WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Wrestling Federation Entertainment, Inc. v. Aaron Rift
Case No. D2000-1499
1. The Parties
Complainant is World Wrestling Federation, Inc., a Delaware corporation located in Stamford, Connecticut, USA.
Respondent is Aaron Rift, an individual located in Canoga Park, California, USA.
2. The Domain Name and Registrar
The domain name at issue is "wwfwcw.com".
The registrar is Network Solutions, Inc., located in Herndon, Virginia USA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on November 1, 2000. Respondent submitted its response, including a motion to strike, on November 29, 2000. Complainant submitted a reply on December 2, 2000. Respondent submitted a response to Complainantís reply on December 6, 2000.
On December 12, 2000, the WIPO Arbitration and Mediation Center issued notice that Mark Partridge was appointed as Panelist.
4. Factual Background
Complainant provides professional wrestling entertainment services worldwide. Since 1979, it has used the mark WWF in connection with its services in the United States. Complainantís WWF mark is the subject of several U.S. Trademark Registrations, including Reg. No. 2131847 for WWF filed on June 6, 1996, and Reg. No. 1,697,715 for a stylized version of the mark filed on March 1, 1991. Complainant has also registered the marks WWF ATTITUDE, WWF SUPERSTARS and WWF MONDAY NIGHT RAW but has not submitted evidence on the filing date of these registrations. Complainant operates a commercial web site at the domain name "wwf.com" and has an affiliate program in which it pays commissions based on the sale of products to the operators of web sites that direct Internet traffic to Complainantís site.
Respondent registered the disputed domain name on October 28, 1998, when he was 15 years old. Respondent used the domain name in connection with a web site providing information about wrestling. Respondent derives income from banner advertising and from commissions paid by Complainant as part of its affiliate program. Respondent has also advertised his own goods for sale at his site but claims that he sold none of his own product from the web site. On at least two occasions, Complainant sent letters of congratulations praising Respondent as a top performing affiliate site. The evidence includes an example on Complainantís letterhead dated September 5, 2000, stating in part:
Congratulation on selling $250 or more worth of WWF ShopZone products through our Affiliate Program. . . .
Thanks again for being a top performer last month."
The content of Respondentís site features articles, photographs, audio and video clips, and links to affinity merchandise relating to the men and women of professional wrestling, especially those affiliated with Complainant or with another organization known as World Championship Wrestling ("WCW"). Complainant alleges that certain photographs and other material appearing on Respondentís site violate the copyrights of Complainant and others.
On October 12, 2000, Complainant, through counsel, sent its first letter of objection regarding the content and domain name for Respondentís site. Respondent did not reply to the Complainantís objections.
Evidence submitted by Respondent shows a substantial amount of third party use of WWF for unrelated goods and services, including, for example, WWF for electrical connectors and WWF as the acronym of the World Wildlife Fund.
5. Partiesí Contentions
Complainant contends that the disputed domain name is confusingly similar to the mark WWF mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and used the domain name in bad faith as shown by the content of the site. In addition to the domain name, Complainant relies on Respondentís unauthorized use of copyrighted photographs, music and video, and to the use of the WWF mark in the meta tags in the html source document for Respondentís web site.
Respondent contends that the WWF mark is highly diluted, that Respondent has made bona fide use of the domain name for nearly two years before any knowledge of this dispute and that Complainant should be estopped from claiming bad faith. Respondent claims Complainant has acquiesced to Respondentís domain name as a result of the compensation and encouragement given to Respondent as part of Complainantís affiliate program. Respondent also moves to strike Complainantís allegations regarding copyright infringement because such allegations are not relevant to this proceeding.
A. Additional Submissions
The first issue is consideration of the Complainantís Reply and Respondentís response to that Reply.
The Policy and Rules applicable to this procedure do not provide for a reply as of right. There is a split in the decisions regarding the consideration of unsolicited replies. See Rollerblade, Inc. CBNO and Ray Redican Jr., ICANN No. D2000-0427 (citing cases). In this case, I have considered the additional submissions of the parties because they appear to deal with contentions that could not have been anticipated in the initial filings. Complainantís Reply addresses in part Respondentís defense of laches and acquiescence. Respondentís response to that Reply focuses on Complainantís challenge to the truthfulness of its pleadings.
