WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WTA Tour, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Marko Ramius
Case No. D2015-2220
1. The Parties
The Complainant is WTA Tour, Inc. of St. Petersburg, Florida, United States of America, represented by IPAssure Brand Protection Services, LLC, United States of America.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Marko Ramius of Gallarate, Italy, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wtalove.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 11, 2015. On December 13 and 14, 2015, the Center received two email communications from the Respondent.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2016. Further to the Respondent’s request, the Response due date was extended to January 11, 2016. The Response was filed with the Center on January 11, 2016.
On January 12, 2016, the Complainant sent to the Center a Supplemental Filing with annexes, which were forwarded to the Panel with the case file.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 21, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Background information about the Complainant is extracted from the Complaint.
WTA Tour, Inc., (“WTA”) is the women’s professional tennis organization, formed in 1973, and is a New York not-for-profit corporation. The scale of the Complainant is that it represents 92 nations, has offered USD 129 million in prize money, and its events are broadcast in 80 countries. From 2005 to 2014 revenues were USD 529 million, and USD 18 million was spent on advertising. Expenditure relating to a campaign known as “WTA 40 Love”, relating to the 40th anniversary in 2013, was USD 198,000.
The Complainant holds about 40 trademarks or service marks (“trademarks”) or pending applications in various countries for WTA with or without design, WTA TOUR, WOMEN’S TENNIS ASSOCIATION and WTA - WOMEN’S TENNIS ASSOCIATION. The following are representative:
WTA (design), United States Patent and Trademark Office principal register, registration granted December 20, 2011, registration number 4074942, class 35;
WTA - WOMEN’S TENNIS ASSOCIATION, European Community Trademark, Office for Harmonization in the Internal Market, registration granted July 14, 2011, registration number 009728437, classes 16, 35, 41;
WTA TOUR, United States Patent and Trademark Office principal register, registration granted September 12, 2000, registration number 2385106, class 35.
The Complainant also claims common law rights in the unregistered trademark WTA 40 LOVE.
The Complainant’s main website is at “www.wtatennis.com” and it owns a number of domain names incorporating “wta”, “wtatour” and “wta” in other combinations.
Background information about the Respondent is extracted from the Response.
The Respondent, an individual with an Italian address, operates an online weblog (“blog”) or fan site at the address of the disputed domain name. Its theme is tennis, especially women’s tennis, and his intention is to serve as a “news aggregator and forum” using his own writings and material gathered from other Internet websites, including links to videos. The Respondent’s operation is non-profit and advertisements are carried in order to contribute towards costs.
The disputed domain name was registered on May 19, 2013.
5. Parties’ Contentions
The Complainant’s contentions include the following.
The Complainant has produced copies of registration documents in respect of its trademarks.
The Complainant states that in January 2013 it commenced a campaign to celebrate its 40 years and created for the purpose a design mark, WTA 40 ♥ (“WTA 40 LOVE”). The mark comprises WTA in a stylised font and oval shape, followed by “40”, followed by the universally recognised solid symbol for a stylised heart. The “40” and the heart symbol are usually in red or pink. The Complainant claims common law rights in the WTA 40 LOVE mark.
The Complainant has submitted a number of year 2013 pages from its website referencing the campaign or exhibiting the WTA 40 LOVE mark, including a page published March 6, 2013 headed “WTA launches 40 Love campaign” showing a woman with “40” and the heart symbol on her separate palms; a picture of the mark headed “Our brand new WTA 40 LOVE logo!”; “Featured Video of the Week” with a still picture displaying the WTA 40 LOVE mark; and a photo of a tennis player with the WTA 40 LOVE mark displayed on her dress. Two photos of named tennis players are presented above the WTA 40 LOVE mark together with a number of action shots and other pages bearing the mark. A list of 10 of the Complainant’s online videos stated to show the use of the mark is also provided.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The trademark WTA is incorporated entirely into the disputed domain name. The added generic term “love” should not prevent a finding of confusing similarity because the WTA trademark is the distinctive and dominant component of the disputed domain name. The term “love” is a tennis term meaning a score of zero, and reinforces the association of the disputed domain name with the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent permission to use the WTA trademark or to register or use the disputed domain name. The Complainant’s trademark and its use of the WTA 40 LOVE trademark predate the Respondent’s registration of the disputed domain name.
