WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Take-Two Interactive Software, Inc. and World Wrestling Entertainment, Inc. v. Daniel Hinkles
Case No. D2017-0994
1. The Parties
The Complainants are Take-Two Interactive Software, Inc. ("Take-Two") of New York, New York, United States of America ("United States") and World Wrestling Entertainment, Inc. ("WWE") of Stamford, Connecticut, United States, represented by Kelley Drye & Warren, LLP, United States (both together referred to as the "Complainant").
The Respondent is Daniel Hinkles of Dundee, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.
2. The Domain Name and Registrar
The disputed domain name <wwe2k.com> (the "Domain Name") is registered with 1&1 Internet SE (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. An automatic extension of the Response due date was granted until June 22, 2017 under paragraph 5(b) of the Rules. Several communications from the Respondent were received by the Center on May 29, 2017, June 19, 2017, June 23, 2017 and June 27, 2017. The Center notified the Parties the commencement of the panel appointment process on July 5, 2017. Additional communications were received from the Respondent on July 6, 2017 and July 18, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 18, 2017. 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
Take-Two is a publisher, developer and distributor of interactive entertainment, software, hardware and accessories. Take-Two is the owner of device and word marks that consist of the letter number combination "2K" (the "2K Mark") which has been registered in device form since May 10, 2005 and word form since June 4, 2013 (the latter having a first use in commerce of January 25, 2005). Take-Two provides its goods and services under the 2K Mark and has done so for a decade, including from its website at "www.2k.com".
WWE is an integrated media company that principally engages in the development, production and promotion of television programing, pay-per-view programing and live arena events featuring wrestling entertainment services, under the names "World Wrestling Entertainment" and "WWE". This includes the promotion of live shows and distribution of its programming in the United Kingdom, home of the Respondent. WWE is the owner of numerous word and device marks consisting of the letters "wwe" (the "WWE Mark"), registered from May 7, 2002 which WWE has continuously used in connection with its wrestling entertainment services and related goods since as early as that year.
On January 23, 2013, the day before the Domain Name was registered, it was publicly announced that Take−Two had acquired the license to produce and distributed WWE-related video games. As a result of the licensing partnership between Take-Two and WWE, Take-Two operates a website from the domain name <wwe.2k.com> and has produced a series of wrestling video games under the name "WWE2K".
The Domain Name <wwe2k.com> was registered by the Respondent on January 24, 2013 and redirects to a website (the "Respondent's Website") that purports to discuss professional wrestling under the tag-line 'World Wrestling Edutainment for the new millennium". It also includes the statement: "WWE2K is up for sale, if you would like to make an offer to purchase www.wwe2k.com please contact us, using the form below. We also have the twitter handle for @wwe2k to go with this website". The Respondent's Website does not appear to have any significant content however evidence in the Complaint is that prior to the commencement of this dispute the Respondent's Website contained some very limited referring to the WWE and wrestling more generally.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's WWE and 2K Marks;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the WWE and 2K Marks, having registered both these marks in the United States. The Domain Name is confusingly similar to the WWE and 2K Marks since it contains the entirety of the 2K and WWE Marks along with the generic Top-Level Domain ("gTLD") ".com".
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name and is not a licensee or otherwise authorized to use the WWE and 2K Marks. There is no evidence, since the Respondent registered the Domain Name, of the Respondent's 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 for a legitimate noncommercial purpose. The Domain Name uses the WWE and 2K Marks to redirect Internet users seeking the Complainant's websites to a website operated for the Respondent to promote its own wrestling-related content, indicating that the Respondent's intention is to create a false association with the Complainant, for its own commercial gain by increasing traffic and advertising and sponsorship revenue for the Respondent's Website.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered the day after WWE and Take-Two announced a partnership for Take-Two to create WWE-themed video games under the 2K Mark. Furthermore by reason of the Respondent's interest in the wrestling entertainment business, his knowledge of WWE and Take-Two can be inferred. By including the entirety of the WWE and 2K Marks in the Domain Name and creating a website at the Domain Name that promotes services that are the same as or similar to those offered on WWE's websites, the Respondent is seeking to create a false association with Complainant. The Respondent's bad faith is also evidenced by its offer to sell the Domain Name for a value exceeding out-of-pocket expenses to the highest bidding third party. It is well settled that an offer for sale at a value in excess of out of pocket expenses is prima facie evidence of bad faith.
The Response was filed on July 6, 2017, after the due date of June 22, 2017 for the Response. In the exercise of the Panel's discretion under 10(c) of the Rules the Panel will extend the deadline for the Response to this day to allow consideration of the Response.
The Respondent has studied the professional wrestling industry for over 2 decades and sought to register the Domain Name with the goal of publically analyzing modern wrestling history and building a community. The Respondent chose <wwe2k.com> because it is a well-documented fact that the wrestling industry went through a major boom period around the time of the millennium, with millions of viewers tuning into the various wrestling TV shows that made the year 2000 a logical place to start an analysis of modern wrestling history. Furthermore, at the turn of the century, when WWE was still known as the World Wrestling Federation ("WWF"), the Respondent would visit and actively participate on a website from the domain name <wwf2k.com> that discussed wrestling.