B. Motion to Strike
The next issue is Respondentís motion to strike. Respondent moves to strike the allegations relating to copyright infringement and other matters involving the unauthorized use of content on the site. Respondent is correct that the scope of these proceedings is limited to the question of an abusive domain name registration. The Panel is not empowered to resolve matters involving the content of the web site. However, the content of the web site may be relevant to deciding issues relating to the registration and use of the domain name. For example, the use of meta tags to divert traffic may be relevant to the issue of bad faith use of the domain name. Similarly, the unauthorized use of copyrighted material on the web site may also be relevant to the Respondentís intent. Accordingly, the motion to strike is denied.
C. Abusive Registration and Use of Domain Name
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to 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 interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
i. Similarity between Domain Names and Trademark
Complainant has established prior rights in the mark WWF. Respondentís reliance on third party use and registration of WWF for unrelated goods and services is misplaced. It is clear from Respondentís site that he intends the WWF portion of his domain name as a reference to Complainant. I think the WCW portion will be recognized by wrestling fans as a reference to the World Championship Wrestling organization, and that the WWF will be recognized as a reference to Complainant. It is likely that a substantial portion of relevant users of the Internet will mistakenly believe that use of the WWF portion of the domain name is sponsored or authorized by Complainant, or that the site is operated directly or under license by Complainant. Accordingly, I find that the domain name is confusingly similar to Complainantís mark.
ii. Respondentís Legitimate Interest in Domain Names
It is undisputed that Respondent registered and began using the disputed domain name in connection with a site offering information about professional wrestling long prior to any knowledge of this dispute. Moreover, up until immediately prior to filing this proceeding, Complainant paid compensation to Respondent as part of its affiliate program. Thus, Respondent claims to have a legitimate interest in the domain name because he made commercial use prior to notice of this dispute.
Use prior to this dispute is admitted, so the question becomes whether Respondentís use was bona fide. Not all use prior to notice of the dispute can qualify as bona fide use. As stated in Madonna Ciccone v. Dan Parisi, ICANN Case No. D2000-0847 , "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
Here, Respondentís use of WWF as part of its domain name is clearly intended as a reference to Complainant. It is not clear, however, that the reference intentionally trades on Complainantís fame. This issue turns on the findings on bad faith and the defense of acquiescence, discussed below.
iii. Bad Faith Registration and Use
As noted above, it appears that Respondent registered and used the domain name for the purpose of operating a web site providing information about professional wrestling. There is no evidence that Respondent registered and used the domain name with the purpose of selling it for profit, that Respondent is using the domain name to disrupt the business of a competitor, or that Respondent is engaged in a pattern of conduct involving the registration of domain names that trade on the names of others.
Under Paragraph 4(b)(iv) of the Policy, evidence of bad faith use and registration includes a showing that the registrant has "intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to source, sponsorship, affiliation or endorsement."
In this case, the evidence shows Respondent operates his site for commercial gain. He profits from banner advertising and from commissions on the sale of products.
It is also clear that the WWF portion of the domain name is intended as a reference to Complainant. Persons using a search engine to locate Complainant are likely to be led to Respondentís site due to the metatags and the similarity of the domain names. Such conduct has been recognized by the U.S. Courts as an infringement of trademark rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). Once at the site, Internet users will find materials similar to those available at Complainantís site, including photographs apparently copied from Complainantís site and links to products sold at Complainantís site. It seems inevitable that a substantial number of users of Respondentís site are likely to be confused about the source, sponsorship, affiliation or endorsement of the site. The fact that the domain name and site also refer to WCW does not preclude the likelihood of confusion. Many are likely to believe that WWF and WCW are related and sponsor the site, or that the site is a joint venture of two separate entities.
While the likelihood of confusion is present, that alone is not enough for relief under the Policy. See WIPO Report, April 30, 1999, paragraph 172 ("[G]ood faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure"). Instead, the Policy requires a finding that the Respondent intended to trade on the Complainantís mark. In making that determination, the fact finder must often rely on circumstantial evidence.