The Complainant says there is no evidence that the Respondent has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or is making a legitimate noncommercial or fair use of it without intent for commercial gain to divert consumers misleadingly.
The Complainant has produced screen captures that it says show the disputed domain name to have resolved to a website (the “Respondent’s website”) that displays content copied from the Complainant’s own website, links to the Complainant’s YouTube videos, and the Complainant’s WTA and design trademark.
The Complainant has produced an affidavit by Marija Zivlak stating that, on November 9, 2015, all of the 377 articles under the “WTA News” section of the Respondent’s website had been copied without her permission from her own website “www.womenstennisblog.com”, comprehensive copies of which have been appended as evidence. The Complainant has also produced an affidavit from an employee stating that on the same date, 133 of the remaining articles on the Respondent’s website appeared to have been taken from the website ”www.wtahotties.blogspot.com” and one had been taken from “www.the-slice.com”. A side-by-side compilation of a number of representative such articles was appended as evidence.
The Complainant says the Respondent’s website contains banner and Google advertisements and links to websites, including sports betting, that have nothing to do with WTA or the tennis industry. The Respondent’s website is being used to infringe upon the intellectual property of the Complainant, of Marija Zivlak and possibly others. The Respondent does not acknowledge the sources but falsely claims copyright to the appropriated articles. Thus the Respondent cannot establish a bona fide offering of goods or services through his website.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It is impossible that the Respondent was unaware of the Complainant’s WTA trademark at the time of registration of the disputed domain name. The Respondent copied articles and the “WTA Love” logo directly from the Complainant’s website on to the Respondent’s website. The Respondent said in an email of May 6, 2015, that he set up his website because he was a fan of WTA.
The Complainant contends that the Respondent used the disputed domain name intentionally to attempt to attract Internet users to the corresponding website for commercial gain by creating a likelihood of confusion with Complainant’s WTA trademark and WTA 40 LOVE common law trademark as to the source, sponsorship, affiliation, or endorsement of his website.
The Complainant says the Respondent’s bad faith is further established by his initial offer to sell the disputed domain name to the Complainant for USD 18,000, without any documentation as to how this may have related to the out-of-pocket costs directly associated with its registration.
The Complainant says that the Respondent’s removal of articles copied from the Complainant’s website in response to the Complaint, and denial of having stolen them, is further evidence of the Respondent’s bad faith.
The Complainant has cited previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint.
The Respondent’s contentions include the following.
The Respondent contends that the disputed domain name is not identical or confusingly similar to Complainant’s WTA trademarks. The Respondent says the acronym WTA is not a unique mark and has submitted a listing of other trademarks that include WTA, such as World Taekwon-do Alliance and Western Telecommunications Alliance.
The Respondent lists some 15 domain names commencing with or incorporating the letters “wta”, says there are many more, and asserts that they are legal. The disputed domain name might one day be used for another purpose such as World Trout Anglers love for fishing.
The Respondent says the suffix “love” explains the scope of his website, being for enthusiasts who love women’s tennis. There is no confusion between the disputed domain name and the Complainant’s trademark because the Complainant only used the trademark WTA 40 LOVE to celebrate the 40th anniversary of women’s tennis and the domain name <wta40love.com> is still available today.
The Respondent further contends that he has rights or legitimate interests in the disputed domain name and that he bought and registered it legally. He says the disputed domain name is different from the Complainant’s non-registered trademark WTA 40 LOVE, which is not now in use.
The Respondent says his website carries the disclaimer: “WTALOVE is not affiliated with WTA Tour, Inc. and all other WTA Tour product names are trademark”.
The Respondent says that WTA Tennis videos available through his website are embedded from “www.YouTube.com” and not physically present in the Respondent’s website’s server. Video embedding is an option offered by YouTube and is not blocked by the Complainant. Some articles were taken from Google news. The Respondent has submitted a copy of an article on his website showing attribution to “womenstennisblog”, and a group photograph inclusive of the WTA 40 LOVE trademark, which has the URL of a website apparently added underneath.
The Respondent questions the impartiality of “www.womenstennisblog.com” and Marija Zivlak, and says that the blog is contracted to the Complainant. He also says that “womenstennisblog” and WTA use ”Really Simple Syndication” (RSS) which is specifically intended for sharing and for aggregating updates to blogs and news sites.
The Respondent states that the disputed domain name is in use as a fan site and the articles were used to give people the opportunity to start new topics and discussions. The Respondent’s website is non-profit and noncommercial. Advertising to defray expenses has brought in a total of USD 35.90 in three years.