At the time the Respondent registered the Domain Name the Respondent was aware of rumours that Take-Two were looking to purchase the video game rights for WWE but at the time there was no way for the Respondent knowing that it would rebrand the WWE video game series as WWE2K.
In 2011 the Respondent created a video game entitled 'Wrestling Manager' and in 2014 had a dispute in which both the Respondent and WWE accused the other of copying the other's design. In 2015 the Respondent ran his first wrestling event. At the time WWE complained that he was using an image that they owned but it turned out that they did not hold any copyright in the image. Since the Respondent has registered the Domain Name he has released multiple video games in addition to Wrestling Manager (which was on sale from 2011-2016) including 5 Star Wrestling (published on the videogame system Playstation 3) and 5 Star Wrestling: ReGenesis on the videogame system Playstation 4. The Respondent also indicates that he promoted wrestling shows in September of 2015, January 2016 and January 2017 but did not promote them on the Respondent's Website.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the WWE and 2K Marks, having registrations for the WWE and 2K Marks as a trade mark in the United States.
The Domain Name consists of the the WWE and 2K Marks and the gTLD ".com", which may be disregarded for the purposes of comparison. As the Domain Name incorporates the WWE and 2K Marks in their entirety, the Panel finds that it is confusingly similar to both the WWE and 2K Marks. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the WWE and 2K Marks or a mark similar to the WWE and 2K Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
In the Response the Respondent states that it has registered and used the Domain Name with the goal of publically analysing modern wrestling history and building a community. He also states that he selected the Domain Name given the importance of events that occurred around the year 2000 in professional wrestling history.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services. The Respondent has provided no evidence, as opposed to assertions, as to its demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering. The only evidence before the Panel in support of the Respondent's claim as to setting up a website for analysing wrestling history is a single, two-paragraph post (now deleted) on the Respondent's Website summarising events in the "WWE" (then known as the "WWF") and competing wrestling promotion WCW that occurred in 1999. This is despite the fact that the Respondent has held the Domain Name for over four years. Rather the evidence in the Complaint, being a screen shot dated May 9, 2017, is that the Respondent has used the Domain Name to promote his wrestling promotion, a show in direct competition with the Complainant, which is not legitimate noncommercial use or a bona fide offering of goods and services.
Finally, the Panel notes that the Respondent's explanation for the registration and use of the Domain Name is inherently implausible. Even if the Respondent did wish to create a website with the goal of analysing modern wrestling history starting in 2000, there are numerous domain names that would fit this purpose. It would be an extraordinary co-incidence for a registrant with the Respondent's asserted purpose, to select a domain name that precisely contains the marks owned by the leading wrestling company and a well-known video game company (that commonly uses the 2K mark to describe their games) the day after the companies publically announced that they have entered into a partnership. Given that the Respondent creates wrestling video games and would have been aware of Take-Two's use of the 2K Mark to brand its video games the Panel finds that by far the most likely outcome is that the Respondent (who admits that he heard rumours that Take-Two were looking to purchase the video game rights for WWE) was fully aware of the possibility that a new video game under the title (or similar title) to WWE2K would be launched soon and registered the Domain Name in opportunistic anticipation of this occurring.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has provided negligible evidence of any demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services and indeed has used the Domain Name to promote wrestling shows in competition with the Complainant. Given the implausibility of the Respondent's assertions as to why the Domain Name was registered and the actual, commercial use the Domain Name has been put, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
(Policy, paragraph 4(b)).
For the reasons set out in section 6B above, the Panel finds that it is highly likely that the Respondent was aware of the Complainant, its reputation in the WWE and 2K Marks, and the likelihood that the Complainant would be launching a video game under the name WWE2K at the time the Respondent registered the Domain Name. The Respondent is a wrestling expert involved in the creation of wrestling video games. The Domain Name was registered a day after WWE and Take-Two announced their partnership to create new WWE-themed video games. Given the absence of any significant noncommercial use of the Domain Name by the Respondent in the 4 years since registration, it is highly unlikely that the Respondent chose to register the Domain Name unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and its WWE and 2K Marks.
The Respondent's Website has been used to promote the Respondent's wrestling shows, offered in direct competition to the Complainant. Furthermore the Respondent is a direct competitor to the Complainant in the world of wrestling video games and holds a domain name that precisely reflects the brand name that the Complainant's video games are sold under. The Panel finds that the Respondent's registration and use of the Domain Name is primarily for the purpose of disrupting the business of a competitor. Alternatively by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's WWE and 2K Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website or location or of a product or service on the Respondent's Website or location. As such the Panel finds that the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name, <wwe2k.com> be transferred to the Complainant Take-Two.
Date: July 21, 2017