WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles

Case No. D2000-1306

 

1. The Parties

Complainant is World Wrestling Federation Entertainment, Inc. ("WWFE"), a Delaware corporation, in USA.

Respondent is Ringside Collectibles, a business operating in New York, USA.

 

2. Domain Names and Registrar

The domain names at issue are:

wwfauction.com

wwfauction.net

The Registrar is Namesecure, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received WWFEís complaint (the "Complaint") by email on October 3, 2000, and in hardcopy on October 6, 2000. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). WWFE made the required payment to the Center. The formal date of the commencement of this administrative proceeding was October 19, 2000, and the due date for a Response was set at October 29, 2000.

On October 27, 2000, the Respondent submitted its Response to the Complaint and elected a three-member Panel. On December 13, 2000, after clearing for potential conflicts, the Center appointed M. Scott Donahey and Jordan Weinstein as Panelists and David H. Bernstein as the Presiding Panelist in this matter.

Complainant submitted a Reply and Respondent submitted a Sur-Reply. The Sur-Reply was received by the Center on December 22, 2000, at which time the Center sent the entire case file to the Panelists. Unfortunately, one of the documents was lost in transit, and thus the entire Panel did not receive the entire case file until January 4, 2001. Given the Partiesí delays in getting the case file to the Center and the further delays in getting the case file to the Panel, the Panel extended the date for decision to January 31, 2001.

Having now reviewed the Reply and Sur-Reply, the Panel has decided to disregard these additional submissions. Rule 12 unambiguously provides that only the Panel may request further submissions. The Panel has not done so. In these circumstances, it generally is inappropriate for a party to file further submissions on its own accord. As numerous panels have repeatedly emphasized, additional submissions may be filed by a party only in very limited circumstances, such as the existence of new, pertinent facts that did not arise until after the submission of the Complaint, or the desire to inform the Panel of new, relevant authority. Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105 (WIPO, April 13, 2000); Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc., Case No. D2000-0166 (WIPO June 1, 2000); Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO, June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO, June 29, 2000); Wal-Mart Stores, Inc. v. MacLeod, Case No. D2000-0662 (WIPO, September 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA00080000095344 (NAF, October 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO, November 3, 2000); Goldline International, Inc. v. Gold Line, Case No. D2000-1151 (WIPO, January 4, 2001) The Thread.com, LLC v. Poploff, Case No. D2000-1470 (WIPO, January 5, 2001). In addition, as a number of these decisions make clear, if a party believes that additional submissions are warranted, it should not simply file them with the Center; rather, the better practice is to seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Because the materials in this case do not meet the limited circumstances in which additional submissions are warranted, the Panel declines to consider the materials in the Reply or Surreply.

 

4. Factual Background

Complainant is internationally famous for its wrestling entertainment services provided under its World Wrestling Federation and WWF marks, which have been used on a wide range of goods, including computer games, T-shirts, linens, and dolls. Complainant has U.S. registrations for the WWF mark and numerous marks incorporating WWF, as well as similar foreign registrations. Complainant also uses the mark "WWF AUCTION" on and in connection with its website at auction.wwf.com, on which Complainant conducts an auction of WWF-related products, including autographed merchandise and clothing.

Since 1995, Respondent has engaged in marketing, retailing and importing legitimate WWF action figures for sale at wrestlingfigures.com and ringsidecollectibles.com. Although Respondent does not currently provide any auction services at the wwfauction.com and wwfauction.net websites, it does sell authorized WWF collectibles at these sites.