The Respondent further contends that the disputed domain name was not registered and is not being used in bad faith.
The Respondent says the disputed domain name was not acquired primarily for the purpose of sale to the Complainant, and the Respondent never contacted the Complainant to try to sell it. The Complainant demanded the transfer of the disputed domain name for free and the Respondent replied that out of pocket costs were not only related to registration but should include all expenses. The Respondent eventually offered transfer for USD 2,500 (reduced from USD 18,000) to cover out of pocket costs including legal advice.
The Respondent reiterates that his intention was to create a noncommercial fan site. Revenue from advertisements never covered costs. The “www.livescore.in” score table when displayed was technically a windowed frame, free in exchange for a back-link, and the “bet365” advertisement for sports betting visible therein was of commercial benefit only to “www.livescore.in”.
The Respondent has cited previous decisions under the Policy that he considers to support his position.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent’s use of a privacy service, raised by the Complainant, is not an issue in this case since the Respondent duly responded to the Complaint with his name, address and contact details.
On January 12, 2016, the Complainant sent to the Center a Supplemental Filing and annexes, which were later forwarded to the Panel with the case file. Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. There is no right of reply under the Rules. The pleadings in this instance from both Parties are voluminous with extensive annexes. The Panel has not found it necessary to receive any Supplemental Filing.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy the Complainant must demonstrate its rights in the trademarks in question. The Complainant has produced registration documents for trademarks comprising WTA alone or WTA in combination with qualifying terms, such as WTA – WOMEN’S TENNIS ASSOCIATION and WTA TOUR.
The disputed domain name is <wtalove.com>. The existence of other entities named WTA or other domain names incorporating “wta” is of no relevance because the matter to be determined is whether the disputed domain name is identical or confusingly similar to a trademark in which the Party making the Complaint has rights. The Panel finds that the disputed domain name, by incorporating the Complainant’s trademark WTA in its entirety, is confusingly similar. The additional word “love” is not distinguishing but enhances the confusing similarity since it is a word widely recognised as pertaining to tennis.
The Complainant also claims common law rights in the unregistered trademark known as WTA 40 LOVE with design. The question of what needs to be shown by a Complainant in order to assert rights in an unregistered trademark for the purposes of the Policy has been discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.7, which reads in part as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. (...)”
According to the evidence, on January 24, 2013, the Complainant placed on its own website the headline “WTA TO CELEBRATE 40TH ANNIVERSARY IN 2013”, sub-headed “The WTA will honor its four decades of growth and achievements in 2013 with a season-long campaign named 40 LOVE. Tennis Australia honored the WTA’s milestone on Thursday”. A detailed article followed.
The headline on March 6, 2013 was “WTA LAUNCHES 40 LOVE CAMPAIGN” with a related photograph and news item. A picture of the unregistered trademark WTA 40 LOVE was shown on the same date.
Subsequent items included “Featured video of the week – 2013 40th anniversary of the WTA”, and on June 30, 2013, the headline was “WTA LIVE: 40 LOVE PRESENTED BY XEROX – Watch all the red carpet interviews with the World No.1s, gala speeches from the legends and much more from the 40 LOVE Party, all right here with WTA Live: 40 LOVE presented By Xerox”.
Frequently, as in headlines and articles quoted above, the Complainant referred to WTA 40 LOVE with the word “love” spelt in letters rather than the heart symbol. For example, “WTA CELEBRATES 40 LOVE – Throughout 2013, the Women's Tennis Association, the world’s leading global sport for women, is celebrating four decades of growth and achievements with a season-long integrated marketing campaign, 40 LOVE”.
On the evidence presented, the Panel finds the unregistered trademark WTA 40 LOVE, either in words or with the heart symbol, to have been promoted internationally over a period of at least six months in 2013 with a campaign of considerable momentum and that the Complainant has acquired sufficient rights in the trademark to satisfy the purposes of paragraph 4(a)(i) of the Policy.
The Panel finds the disputed domain name <wtalove.com> to be confusingly similar to the unregistered trademark WTA 40 LOVE in which the Complainant has rights, because it is sufficiently close in appearance and meaning, and the omission of “40”, in the present context, is found not to be distinguishing. The difference in appearance of the heart symbols used in the Complainant’s trademark and on the Respondent’s website are of no consequence in a comparison of the wording of the disputed domain name with the word elements of the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has stated that it has not granted the Respondent permission to use the WTA trademarks or to register or use the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent does not appear to be making an offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy or to have been commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.
