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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

World Wrestling Entertainment, Inc. v. DIR Enterprises, LLC

Case No. D2006-1605

 

1. The Parties

The Complainant is World Wrestling Entertainment, Inc., Stamford, Connecticut, United States of America, represented by Stacy L. Papachristos, United States of America.

The Respondent is DIR Enterprises, LLC, Owings Mills, Maryland, United States of America, represented by Whiteford, Taylor & Preston, United States of America.

 

2. The Domain Names and Registrar

The six disputed Domain Names are as follows:

<eddieguerrero.com>

<eddyguerrero.com>

<smackdownmagazine.com>

<wwebackstage.com>

<wwecanada.com>

<wwemagazine.com>.

Each is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2006. On December 20, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names at issue. On December 20, 2006, 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 for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on January 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2007. The Response was filed with the Center on January 31, 2007.

Both parties have submitted supplemental filings. The Complainant submitted a Reply dated February 7, 2007, and the Respondent submitted a Response to Complainant’s Reply on February 13, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 15, 2007. 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

The Complainant World Wrestling Entertainment, Inc. is a Delaware corporation listed on the New York Stock Exchange. It is a leading promoter of live and televised “professional wrestling entertainment” events in the United States and other countries. The Complainant publishes related magazines and websites, and it sells products such as video recordings of wrestling matches, athletic clothing, toys, posters, and books.

The Complainant’s 2005 and 2006 Annual Reports indicate that it earns hundreds of millions of dollars in annual revenues and reaches an audience of several million fans, chiefly through television, digital media, and websites. According to information found in its 2006 Annual Report or on its website, the Complainant claims a total of 1.7 million attendees annually at its numerous live events and seventeen million unique visitors each month to its website at “www.wwe.com.” It produces five hours of original television programming per week, including the “Friday Night SmackDown” show. The Complainant’s monthly and special pay-per-view televised events range from 300,000 to nearly 1 million “buys” each. Its television programming is distributed in more than 130 countries, and much of it is reproduced for sale on DVDs and other digital media. The Complainant expends substantial sums to promote its marks, including those at issue in this proceeding.

Known since the early 1980s as the World Wrestling Federation (“WWF”), the Complainant issued a press release on May 6, 2002, announcing that it was changing its corporate name and “re-branding” its products and services under the current name and the initials “WWE.” According to the Complainant’s press release and its 2003 Annual Report, the change was prompted by an English court ruling in favor of the World Wildlife Fund, restricting the Complainant’s ability to use its WWF mark outside the United States. Shortly before this announcement, in the period from March through early May 2002, the Complainant registered some 32 domain names containing the initials “WWE,” including <wwewrestlemania.com>, <wwecorp.com>, and <wweshop.com>. Many of these new domain names are identical to domain names long used by the Complainant, except that they incorporate the initials “WWE” in place of “WWF.”

In anticipation of the upcoming name change, on April 4, 2002, the Complainant filed several United States trademark applications for WORLD WRESTLING ENTERTAINMENT and related marks, including a new variation of its “scratch logo” (two stylized capital letters “W”, with the former stylized “F” removed).

Rumors of the impending name change appeared on wrestling websites in April and early May, 2002. Printouts of several such online articles and postings are annexed to the Complaint and the Complainant’s supplemental “Reply” filing. For example, the May 3, 2002 edition of the “Ross Report,” a wrestling newsletter published on the Complainant’s former “www.wwf.com” website, uses the World Wrestling Entertainment name. This was discussed in a “Newsline” report dated May 4, 2002 that appeared at “www.1wrestling.com” and a May 4, 2002 posting on the wrestling website “www.lordsofpain.net.” The May 5, 2002 “Newsline” included a report from a reader that an individual named Duff had registered several domain names in March 2002, including <worldwrestlingentertainment.com>, which were later transferred to the Complainant.