 

5. Partiesí Contentions

Complainant alleges that wwfauction.com and wwfauction.net are identical to its common-law mark WWF AUCTION and confusingly similar to its WWF mark. Complainant alleges that Respondent has no rights or legitimate interests in those domain names. Complainant alleges that it has not licensed or otherwise authorized Respondent to use Complainantís marks in domain names. Complainant states that Respondent is not commonly known by the domain names, nor is it making a legitimate noncommercial or fair use of the domain names. Finally, Complainant alleges that Respondent has not used or prepared to use the domain names in connection with a bona fide offering of goods or services, and that Respondent uses wwfauction.com to redirect users to its ringsidecollectibles.com website, where Respondent retails wrestling-related merchandise. Complainant alleges that this conduct is deceptive because Respondent does not conduct an auction on his ringsidecollectibles.com website.

In addition, Complainant alleges that Respondent registered and used the domain names in bad faith, intentionally attempting to attract Internet users for commercial gain to its ringsidecollectibles.com site by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its site. Complainant states that, in August 2000, Complainant became aware of Respondentís registrations and demanded transfer of the domain names. Complainant alleges that Respondent refused to transfer the domain names and asked Complainant to make an offer. Ultimately, Complainant states, Respondent requested $3,000, two tickets to Complainantís Wrestlemania event (worth $1,000), and a hyperlink to Respondentís website from Complainantís wwf.com website (a valuable advertising benefit given the popularity of the wwf.com website). Complainant also alleges that Respondent is simply warehousing wwfauction.net, which constitutes bad faith registration and use.

Complainant also alleges that Respondent was fully aware of Complainantís marks at the time it registered them. Complainant states that Respondent acquired wwfauction.com from an individual to whom Complainant, through counsel, had sent a cease and desist letter, and that Respondent had knowledge of Complainantís claims with respect to that domain name prior to the acquisition of the name.

In its defense, Respondent alleges that it is attempting to increase the services available on its site and that, given the popularity of online auction sites, the "next logical step" was to invest in its own auction site where it could clear out excess inventory and allow customers to place their own WWF action figures up for auction. Respondent alleges that its intent was not to sell the domain names, and that it has incurred a substantial outlay in planning and developmental expenses in connection with its auction site extension. It states that the auction site would launch within the year, and that its need for time to develop the site is not bad faith, but simply a delay in order to properly plan, develop and implement the site.

Respondent alleges that its merchandise is manufactured with authorization by WWF and legitimately imported into the United States. Respondent further claims that it has the right to use WWF marks to promote and advertise its business because it is selling legitimate WWF goods. Respondent states that, for five years, it has used the WWF logo in marketing and promotions, but has always clearly identified its business name to avoid any confusion, and alleges that its proposed auction site would operate similarly. As a result, Respondent argues, it has used the domain names in connection with a bona fide offering of goods or services. Respondent claims that the wwfauction.net site was acquired as protection against cybersquatters upon the planned launch of wwfauction.com.

Respondent states that, when it registered the domain names at issue on December 30, : 99, it was unaware of Complainantís plans to launch an auction site, and that Complainantís auction site did not debut until July 2000. Respondent states that it did not initially contemplate selling the domain names, nor did it suggest that Complainant make it an offer when first contacted. Rather, Respondent alleges that it simply responded to an initial cash and advertising offer from Complainant, and states that its negotiations reflected what it considered fair compensation for development expenses and loss of future business opportunities.

Respondent contends that it did not purchase the wwfauction.com site from anyone else, but created it as a new registration.

Finally, Respondent alleges that, because its wwfauction.com site existed before Complainant unveiled its "WWF AUCTION" site at auction.wwf.com, the Complaint constitutes attempted reverse domain name hijacking.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a 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;

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the Respondent has registered and has been using the domain name in bad faith.

A. The Domain Names are Identical or Confusingly Similar to the WWF

Trademarks

Respondent does not dispute that, under the Policy, the domain names are identical or confusingly similar to Complainantís marks, including the registered WWF mark. That is because the domain name wholly incorporates the famous WWF trademark, adding to it only the generic word "auction." eAuto, L.L.C. v. Triple S Auto Parts, Case No. D2000-0047 (WIPO March 24, 2000). Therefore, Complainant has satisfied the first prong of the domain name transfer analysis.

