WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

World Wrestling Federation Entertainment, Inc. v. Michael Rapuano aka Bobby Rogers

Case No. DTV 2001-0010

 

1. The Parties

The Complainant is World Wrestling Federation Entertainment, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Stamford, Connecticut, USA.

The Respondent is Michael Rapuano, also known as Bobby Rogers, with address in Sunrise, Florida, USA.

 

2. The Domain Name and Registrar

The disputed domain names are <worldwrestlingfederation.tv>, <therock.tv>, <undertaker.tv>, <stonecold.tv> and <austin316.tv>.

The Registration Authority for the disputed domain names is dotTV Corporation, with business address in Los Angeles, California, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on April 4, 2001, and by courier mail received by WIPO on April 9, 2001. Complainant paid the requisite filing fees. On April 9, 2001, dotTV Corporation ("Registration Authority") transmitted its Registrar Verification Response to WIPO regarding the disputed domain names.

(b) On April 23, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. Courier tracking information shows successful delivery of the package transmitted by WIPO.

(c) On May 14, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(d) On May 15, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 15, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On May 16, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by May 29, 2001. On, May 16, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the word trademark and service mark "WORLD WRESTLING FEDERATION" on the Principal Register of the United States Patent and Trademark Office ("USPTO") (reg. no. 1564148, dated November 7, 1989, covering various merchandise, and reg. no. 1317318, dated January 29, 1985, covering entertainment services, namely, "provision of sporting events such as wrestling exhibitions for television"). Complaint, para. 13 & Annex C.

Complainant has registered the "WORLD WRESTLING FEDERATION" mark in countries outside the United States. It has also registered abbreviated forms of the mark, including with design elements, in the United States. Id., at para. 13 & Annexes C & D.

Complainant maintains an active commercial website at Internet address <www.wwf.com>, on which it displays its "WORLD WRESTLING FEDERATION" mark. Id, para. 13.

Complainant has registered the word trademark and service mark "UNDERTAKER" on the Principal Register of the USPTO (reg. no. 1755782, dated March 2, 1993, covering entertainment services, namely, "live, filmed and televised appearances by a professional wrestler/entertainer"; reg. no. 1729405, dated November 3, 1992; reg. no. 1755482, dated March 2, 1992; reg. no. 1771513, dated May 18, 1993; reg. no. 1980341, dated, June 18, 1996; reg. no. 2327493. dated March 14, 2000, and; reg. no. 1771405, dated May 18, 2001, each covering various merchandise). Id., at para. 13 & Annex C.

Complainant maintains an active commercial website at Internet address <www.undertaker.com>. Id., para. 13.

Complainant has registered the word trademark and service mark "AUSTIN 3:16" on the Principal Register of the USPTO (reg. no. 2313120, dated February 1, 2000, covering "entertainment services in the nature of live and filmed televised performances rendered by a professional wrestler/entertainer"; reg. no. 2299462, dated December 14, 1999, and; reg. no. 2299461, dated December 14, 1999, each covering various merchandise). Id., para. 13 & Annex C.

Complainant uses the term "THE ROCK" in connection with providing wrestling entertainment services as the identifier for one of its principal actors. It uses the term "THE ROCK" in connection with the promotion and sale of merchandise, including T-shirts, jackets, posters, toys and videocassettes. Complainant maintains an active commercial website at Internet address <www.therock.com>. Complainant has four pending applications at the USPTO for registration of the term "THE ROCK". Id., para. 13.

Complainant uses the term "STONE COLD" in connection with providing wrestling entertainment services as the identifier for one of its principal actors. It uses the term "STONE COLD" in connection with the promotion and sale of merchandise, including T-shirts, jackets, posters, toys and videocassettes. Complainant maintains an active commercial website at Internet address <www.stonecold.com>. Complainant has two pending applications at the USPTO for registration of the term "STONE COLD". Id., para. 13.

According to the Registration Authority Verification Response, the disputed domain names <worldwrestlingfederation.tv>, <stonecold.tv>, <therock.tv>, <undertaker.tv> and <austin316.tv> are registered in the name of Respondent. According to a WHOIS database query response from the Registration Authority to Complainant, each of the disputed domain names was registered on June 21, 2000 (e-mail from whois@www.tv to Complainant, dated March 5, 2001, Complaint, Annex A).

Respondent has not made use of any of the disputed domain names in connection with maintaining an active website.

