar 2000
1. The Parties
The complainant is World Wrestling Federation Entertainment, ... United States of America.
The repsondent ...
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 <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 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
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.
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.
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.