Here, the following circumstances, considered together, indicate that Respondent intends to trade on Complainantís mark for commercial gain: Respondent deliberately selected Complainantís mark as a salient part of his domain name knowing it was a reference to Complainant, rather than a non-infringing alternative such as "wrestlingnews.com" that would aptly describe his endeavor. The consequences of that choice seem inevitably to create a likelihood of confusion. Respondent took additional steps to increase the likelihood of confusion by placing numerous references to Complainant in the metatags for its site, by including content copied from Complainantís site, and by linking to Complainantís site. Finally, it appears that Respondent has been disingenuous in its pleadings, by claiming that it "sold absolutely no products of his own from this web site." When presented with evidence to the contrary, Respondent was forced to admit he advertised his own product for sale on the site for "a few months", but claims none were ever sold. Based on the record before me, I find that Respondent registered and used the domain name as an intentional attempt to attract Internet users to his web site for commercial gain based on a likelihood of confusion with complainant.
That Respondent was only fifteen years old at the time the use began is no defense to a deliberate infringement of anotherís rights. Similarly, the fact that the domain name may also create confusion with the WCW mark is not a defense. However, we must give Respondentís claim of acquiescence more attention.
Under U.S. law, which is applicable to both parties in this dispute, acquiescence constitutes a ground for denial of relief when the trademark ownerís conduct amounts to an express or implied assurance that the trademark owner will not assert trademark rights against the infringer. The trademark owner must have knowledge of the infringerís conduct and the infringer must act to his detriment in reasonable reliance upon the trademark ownerís actions. The party claiming acquiescence has the burden of proof. Here, the record shows that Complainant allowed, even encouraged, Respondent to participate in its affiliate program and compensated Respondent for his efforts. Apparently this relationship existed for up to two years before this dispute arose.
Considering these facts, the first question is whether Complainant knew or should have known about Respondentís use of the domain name. Complainant claims its affiliate program is automated and that it cannot have actual knowledge of the activities of all of its affiliates. However, although nothing in the record shows that Complainant had actual notice of the domain name used by Respondent.Moreover, as also noted below its affiliate agreement makes clear its objecton against such use.
Assuming the Complainant had knowledge of Respondentís domain name, the next question is whether it was reasonable for Respondent to believe Complainant had no objection to his use of the mark WWF as part of his domain name. It appears that Respondent became a party to the "WWF Affiliate Agreement" when he enrolled in the affiliate program. That agreement permits the use of Complainantís buttons, banners and logos on the web site as links to Complainantís site. The agreement also informs Respondent that he may not use Complainantís trademarks in any manner and that he may be prosecuted for infringement if he does so. Under these circumstances, it would not have been reasonable for Respondent to conclude that Complainant consented to Respondentís use of WWF as part of his domain name.
I accept Respondentís claim that he has created a valuable site that attracts many Internet users and that some of them use "wwfwcw.com" as an email address. This is regrettable. To the extent that Respondent developed a business under the "WWFWCW.com" domain name, he did so at his own risk, and not with any assurance that complainant would not object. Of course, nothing here prevents him from operating his web site or offering email services under a different, non-infringing domain name.
The only remedies available under the Policy are cancellation or transfer of the domain name. See Policy, Paragraph 4(i). Although I find the domain name to be an abusive registration, it is not clear that Complainant would be entitled to use the domain name because it includes the reference to WCW. The record does not explain the relationship, if any, between Complainant and World Championship Wrestling. If the domain name is cancelled, however, it is not clear how the Respondent would be prevented from immediately reregistering the domain name. Given the available alternatives, I believe the best course is to order a transfer of the domain name to Complainant.
I conclude Complainant has demonstrated (a) that the disputed domain name "wwfwcw.com" is confusingly similar to its mark WWF; (b) that Respondent lacks any right or legitimate interest in the disputed domain name; and (c) that Respondent registered and used the domain name in bad faith. Accordingly, I find in favor of Complainant and grant Complainantís request for transfer of the "wwfwcw.com" domain name.
Mark V. B. Partridge
Dated: December 29, 2000