Complainant is World Wrestling Entertainment Inc. of Stamford, Connecticut, United States of America, represented by the law firm Gill Jennings & Every LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Israel Joffe of Lawrence, New York, United States of America.
The disputed domain names <wrestlemania26.com>, <wrestlemania27.com> and <wrestlemania28.com> are registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On May 27, 2010, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. After a request from Respondent, the Center extended the due date for the Response to June 21, 2010. The Response was filed with the Center on June 22, 2010.
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 29, 2010. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a media and sports entertainment company whose principal focus is professional wrestling. Among its activities are matches presented live and by television, the Internet, and other media. Its most successful wrestling event is entitled “WrestleMania.” Complainant holds many trademarks for WRESTLEMANIA that are registered with the appropriate governmental authorities around the world, including the United States Patent and Trademark Office. Registered marks date back to the 1990s, claiming use in commerce as early as 1985. Complainant spends substantial sums to promote its WrestleMania events and related branded products, such as clothing, using that mark designed to take advantage of the events.
Respondent registered the disputed domain names in March 2004. All three are currently inactive and return a “The requested URL could not be retrieved” error message. Nothing in the record, including the Response, suggests any use ever of the disputed domain names. On its own examination using the Wayback machine, “www.achive.org”, the Panel found no record of use at any time.
The dominant feature of the disputed domain names is identical to Complainant's WRESTLEMANIA marks. Complainant has never authorized Respondent to use its marks, indeed Complainant has never had a relationship of any kind with Respondent. Respondent has never used the disputed domain names for any purpose, bona fide or otherwise. Given the longtime renown of Complainant and the WrestleMania events it sponsors, as reflected in its registered marks, Complainant claims that Respondent plainly selected the disputed domain names to take advantage of the recognition attached to Complainant's marks to attract Internet users to Respondent's websites, as proscribed by paragraph 4(b)(iv) of the Policy.
The Response reads, in full, as follows:
“Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price. However if the person does not attempt to sell the name to the company, then no laws have been violated since intent to sell in bad faith has not been proven.
In Virtual Works, Inc. v. Volkswagen of America, Inc. (a dispute over the domain vw.net), the [United States] Fourth Circuit Court of Appeals created a common law requirement that the cybersquatter exhibit a bad faith intent in order to confer liability. This means that domain names bearing close resemblance to trademarked names are not per se impermissible. Rather, the domain name must have been registered with the bad faith intent to later sell it to the trademark holder. This “bad faith” concept is reiterated in 15 U.S.C. § 1125 and U.S.C. § 1129.
I never had any intention of selling the names to WWE and made no attempts to sell it to them. They have not proven that I tried to sell them the name, therefore no laws have been violated and I should be allowed to keep the domain names.”
This first Policy element requires proof of two matters. Complainant must first show ownership of a trademark or service mark, and then establish that the disputed domain names are identical or confusingly similar to its mark. Complainant's proof plainly establishes the first of these matters; WRESTLEMANIA is Complainant's registered trademark in many countries of the world. A quick comparison of the disputed domain names to those marks establishes the second element. WrestleMania is the dominant feature of all three disputed domain names and the addition of numerals following that word does not obviate confusing similarity to Complainant's marks.
Under longstanding precedent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 2.1), Complainant proves the negative required by paragraph 4(a)(ii) of the Policy by first making a prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain names. Complainant has done so here. Complainant has not licensed Respondent to use its marks, and nothing in the record suggests that Respondent has been known, commonly or otherwise, by anything including the word WrestleMania. The burden of production thus shifts to Respondent to counter Complainant's prima facie case. Respondent has provided nothing in this regard, so this Policy element has been satisfied.
Respondent's entire defense to the Complaint is a single contention, that the Policy requires evidence of a sale or attempted sale of a disputed domain name to the mark owner. That contention is defeated by the language of paragraph 4(b) of the Policy itself, which provides several non-exclusive examples of bad faith in registration and use that do not involve any attempt to sell domain names. As Complainant argues, Respondent's conduct in this case falls squarely within the example given in paragraph 4(b)(iv).
The only question in this case is whether no use at all can be deemed use in bad faith, as required by paragraph 4(a)(iii) of the Policy. One of the early cases decided under the UDRP provided a clear affirmative answer to that question. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel in Telstra, supra, and scores of panels subsequently, have found that “warehousing” or simply registering and holding a domain name whose dominant feature is a famous mark, is use in bad faith. This is now a well-settled rule of decision in UDRP proceedings. See WIPO Overview, paragraph 3.2, Consensus View: “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.”
As in Telstra, supra, given the renown of Complainant's trademark, there can be little doubt that Respondent selected the disputed domain names for its association with Complainant's mark. Respondent does not bother to deny this. Complainant has carried its burden of proof under this Policy element.
While not pertinent to the merits of this dispute, the Panel considers it appropriate to add this note about Respondent's request for an extension of time in which to file his Response.
Respondent first made this request on June 11, 2010, two weeks after his receipt of the Complaint. In that communication to the Center Respondent gave no reason for the requested extension. After filing his response, Respondent did say that his “lawyer's wife [was] having a baby.” Complainant, by letter to the Center, opposed Respondent's request for an extension, citing primarily paragraph 5(d) of the Rules, which authorizes the provider to extend the period of time for filing of a response “in exceptional cases”. Complainant saw nothing “exceptional” about this case.
Nor does this Panel. Particularly given the nature of the Response actually filed, the twenty days provided by the Rules constituted ample time to address the merits of the Complaint. Rather than an extension based upon legitimate need, this appears to be yet another attempt by a respondent to keep its domain names a bit longer, for whatever reason.1 This Panel and other panels have condemned this respondent tactic in the past, see Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234 (“The Policy and the Rules are intended to facilitate expeditious consideration of a limited class of cases, and strict adherence to their deadlines is a necessary corollary of this objective.”); The Knot, Inc. v. Julia Bitton, The Nest, WIPO Case No. D2006-0377; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304.
This Panel condemns Respondent's attempt here. 2 Any extension not based upon legitimate and appropriately supported need cannot, in this Panel's opinion, constitute the “exceptional” circumstances called for by paragraph 5 of the Rules. The circumstances belatedly cited by Respondent change nothing in this regard and furnish no excuse. Birth dates are ordinarily predictable and ordinarily do not incapacitate the parents for three full weeks. Of greater importance, Respondent has offered no explanation for waiting two weeks to request an extension or why he or his counsel could not have attended to this proceeding before his June 11, 2010 enquiry.
The Rules expressly include an easy and practical means for a respondent with a real need to obtain a brief extension. Paragraph 5(d) provides: “The period [for filing the Response] may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.” Respondent offers no explanation why he didn't request a brief extension from Complainant's counsel. As it turned out, the Center did seek Complainant counsel's comments on the Respondent's request for an extension, and it was not agreed to. However it is generally desirable for any respondent seeking an extension first to apply to the complainant or its representative before approaching the Center for an extension.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <wrestlemania26.com>, <wrestlemania27.com> and <wrestlemania28.com> be transferred to Complainant.
Richard G. Lyon
Dated: July 1, 2010
1 Often the reason is obvious too, a few more days' or weeks' worth of click-through revenues.
2 The Panel notes the email communication sent by the Center to the parties indicating the Respondent had provided no evidence of exceptional circumstances, and granted the Respondent a brief interim period of four days in which to supply such evidence, if any. None was forthcoming from the Respondent, and the Center did not extend the response date beyond the interim four day period mentioned.