WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Wrestling Federation Entertainment, Inc. v. Matthew Bessette
Case No. D2000-0256
1. The Parties
Complainant is World Wrestling Federation Entertainment, Inc., a Delaware Corporation, with a principal place of business at 1241 East Main Street, Stamford, Connecticut, 06902, U.S. Respondent is Matthew Bessette, an individual, with a mailing address listed as P.O. Box 10201, Pensacola, Florida, 32524-0201, U.S.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are WWWWWF.COM and WWWSTONECOLD.COM (the "Domain Names"). The registrar of the Domain Names is Network Solutions, Inc. ("NSI").
3. Procedural History
On April 4, 2000, Complainant submitted its Complaint, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "WIPO Center").
On April 7, 2000, WIPO sent an Acknowledgment of Receipt to Complainant, and copied Respondent.
On April 7, 2000, WIPO sent a Request for Registrar Verification via email to NSI.
On April 3, 2000, NSI confirmed via email to WIPO that the domain name WWWWWF.COM is recurrently registered to "wwwwwf.com," and the domain name WWWSTONECOLD.COM is currently registered to "wwwstonecold.com." NSI further confirmed that the Domain Names are in "active" status, and that the registrants of the Domain Names are subject to the Uniform Domain Name Dispute Resolution Policy ("UDRP").
On April 11, 2000, WIPO sent a Deficiency Notice to Complainant stating that Respondent Matthew Bessette was not listed as either the registrant of the Domain Names or as the administrative, technical, zone or billing contact. WIPO requested an amendment to the Complaint or Complainantís explanation for this discrepancy within five calendar days.
On April 12, 2000, Complainant responded to WIPOís Deficiency Notice, citing Paragraph 12.c of the Complaint.
On April 17, 2000, WIPO completed a Formal Requirements Compliance Checklist. The Panel has independently determined and agrees with WIPOís assessment that the Complaint is in formal compliance with the requirements of UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
On April 17, 2000, WIPO sent a Notification of Complaint to Respondent. On May 11, 2000, WIPO issued a Notification of Respondent Default.
On May 25, 2000, WIPO sent to Complainant and Respondent a Notification of Appointment of Panel, appointing David M. Kelly as Panelist and scheduling June 7, 2000 as the date for issuance for the Panelís decision.
The language of the proceeding is English.
4. Factual Background
The Complaint was based in part on Complainantís WWF mark, which it has used around the world. Complainant has used its WWF mark in the USA for professional wrestling entertainment services since at least as early as 1979. Complainant has also used its WWF mark on a wide range of goods, including, for example, computer games and software, T-shirts, posters, linens, dolls, toys, video cassettes, etc. Complainant also uses its WWF mark on numerous web sites, including a site located at WWF.COM.
Complainant has obtained four trademark registrations from the United States Patent and Trademark Office ("USPTO") for the WWF mark (in word and logo form): Registration Numbers 2131847, 2278160, 2291141, and 1697715. A copy of the USPTO trademark database registration record for each of these registrations was attached as Annex C. The earliest filing date for the above-listed registrations is March 1, 1991.
Complainant also owns numerous U.S. trademark registrations for marks incorporating the WWF mark, including, for example, WWF ATTITUDE (Reg. No. 2279168), WWF SUPERSTARS (Reg. Nos. 1775253 and 1775328), and WWF MONDAY NIGHT RAW (Reg. No. 1802373).
Complainant also owns foreign trademark registrations for WWF marks, including, for example, a Canadian registration for the WWF logo, Reg. No. TMA430854, which was filed on March 23, 1990. A copy of the Canadian Intellectual Property Office registration record was attached as Annex D.
All trademark registrations submitted by Complainant are in the Complainantís former name, Titan Sports, Inc.
The Complaint was also based on Complainantís STONE COLD mark, which it has also used around the world. Complainant uses its STONE COLD mark for wrestling services as the name of one of its most popular wrestling characters. In addition to professional wrestling services, Complainant uses its STONE COLD mark on a wide variety of goods, including, for example, T-shirts, jackets, posters, toys, video cassettes, etc. Complainant also maintains a web site at STONECOLD.COM.
The domain name WWWWWF.COM was registered on December 10, 1998. The domain name WWWSTONECOLD.COM was registered on March 3, 1999.
5. Partiesí Contentions
Complainant alleged that Respondent has registered and used Complainantís marks in bad faith because Respondent intentionally attempted to attract for financial gain Internet users to Respondentís web sites by creating a likelihood of confusion with Complainantís marks as to the source, sponsorship, affiliation, or endorsement of Respondentís web sites or of a product or service on Respondentís web sites. Complainant alleged that Respondent is a "typo-pirate" who attempts to take commercial advantage of Internet users who mistakenly type WWWWWF.COM or WWWSTONECOLD.COM instead of WWW.WWF.COM or WWW.STONECOLD.COM. Complainant alleged that Respondent was covertly using Complainantís marks to divert Internet traffic away from Complainantís established web sites at WWW.WWF.COM or WWW.STONECOLD.COM to Respondentís commercial pornographic sites.
Before receiving a cease and desist letter from Complainant, Respondent maintained a web site at WWWWWF.COM that directed Internet users to another web site owned by Respondent (THESEXPAGE.COM) that contains pornographic materials. Respondentís web site at WWWWWF.COM, a printout of which Complainant attached as Annex E, contained a list of numerous trademarks owned by Complainant, including, for example, WWF, WORLD WRESTLING FEDERATION, STONE COLD, UNDERTAKER, SABLE, DX, and ROYAL RUMBLE, among others. Respondent repeated this list in his metatags, a printout of which Complainant attached as Annex F. Complainant alleged that the inclusion of Complainantís marks on the web page and in the metatags was designed to attract Internet users attempting to use search engines to locate Complainantís web sites.