The Respondent asserts in effect that his use of the disputed domain name is for a fan website or blog and is legitimate, noncommercial and within the ambit of paragraph 4(c)(iii) of the Policy.
A tribute or criticism website may be entirely legitimate within the normal bounds of freedom of speech and, although decisions under the Policy are not precedential, domains incorporating the trademark of an entity the subject of tribute or criticism have sometimes been allowed to stand and sometimes not. As discussed and referenced in WIPO Overview 2.0 at paragraphs 2.4 and 2.5, however, a number of strictures apply to the analysis of whether a website qualifies or not to be considered a tribute or criticism website.
Whilst it cannot reasonably become the Panel’s responsibility to assess the veracity or otherwise of all the content of a fan or criticism website, nevertheless evidence has been presented that, at the time the Respondent’s website content was analysed on November 9, 2015, all 511 purported articles had been copied from other websites, including 377 from Marija Zivlak’s personal website. The Complainant has produced further evidence that the copied articles were essentially or mainly without attribution to their sources. The Respondent has produced minimal evidence to the contrary. On the basis of the evidence of the type of content on the Respondent’s website the Panel is not persuaded on balance that it is a genuine fan website within the accepted meaning of the term.
Even where a disputed domain name has been admitted as having a genuine purpose of criticism or tribute, the further requirements generally applied have included that it must be obvious to Internet users from the name of the domain that it does not lead to an official website of the trademark owner. The Panel finds it more probable than not that visitors attracted to the disputed domain name would tend to believe, both before visiting the website and after seeing its content on arrival, at least initially, that it belonged to or had the endorsement of the Complainant. Any disclaimer on the Respondent’s website is of no effect in pre-empting initial interest confusion.
The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 complainant’s 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 provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The Complainant has produced evidence that the Respondent’s website has hosted advertisements. The Respondent has produced a statement from Google that his estimated earnings from Google AdSense advertisements have totalled USD 35.90 over the past three years. Whilst this is a small sum, nevertheless it may reasonably be concluded that at least some visitors to the disputed domain name have been confused as to its possible endorsement by the Complainant and it is sufficient for a finding of use in bad faith under paragraph 4(b)(iv) of the Policy. In the Panel’s view, however, the small sum earned from advertisements is unlikely to reflect the primary purpose of the disputed domain name, which therefore more probably than not was acquired for a different primary purpose.
The Complainant’s cease and desist letter of December 10, 2014 was replied to by the Respondent on December 16, 2014, saying among other things, “If your client is interested in acquiring our domain we are open to an offer”. On March 11, 2015, in a further exchange, the Respondent effectively contradicted this by saying “honestly speaking when I registered wtalove.com I had many projects related to this domain and I never considered to sell it one day”. The Respondent continued (verbatim): “Looking at the registration costs, other expenses, time working on it and above all renounce to future plans and expansion I think that a honest and fair price for selling wtalove.com is $18,000”, which price the Respondent described on May 6, 2015 as “really cheap”.
The Respondent has produced a copy of later correspondence with the Complainant in January 2016, at the last moment before submitting his Response to the Center, in which he offered to sell the disputed domain name for USD 2,500 which would “just cover all the costs”.
Thus, the Respondent’s initial reply to the Complainant invited an offer, and after no offer materialised, his price fluctuated from a “really cheap” USD 18,000 to a last-moment willingness to accept USD 2,500. This early invitation of an offer and general stance undermine the Respondent’s statements about having “many projects” for the disputed domain name, “I’m a big fan of WTA that’s the reason I made the site”, and “I never considered to sell it one day”.
As the Respondent points out and therefore should have been aware, a number of entities world-wide are known legitimately as WTA or by names having those initials. Having regard to all the available evidence and submissions received, the Panel finds, on the balance of probabilities, that the Respondent acquired the disputed domain name primarily with a view to eventual sale for the best offer. As is commonly done, in the meantime the disputed domain name was filled with content that, in the Panel’s view, may have been intended to project an impression of legitimacy, and evidently was monetised, that is to say contracted to host advertisements in return for a share of the advertising revenue.
On the evidence and on the balance of probabilities the Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wtalove.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 28, 2016