On May 5, 2002, the Complainant launched its website at “www.wwe.com,” incorporating most of the content that formerly appeared on its website at “www.wwf.com.” The Complainant also added links or redirects from the former website to the new one. Website references to “WWF” were changed at that time to “WWE.” The Complainant also began using “WWE” in advertising televised matches, and it has since published WWE Magazine.

Both before and after the name change, the Complainant has promoted certain wrestling events under the name SMACKDOWN or SMACK DOWN. The Complainant has registered the domain name <smackdown.com>, which redirects visitors to its website at “www.wwe.com.” According to a WWE press release, the Complainant also published SMACKDOWN Magazine until July 2006, when it was replaced with WWE Magazine. The Complaint asserts that the Complainant and its predecessor have used SMACKDOWN as the name of a weekly two-hour television show since at least April 1999.

One of the better-known WWF / WWE wrestling champions was Mexican-born Eduardo Gory Guerrero Llanes, whose “ring name” was EDDIE GUERRERO. Mr. Guerrero died in November 2005, but the Complainant continues to sell video recordings and other memorabilia of his career on its website at “www.wwe.com” and through other channels.

In addition to claiming hundreds of “foreign registrations” not listed in the Complaint, the Complainant owns the following registered United States and Canadian trademarks that are relevant to this proceeding:

MARK	TYPE	REG. NUMBER	REG. DATE	APP. DATE	FIRST USE IN COMMERCE
WWE	Service Mark (entertainment)	U.S. 2772683	Oct. 7, 2003	May 7, 2002	May 6, 2002
WWE	Trademark (posters, media, toys, etc.)	U.S. 3056074	Jan. 31, 2006	May 15, 2002	May 6, 2002
WWE	Trademark and Service Mark	Can. TMA609412	May 5, 2004	June 13, 2002	May 6, 2002
EDDIE GUERRERO (with his consent)	Service Mark (entertainment)	U.S. 2966483	July 12, 2005	Oct. 28, 2003	Jan. 31, 2000
EDDIE GUERRERO (with his consent)	Trademark (toys, games, etc.)	U.S. 3149523	Sep. 26, 2006	Apr. 20, 2004	Sep. 30, 2002
SMACKDOWN	Trademark (posters, media, toys, etc.)	U.S. 2928460	Mar. 1, 2005	Mar. 2, 2001	Apr. 29, 1999
SMACK DOWN	Trademark (clothing)	U.S. 2941520	Apr. 19, 2005	Mar. 5, 2001	May 1, 2002

According to the online database operated by the Maryland Department of Assessments and Taxation, the Respondent DIR Enterprises LLC (listed at the same address given in the registration of the Domain Names and in the Response in this proceeding) is an active limited liability company formed or first registered in Maryland on August 17, 2004. Herman B. Rosenthal is shown as the organizer of the company, but this is the name of a prominent Baltimore attorney with the law firm that now represents the Respondent in this proceeding, not necessarily a member of the limited liability company. Materials submitted with the Response identify only one member of the Respondent limited liability company, Daniel I. Rosenthal. His initials, DIR, may be reflected in the Respondent’s name, DIR Enterprises, LLC. The Maryland business entity database shows that two companies named DIR Enterprises, Inc. were formerly registered in Maryland but that those registrations were forfeited in 1994 and 2004, respectively. There is no evidence in the record of this proceeding indicating if the more recent of these corporations was the entity that initially registered the Domain Names and subsequently transferred them to the Respondent.

The Registrar’s WHOIS database indicates that the Domain Names were created on the following dates:

<eddieguerrero.com> June 10, 2001

<eddyguerrero.com> June 10, 2001

<smackdownmagazine.com> October 24, 2003

<wwebackstage.com> May 5, 2002

<wwecanada.com> May 5, 2002

<wwemagazine.com> May 5, 2002.