The only other element on Respondentís web site was a link labeled "If your [sic] over 18 Click Here to Enter." This link led to a web site at THESEXPAGE.COM and began a wild ride of pornographic images and links and explosions of pop-up windows containing even more pornographic images and links. The link from WWWWWF.COM to THESEXPAGE.COM was verified by a review of the HTML code for the WWWWWF.COM web site provided by Complainant. Complainant attached the following Annexes:
G) the registration record showing that Respondent owns THESEXPAGE.COM;
H) a printout of the linked page at THESEXPAGE.COM;
I) a printout of the pop-up window that appears when first entering THESEXPAGE.COM;
J) a printout of the page linked to by the "Enter Here" and "Click Here to Continue" links on the main page; and
K) a printout of the page linked to by the "No Thanks" link.
Complainant stated that throughout the experience of clicking on the above-listed links, the Internet user was subject to numerous banner advertisements for other pornographic web sites.
Respondentís web site at WWWSTONECOLD.COM was substantially the same as the website at WWWWWF.COM. It contained many of Complainantís trademarks on the web page and in metatags, and it linked to Respondentís THESEXPAGE.COM web site and initiated the same pornographic frenzy.
Complainant alleges that evidence of Respondentís bad faith does not stop at its pornographic activities. On March 16, 2000, Complainant, through its attorney, sent Respondent a letter and e-mail demanding that Respondent immediately stop his use of Complainantís marks and that he transfer the domain names to Complainant. After receiving Complainantís demands, Respondent, using his power as the administrator of the Domain Names in question, altered the domain name records by replacing his contact information with false information, including an address at "123 Unlisted Ave" and phone and fax numbers that read simply "Unlisted." Complainant provided as Annexes A and O a copy of the domain name records for WWWWWF.COM and WWWSTONECOLD.COM printed before Complainant contacted Respondent and a copy of the falsified domain name records. Complainant noted that the record creation dates for the true domain name records and the false domain name records are identical, verifying that Respondent did not transfer the Domain Names to another registrant.
Respondent did not submit a Response to the Complaint or otherwise contest Complainantís allegations.
6. Discussion and Findings
Paragraph 4(a) of the UDRP 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 rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and used in bad faith.
The Panel accepts Complainantís explanation that the trademark registrations upon which the Complaint is based are in its former name, because this fact was not contested by the Respondent.
The domain name WWWWWF.COM is confusingly similar to Complainantís mark WWF, and substantially identical to Complainantís domain name WWF.COM. The domain name WWWSTONECOLD.COM is confusingly similar to the name of Complainantís STONE COLD character, and substantially identical to Complainantís domain name STONECOLD.COM.
Respondentís Domain Names each differs from Complainantís domain names by a single character, a period between the common third level domain, "www," and the second level domain name. The Panel agrees with Complainantís assertion that Respondent is a "typo-pirate" who attempts to mislead Internet users who mistakenly omit the period between "www" and the second level domain name. Cybersquatters commonly register domain names such as the ones at issue, in order to take advantage of and profit from the unavoidable fact that typographical errors occur. Several courts have issued injunctions against this practice.
The Panel further finds that Respondent could not have had any legitimate contemplated use for the Domain Names at the time of their registration, and that Respondent violated Complainantís common law rights in its domain names WWF.COM and STONECOLD.COM.
Respondentís use of the Domain Names in conjunction with pornographic links tarnished and diluted Complainantís mark WWF by giving consumers the impression that Complainant endorsed, sponsored, or was otherwise affiliated with Respondentís website and the products and services offered on his website. See Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 USPQ 2d 1479 (W.D.Wa. 1996) (holding that use of "candyland.com" for an adult site diluted the value of the CANDYLAND trademark for a childrenís board game) and Toys "R" Us, Inc. v. Mohamad Ahmad Akkaoui, 40 USPQ2d 1836 (N.D. Cal. 1996) (holding that use of "adultsrus.com" for an adult site tarnished the "R US" marks).
The Panel finds that Respondent has not made a legitimate, noncommercial, or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts Complainantís assertion that Matthew Bessette is the rightful Respondent, because he was previously listed as the Administrative, Technical, Zone and Billing Contacts. As such, Matthew Bessette had the ability and authority to modify the registration information. On March 16, 2000, Complainant sent a cease and desist letter to Matthew Bessette via email, and on that same day, the registration information was modified to list clearly fictitious information. The evidence supports a finding that Matthew Bessette, by attempting to evade his responsibility for the registration and use of the Domain Names, affirmed his control and authority over the Domain Names.
The Panel finds that Respondent has used the Domain Name in bad faith pursuant to Paragraph 4(b)(iv) of the UDRP, in that Respondent has ". . . intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel further finds that Respondent acted in bad faith by providing clearly fictitious address information to NSI.
The Panel decides that (1) the domain name WWWWWF.COM is confusingly similar to Complainantís mark WWF and substantially identical to Complainantís domain name WWF.COM, (2) the domain name WWWSTONECOLD.COM is confusingly similar to the name of one of its Complainantís characters, and substantially identical to Complainantís domain name STONECOLD.COM, (3) that Respondent has no rights or legitimate interests in respect of the Domain Names, and (3) that the Domain Names have been registered and used in bad faith.
Therefore, the Panel requires that the domain names WWWWWF.COM and WWWSTONECOLD.COM be transferred to World Wrestling Federation Entertainment, Inc., Complainant.
David M. Kelly
Dated: June 7, 2000