B. The Respondent Does Not Have a Legitimate Interest in the Domain Names

The extent to which a purveyor of legitimate goods can reflect that fact by using the manufacturerís or licensorís name as part of a domain name is a difficult issue. Some such uses may be legitimate, others not, depending on the extent to which they accurately reflect the userís connection with the mark owner. See, e.g., R.T. Quaife Engineering, Ltd. v. Luton, Case No. D2000-1201 (WIPO, November 14, 2000). If Respondent had shown demonstrable preparations to offer WWF collectibles through an auction, the Panel might conceivably have concluded that Respondent had a legitimate interest, or it might instead have concluded that wwfauction implies too great a connection between Complainant and Respondent.

The Panel need not reach this issue, however, because Respondent has shown no such preparations. The Policy clearly provides that, to show a legitimate interest, a Respondent must come forward with evidence of "use, or demonstrable preparations to use, the domain name . . . in connection with a bona fide offering of goods or services." Policy ∂ 4(c)(i). Although the burden of proof remains upon the Complainant at all times, the Complainantís prima facie showing that Respondent lacks a legitimate interest places upon the Respondent a burden of production on this factor. Universal City Studios, Inc., supra. Respondentís evidence that he sells WWF collectibles is insufficient because the domain name at issue is not WWFColllectiblesForSale.com, but rather, WWFAuction.com (and .net).

Similarly insufficient are Respondentís assertions that he intends to offer auction services. Mere assertions of preparations to make a legitimate use are not enough. Rather, Respondents seeking to show preparations to make a legitimate use must give Panels some evidence; acceptable evidence may include business plans or documented expenses, but will of course vary with the nature of the use and the particulars of the domain name. Respondent, however, offers nothing beyond his own contentions. In these circumstances, the failure to present any credible evidence of demonstrable preparations to offer auction services is fatal to Respondentís claim of a legitimate interest in the domain names.

C. The Respondent Registered and Used the Domain Names in Bad Faith

Respondent uses wwfauction.com to resolve to its retail website. Consumers are likely to be confused into thinking that the WWF merchandise offered therein is being offered by WWFE. That likelihood of confusion is exacerbated by Respondentís prominent use of the WWF logo on its site. This potential for confusion is not alleviated (as Respondent claims) by Respondentís use of its mark RINGSIDE COLLECTIBLES. That is because Respondent has failed to show that its mark has acquired secondary meaning, or otherwise operates to communicate that the site is not sponsored by or affiliated with WWFE. The Panel thus concludes that the use of this domain name is in bad faith, in that it may confuse and divert customers from Complainant, and that, absent any other evidence, bad faith registration may therefore be inferred. Universal City Studios, Inc., supra. This decision should not be interpreted as passing on the propriety of Respondentís use of the WWF logo on its ringsidecollectibles.com site; rather, the Panel merely finds that, on this record, the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith.

Respondent does not use wwfauction.net to resolve to any website. Warehousing this domain name, as a companion to the wwfauction.com domain name that Respondent is using to redirect to its RINGSIDE COLLECTIBLES site, also constitutes bad faith use under the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000); CMG Worldwide, Inc. v. Naughtya Page, Case No. FA0009000095641 (NAF November 8, 2000).

D. Reverse Domain Name Hijacking

Because Complainant has satisfied the elements of the Policy, Respondentís allegation of reverse domain name hijacking must fail.

 

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant has met its burden of proof under paragraph four of the Policy: the domain names wwfauction.com and wwfauction.net are confusingly similar to trademarks in which Complainant has rights, Respondent lacks a legitimate interest in those domain names, and Respondent has registered and used the domain names in bad faith. Accordingly, this Panel concludes that the domain names at issue should be transferred to the Complainant.

 


 

David H. Bernstein
Presiding Panelist

M. Scott Donahey
Panelist

Jordan Weinstein
Panelist

Dated: January 24, 2001