All of the Domain Names were created before the formation (or at least before the Maryland registration) of the Respondent limited liability company. However, all of the Domain Names are currently registered to the Respondent, indicating that at some point since August 17, 2004, the Respondent evidently acquired the Domain Names and changed the name of the registrant. It appears from the Response that a principal of the Respondent limited liability company was involved in the original registration of the Domain Names. The Response repeatedly (and confusingly) refers to the “Respondent” not as the limited liability company that is the current registered owner of the Domain Names, but rather as an unnamed male individual who registered the Domain Names on the dates mentioned above, which appear to antedate the formation of the Respondent company. For example, as the Response asserts, “Respondent registered the ‘WWE’ domain names in question on May 5, 2002,” “Respondent has been a life-long fan of professional wrestling,” “the websites have offered a venue for him to communicate with other fans.”

The three Domain Names incorporating the initials “WWE” were all registered on May 5, 2002, the day that the Complainant launched its website at “www.wwe.com.” The Respondent claims that it was not aware of the Complainant’s name change at that time. (Presumably, the Response refers to the lack of awareness of the individual or entity that initially registered those Domain Names, since it does not appear that the Respondent limited liability company existed at that time).

The Domain Names <eddieguerrero.com>, <eddyguerrero.com>, <smackdownmagazine.com>, <wwebackstage.com>, and <wwemagazine.com> all currently resolve to a website headed “DIR Enterprises presents . . . WRESTLING BACKSTAGE.” Apart from displaying some third-party advertising links, the website promotes two published manuals for sale, for $10 each: “How To Get Backstage To Any Wrestling Event” and “Wrestling Ring Plans” (the latter explaining how a reader can build his own wrestling ring). A disclaimer at the bottom of the home page reads, “This page is in no way affiliated with World Wrestling Entertainment and its subsidiaries,” followed by a link to the Complainant’s website at “www.wwe.com.”

The Domain Name <wwecanada.com> currently resolves to a website that is essentially identical, except that it is headed, “DIR Enterprises presents . . . WRESTLING BACKSTAGE CANADA” and displays an image of the Canadian flag.

The Panel is unable to view earlier versions of the websites to which the Domain Names resolve, because in each instance the Respondent has inserted a robots.txt file on the website that signals its preference to exclude web crawlers such as those used by the Internet Archive (see http://web.archive.org/collections/web/faqs.html#exclusions). Thus, there is no available evidence, such as a copyright notice or “About Us” page on earlier versions of the websites, indicating the person or entity that operated the websites before the Respondent company was formed in 2004. In any event, the Respondent does not name any prior registrant or any prior use of the Domain Names other than to resolve to the websites described above.

Without expressly identifying him, the Response appears to refer to a principal of the limited liability company in characterizing the “Respondent” and its commercial websites as follows:

“Respondent has been a life-long fan of professional wrestling and, through these websites, wanted to share information with other fans. These websites directly or indirectly (by forwarding to other websites owned by Respondent) offered to sell information of interest to wrestling fans. The information included how someone attending a wrestling match could get backstage and plans on how to build a wrestling ring. * * * While Respondent has not realized any financial success from this, the websites have offered a venue for him to communicate with other fans.”

The attached Affidavit of Daniel I. Rosenthal, “a member of DIR Enterprises, LLC,” suggests that Daniel I. Rosenthal is the person of whom this paragraph speaks. The Affidavit refers interchangeably to Rosenthal and the “Respondent” in describing events in 2002, more than two years before the Respondent limited liability company was actually formed or registered in Maryland.

The Complainant furnishes evidence, which the Respondent does not dispute, that the metatags associated with at least some of the Domain Names (words or phrases supplied by the Respondent to help search engines classify its websites) include the Complainant’s trademarks WWE and SMACKDOWN, among others.