By e-mail and certified mail dated January 10, 2001, Complainant (through its counsel) sent a cease and desist and transfer demand to Respondent regarding the disputed domain names (with the exception of <austin316.tv>). By e-mail dated January 13, 2001, Respondent notified Complainantís counsel that he intended to transfer the disputed domain names to it. Respondent repeated this intention in subsequent correspondence to Complainantís counsel. Respondent did not, however, respond to follow-up correspondence or transfer the names. Complaint, Annexes F & I.

On January 16, 2001, the Miami Herald newspaper website (www.miamiherald.com) posted a report regarding this dispute and related matters (headed "Rogers in WWFís sites again"). According to this news report, Respondent is a professional wrestler and "chief event coordinator" of "Future of Wrestling, Inc." In that report, Respondent is quoted as follows:

"Those sites were never put up. However, I do intend to put up sites now. My plans for therock.tv are a big picture of a crack rock with the circle and slash through it, telling kids to ĎJUST SAY NOí to therock because crack kills.

"There will be a link to my undertaker.tv site on there which will have a picture of an undertaker with a coffin reminding youths if they do say yes to therock they may get a visit from the undertaker someday. My undertaker site will have a link to my stonecold.tv site Ė urging the public one more time to go stonecold sober and get help for any drug or alcohol addictions they might have. All are public service announcements that in no way infringe any copyright laws or trademark laws."

The Service Agreement in effect between Respondent and dotTV Corporation subjects Respondent to dotTVís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that it has rights in the trademarks and service marks "WORLD WRESTLING FEDERATION", "UNDERTAKER" and "AUSTIN 3:16" based on use in commence and as evidenced by registration of those marks at the USPTO. Complainant asserts that it has common law rights in the trademarks and service marks "THE ROCK" and "STONE COLD" based on extensive use in commerce. Complainant states that it has applied to register "THE ROCK" and "STONE COLD" at the USPTO. See Factual Background, supra.

Complainant indicates that the disputed domain names are identical or confusingly similar to marks in which it has rights.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has made no use of the marks in connection with active websites.

Complainant alleges that Respondent registered and has used the dispute domain names in bad faith. Complainant states that Respondentís "warehousing" of the names, his registration of the names with clear knowledge of Complainantís marks, his participation in a business that competes with Complainantís business, and his use of this dispute to draw attention to his competing business, all constitute evidence of bad faith registration and use.

Complainant requests the Panel to direct the Registration Authority to transfer the disputed domain names to it.

B. Respondent

Respondent did not reply to Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier tracking records and the sending of e-mail that Respondent was notified of the complaint and commencement of the proceedings (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 15(a)).

Complainant is the holder of trademark registrations at the USPTO for the trademarks and service marks "WORLD WRESTLING FEDERATION", "UNDERTAKER" and "AUSTIN 3:16".(Footnote 1) Registration on the Principal Register establishes a presumption of rights in the marks that Respondent has not rebutted. The Panel determines that Complainant has rights in the marks "WORLD WRESTLING FEDERATION", "UNDERTAKER" and "AUSTIN 3:16".

Complainantís registration of the "WORLD WRESTLING FEDERATION", "UNDERTAKER" and "AUSTIN 3:16" marks preceded Respondentís registration of the disputed domain names <worldwrestlingfederation.tv>, <undertaker.tv" and <austin316.tv>.

Complainant asserts common law rights in the marks "THE ROCK" and "STONE COLD".(Footnote 2) U.S. federal trademark law provides for the establishment of common law rights in trademarks and service marks based on use and distinctiveness. (Footnote 3)

"Rock" is a term with numerous meanings in the English language. As a noun, "rock" may refer, inter alia, to a concreted mass of stony material. As a verb, it may refer, inter alia, to moving back and forth. As an adjective, it may refer, inter alia, to a type of popular music.(Footnote 4)  Complainantís asserted mark, "THE ROCK", is formed by combining the definite article "THE" with this common term in the English language.

"STONE COLD" also combines two common terms in the English language. As a noun, "stone" may refer, inter alia, to a piece of mineral material. As a verb, it may refer, inter alia, to the act of hurling a rock with the intention to cause injury. As a noun, "cold" may refer, inter alia, to an illness. As an adjective, "cold" may refer, inter alia, to low temperature.

Complainant has asserted extensive use of the terms "THE ROCK" and "STONE COLD" in commerce in the United States. In order to demonstrate that these terms are distinctive and therefore serve as marks, Complainant may demonstrate that they are used suggestively. Alternatively, it may present substantial evidence that the public associates the terms with Complainantís goods or services.