On May 4, 2006, counsel for the Complainant, reportedly unaware of the other Domain Names at issue, sent a cease-and-desist letter to the Respondent demanding transfer of the Domain Name <wwemagazine.com>. Telephone conversations followed, both before and after the commencement of this proceeding, although the parties in their initial and supplemental filings dispute the number and content of these conversations. The Complainant states that the Respondent demanded $10,000 to transfer that Domain Name. The Respondent acknowledges only that this sum was mentioned in connection with its initial attempt “to negotiate a reasonable compromise of the matter in good faith, taking into account the positions of the parties.” The Respondent asserts that it subsequently contacted the Complainant and suggested “alternative ways of resolving the dispute that would include merely reimbursing Respondent for the cost for the registration fees associated with the domain names and allowing Respondent the right to purchase preferred seating at local wrestling matches.” No settlement was achieved.

The Respondent also asserts that Daniel I. Rosenthal, a member of DIR Enterprises, LLC, received an “unsolicited email” much earlier, in 2002, offering to purchase the Domain Name <wwecanada.com> “for a few hundred dollars.” As recounted in the Rosenthal Affidavit, “Respondent declined the offer.” Mr. Rosenthal states that he determined from the email headers that the email, which he believes was sent by a “tfurgi” at a Yahoo! or Hotmail domain, “originated from one of Complainant’s computers.” The Complainant challenges these assertions as undocumented, and the Respondent acknowledges that it cannot produce a printout of the 2002 email in question.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to its registered WWE, SMACKDOWN, SMACK DOWN, and EDDIE GUERRERO trademarks, and that the Respondent has no rights or legitimate interests in using these marks in the Domain Names.

The Complainant asserts that the Domain Names were registered and used in bad faith, in an effort to mislead Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks. The Complainant notes that its subsequently registered SMACKDOWN, SMACK DOWN, and EDDIE GUERRERO marks were all in use before the registration of the similar Domain Names. The Complainant’s registered WWE marks do not show first use in commerce until May 6, 2002, the day of the Complainant’s press release concerning its name change. This was a day after the three Domain Names beginning with the initials “WWE” were registered on May 5, 2002. But the Complainant argues that those Domain Names were likely selected in bad faith, with an awareness that the Complainant would soon adopt the WWE mark, pointing to its May 5, 2002 website launch, its earlier trademark applications and domain name registrations, and the fact that the impending name change was already being discussed on wrestling websites.

The Complainant finds further evidence of bad faith in the Respondent’s registration of multiple Domain Names, all targeting the Complainant’s marks, and the Respondent’s use of the Complainant’s marks in metatags associated with the Respondent’s websites. The Complainant also cites the Respondent’s offer to transfer one of the Domain Names to the Complainant for $10,000.

Denying that it approached the Respondent in 2002, with an offer to purchase another of the Domain Names, the Complainant also questions the relevance of this allegation. The Complainant similarly dismisses the fine-print disclaimer of affiliation with the Complainant at the bottom of the home page on the Respondent’s websites, which does not serve to avoid confusion in searching for websites associated with the Complainant. The Complainant argues that the disclaimer and the links to the Complainant’s websites simply reinforce the conclusion that the Respondent is well aware of the Complainant and its marks.

B. Respondent

The Respondent does not expressly address the issue of confusing similarity. The Respondent addresses the issue of rights and legitimate interests indirectly, at best. The Response lists six other domain names registered by third parties that also begin with the initials “WWE,” including <wwewrestling.com> and <wweinc.com>. The Response also refers to the “Respondent’s” life-long interest in professional wrestling and a desire to share and sell information of interest to other wrestling fans as the bases for its legitimate interest in the Domain Names.

The Response denies bad faith and asserts that the “Respondent” (presumably referring to the Respondent’s principal or predecessor in interest) was unaware of the Complainant’s name change to “WWE” and of the Complainant’s trademark applications for SMACKDOWN and SMACK DOWN at the time the relevant Domain Names were registered. The Respondent points out that its three “WWE” Domain Names were registered before the Complainant announced its name change, established the WWE mark, or filed trademark applications. The Respondent also observes that the Domain Names <eddieguerrero.com> and <eddyguerrero.com> were registered before the Complainant applied for or obtained its registered EDDIE GUERRERO marks. Because of this timing, the Respondent argues that it cannot be found to have acted in bad faith by attempting to trade on the goodwill associated with the Complainant’s not-yet-established marks.

The Respondent suggests that the Complainant’s “surreptitious” acquisition of domain names in early 2002 indicates that it was keeping the imminent WWF-WWE name change secret, which is incompatible with its assertion that the Respondent must have known of it.

Defending its use of the Complainant’s marks in metatags associated with the Respondent’s websites, the Respondent states that these represent only a few of its numerous metatags. According to the Respondent, these are all included to help the Respondent reach an audience of persons interested in professional wrestling and therefore likely to be interested in the Respondent’s information about backstage activities and access and the possibility of building a local wrestling ring.

The Respondent points to its website disclaimer of affiliation with the Complainant as a sign of good faith, noting that the size and placement of the disclaimer are similar to those of legal notices displayed on the Complainant’s websites.

The Respondent argues that the Panel should apply the doctrine of laches to dismiss the Complaint, since the Complaint was brought three to six years after the Domain Names were registered.

The Respondent asks as well for a finding that the Complaint represents an attempt at reverse domain name hijacking, essentially because the Complainant’s arguments concerning the Respondent’s bad faith lack merit.

6. Supplemental Filings

The Complainant submitted a “Reply” to the Response, to correct “misleading factual statements” in the Response and to respond to the allegation of reverse domain name hijacking. The Respondent submitted a “Response” to this Reply, disputing the facts and reasserting laches and reverse domain name hijacking.

The Rules do not explicitly provide for supplemental filings in a Policy proceeding, and the Respondent argues that the Panel should not consider the Complainant’s supplemental filing, or at least not beyond responding on the issue of reverse domain name hijacking.

Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.” Therefore, UDRP Panels are reluctant to encourage delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.

Each of the parties here submitted a single supplemental filing with additional evidence, as well as debating the reverse domain name hijacking issue. The Panel accepts these supplemental filings as part of the record and takes account of all the evidence and arguments submitted.

 

7. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the Domain Name has been registered and is being used in bad faith.

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably owns the registered WWE, SMACKDOWN, SMACK DOWN, and EDDIE GUERRERO trademarks. One of these marks is included in its entirety in each of five of the Domain Names.

The addition of the generic English words “magazine” and “backstage” in three of the Domain Names, and the name of the country “Canada” in a fourth, do not avoid confusion with the Complainant’s marks. In fact, since the Complainant has published magazines called WWE Magazine and SMACKDOWN Magazine, organizes hundreds of live wrestling events annually with backstage activities, and operates in Canada as well as the United States, these particular additions actually increase the likelihood of confusion. See, e.g., Lilly ICOS LLC v. Cialis Pillz, WIPO Case No. D2005-0063, and cases cited therein (combining apparently relevant words such as “pillz,” “drug,” or “online” with the trademarked name of a prescription drug heightens rather than lessens the likelihood of confusion as to source).

The last Domain Name, <eddyguerrero.com>, differs by two letters from the Complainant’s EDDIE GUERRERO trademark but duplicates it phonetically and appears to represent a misspelled or alternate version of Mr. Guerrero’s first name, “Eddie.”

For purposes of paragraph 4(a)(i) of the Policy, it is immaterial when the Complainant acquired the trademark rights at issue. It suffices that the Complainant has such rights at the time of the proceeding.

Thus, the Panel finds as follows:

The Domain Names <eddieguerrero.com> and <eddyguerrero.com> are confusingly similar to the Complainant’s EDDY GUERRERO trademark.

The Domain Name <smackdownmagazine.com> is confusingly similar to the Complainant’s SMACKDOWN and SMACK DOWN trademarks.