The Panel notes that Complainant is not attempting to use the term "rock", or "the rock", in the sense of generic identification of a thing. Complainant could not acquire rights in the term "rock" in reference to compressed stone.

Complainant has not made any suggestion regarding whether its claimed marks are suggestive.

Complainantís has indicated that the terms "THE ROCK" and "STONE COLD" are very well known among the public as being associated with characters involved in providing wrestling entertainment services, and with merchandise tied-in to those characters. Complainant has referred to web sites it maintains at the Internet addresses <therock.com> and <stonecold.com>. A study by the Panel of these websites indicates that Complainant offers goods and services under the terms "THE ROCK" and "STONE COLD" at these Internet locations.

Complainant has made a prima facie showing that the terms "THE ROCK" and "STONE COLD" each has acquired common law status as service marks and trademarks in the field of wrestling entertainment and related merchandising. Based principally on Respondentís acknowledgement of Complainantís pre-existing rights in these marks,(Footnote 5) the Panel determines that Complainant rights in the marks arose prior to Respondentís registration of the disputed domain names. Respondent has failed to provide any evidence to rebut Complainantís prima facie showing of rights in these marks. The Panel determines that for purposes of resolving this dispute, Complainant has demonstrated rights in the marks "THE ROCK" and "STONE COLD" in the field of wrestling entertainment services and related merchandising.

The disputed domain names <worldwrestlingfederation.tv>, <undertaker.tv>, <therock.tv>, <stonecold.tv> and <austin316.tv> are essentially identical to Complainantís marks. The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish those names from Complainantís marks since ".tv" is a common Internet address identifier that is not specifically associated with Respondent.

The Panel determines that the disputed domain names are identical to trademarks and service marks in which Complainant has rights. Complainant has established the first of the three elements necessary to proving abusive domain name registration and use.

Respondent has asserted no rights or legitimate interests in the disputed domain names, and the Panel can detect none on the evidence before it. Respondentís statement to a news organization that he intends to use the domain names to convey an anti-drug and alcohol message as a public service does not establish legitimate non-commercial or fair use of the names.

Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain names, and has thus established the second element needed to prove abusive domain name registration and use.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)); (2) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii)); and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Respondent has registered five domain names, each incorporating a trademark or service mark of Complainant. As such, Respondent has prevented Complainant from registering its marks in corresponding <.tv> domain names. The registration of five names incorporating Complainantís marks is sufficient to constitute a pattern of conduct, and to evidence bad faith within the meaning of paragraph 4(b)(ii) of the Policy.

Respondent registered the disputed domain names as a means to attract media attention to himself and to a business enterprise competing with Complainant. In this sense, Respondent registered the disputed domain names to disrupt the business of a competitor, and has evidenced bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

Although Respondent has not used the disputed domain names to establish active websites, he was demonstrably familiar with Complainantís marks, and worked in the same field in which Complainant uses its marks. Absent some plausible explanation for his conduct, the Panel would be prepared to infer that Respondent registered the disputed domain names with the intention to use those names for commercial gain by attracting Internet users to his own websites by creating confusion as to Complainantís sponsorship of or affiliation with those sites. However, since the Panel has already determined that Respondent acted in bad faith, it will not make a specific finding on this ground.

The Panel determines that Respondent registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy. Complainant has thus established the third and final element necessary to demonstrate abusive domain name registration and use. The Panel will therefore direct the Registration Authority to transfer the disputed domain names to Complainant.

 

7. Decision

Based on its finding that the Respondent, Michael Rapuano aka Bobby Rogers, has engaged in abusive registration and use of the domain names <worldwrestlingfederation.tv>, <therock.tv>, <undertaker.tv>, <stonecold.tv> and <austin316.tv> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <worldwrestlingfederation.tv>, <therock.tv>, <undertaker.tv>, <stonecold.tv> and <austin316.tv> be transferred to the Complainant, World Wrestling Federation Entertainment, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: May 23, 2001

 


Footnotes:

1. Complainant submitted evidence of trademark registrations at the USPTO in the name of Titan Sports, Inc. Complainant has indicated that Titan Sports, Inc., is the former name of World Wrestling Federation Entertainment, Inc. Complaint, para. 13. (back to text)

2. Mere application for registration of a mark does not establish any presumption of rights in that mark. (back to text)

3. 15 USCS ß 1125(a) (2001). (back to text)

4. See Merriam-Webster On-Line Collegiate Dictionary, at http://www.m-w.com/cgi-bin/dictionary. (back to text)

5. Complainant did not assert a date at which it considered itself to have established common law rights in the marks. (back to text)