The Domain Names <wwebackstage.com>, <wwecanada.com>, and <wwemagazine.com> are confusingly similar to the Complainant’s WWE trademarks.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(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 Response characterizes the “Respondent” (most likely referring to Mr. Daniel I. Rosenthal) as a “life-long fan of professional wrestling” who wants to “share information with other fans” and to “sell information of interest to wrestling fans,” specifically tips on gaining backstage access to wrestling events and building a local wrestling ring. The Respondent acknowledges a commercial interest in using the Domain Names for its websites, and in fact the websites currently do nothing more than advertise the Respondent’s two wrestling-related manuals for sale, furnish links to the Complainant’s websites, and display unrelated third-party advertising links (presumably to generate click-through advertising revenues). The Respondent does not claim that it is known by any of the Domain Names or that it uses them for noncommercial “fair use” purposes without intent for commercial gain. The Respondent asserts that it legitimately offers informative manuals for sale to wrestling fans, and the Panel finds no reason to disagree. But nothing in the record indicates that the Respondent labels its business or products with names corresponding to the Domain Names.

Even with two rounds of pleadings in this proceeding, the Respondent has never actually given a reason for choosing the six Domain Names. A review of the record and the Respondent’s websites does not indicate that the Respondent has rights or legitimate interests in any of the Domain Names. And the fact that other parties have used the initials “WWE” at the beginning of their domain names does not prove that the Respondent itself has a legitimate interest in Domain Names beginning “WWE.”

The Complainant plausibly infers an intent on the part of the Respondent to mislead Internet users seeking the Complainant’s websites, as discussed further below. The Respondent has not rebutted this presumption with evidence of an alternative motivation. Indeed, the Respondent concedes that it placed metatags on its websites that include several of the Complainant’s trademarks, not denying that the effect is to make the Respondent’s websites appear in search results based on queries including the Complainant’s marks. The use of the Domain Names to mislead Internet users for commercial gain does not constitute use “in connection with a bona fide offering of goods or services.” See, e.g., Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use that intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services”).

The Panel concludes that the Complainant has established the second element of the Policy Complaint with respect to each of the Domain Names.

C. Registered and Used in Bad Faith

The Complainant alleges that the Respondent registered and used the Domain Names in bad faith as described in paragraph 4(b)(iv) of the Policy:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 Respondent does not actually deny that the Domain Names were chosen to attract Internet users interested in the Complainant’s wrestling events, personalities, publications, and related products and services. The Respondent offers no alternative reason for registering six Domain Names incorporating the Complainant’s marks and then adding these marks, as well as others owned by the Complainant, to the metatags associated with the Respondent’s websites. The Panel does not consider it probable that these choices were random or coincidental. The probability is, rather, that the Respondent selected the Domain Names in a deliberate effort to trade on the Complainant’s fame, using names associated with the Complainant by millions of wrestling fans.

The Respondent argues that the Domain Names could not have been registered in bad faith, in terms of Policy, paragraph 4(b)(iv), because the Complainant has not established that it owned relevant marks at the time the Domain Names were registered. According to the Respondent, there could not have been an intent to cause a likelihood of confusion with the Complainant’s marks, because the marks did not yet exist. This argument is not persuasive in the circumstances of this proceeding.

The Complainant’s registered EDDIE GUERRERO service mark shows first use by the Complainant on January 31, 2000, roughly a year and a half before the Domain Names <eddieguerrero.com> and <eddyguerrero.com> were registered on June 10, 2001. The Respondent contends that this date is suspect, because a later date of first use, in September 2001, is shown on the Complainant’s trademark registration for goods branded with the EDDIE GUERRERO mark. But there is nothing implausible about using the mark first for entertainment services and later for one or more classes of goods. It is undisputed that the “ring name” EDDIE GUERRERO was familiar to millions of wrestling fans, and associated with the Complainant, by June 2001, even though the mark was not registered until July 2005. Indeed, the Respondent does not deny an awareness of the EDDIE GUERRERO mark at the time the two relevant Domain Names were registered, arguing only that the mark was not yet the subject of a trademark application at that time.

The Complainant did not furnish extensive support for its contention that it possessed common-law rights in the EDDIE GUERRERO mark by June 2001. However, there is sufficient evidence in the record, on the Complainant’s website, and in the Complainant’s Annual Reports to establish that (a) Mr. Guerrero and his ring name were heavily promoted in connection with the Complainant’s live and televised events at that time and (b) those promotions reached an audience of millions.

In light of these facts, the Respondent’s failure to offer a legitimate reason for registering two Domain Names based on the famous EDDIE GUERRERO ring name, and the Respondent’s repeated practice of registering Domain Names (and using metatags) targeting the Complainant’s marks, the Panel finds that the Domain Names <eddieguerrero.com> and <eddyguerrero.com> were registered and used in bad faith for the purposes of the Policy, paragraph 4(b)(iv).

The Respondent similarly does not deny awareness of the Complainant’s SMACKDOWN or SMACK DOWN marks. According to the trademark registrations, the former was first used in commerce on April 29, 1999, and the latter on May 1, 2002. The Domain Name <smackdownmagazine.com> was registered later, in October 2003. Although it appears that the Complainant did not begin publishing SMACKDOWN Magazine until after that date, the mark was heavily advertised as the name of a weekly television program and related products for more than four years before the Domain Name was registered, as claimed by the Complainant and confirmed in its Annual Reports. The Complainant applied for the two trademark registrations in March 2001, more than two years before the Domain Name was registered.

The extent of publicity and the size of the Complainant’s audience persuade the Panel that the Complainant had likely acquired enforceable common-law rights in at least the SMACKDOWN mark by October 2003, when the Domain Name was registered.

It is highly unlikely that the Respondent (or rather its principal, who is characterized as a life-long professional wrestling fan) was unaware of these marks at that time. Once again, the Respondent has not offered any reason for choosing this Domain Name, nor has it refuted the inference that the Domain Name was registered opportunistically to take advantage of the fame of the SMACKDOWN mark associated with many of the Complainant’s wrestling events and products. The Panel finds, therefore, that the Domain Name <smackdownmagazine.com> was registered and used in bad faith.

The Complainant’s WWE marks, by contrast, could not have acquired common-law trademark protection by May 5, 2002, when the Domain Names <wwebackstage.com>, <wwecanada.com>, and <wwemagazine.com> were registered. The Complainant does not even claim first use of these marks until May 6, 2002, when it publicly announced its name change from “WWF” to “WWE.” The Complainant filed an application to register the first of its WWE marks a day later, on May 7, 2002. As the Respondent observes, quoting General Growth Properties, Inc. Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845 (“General Growth Properties”), “as a general matter, bad faith is not likely to be found when a Complainant relies on a trademark that did not exist at the time a disputed domain name is registered.”

However, the decision in General Growth Properties goes on to observe, citing prior Policy decisions, that there are exceptional circumstances that warrant a finding of bad faith for purposes of the Policy even when the complainant’s mark has not yet been established. General Growth Properties illustrates one such exception. The panel in that proceeding ordered the transfer of two domain names identical to the name of a new shopping mall. The mall owners had not yet acquired trademark rights, but their plans to construct a shopping mall with that name were widely publicized. The first of the disputed domain names was registered, by a resident of the same city, on the day that construction began. The panel in General Growth Properties found that the respondent had knowledge of the name of the shopping mall and “has not convincingly explained why he registered the domain name <provotownecentre.com> at the same time that the mall of the same name was announced and construction commenced.” See also Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320 (noting that the circumstances of bad faith listed in Policy, paragraph 4(b) are not exclusive, the panel found bad faith where the respondent had knowledge of the complainant’s reputation, exclusive casino license, and new business name, even though the complainant had not yet applied for trademark registration); Madrid 2012, A.A. v. Scott Martin-MadridMan Websites, WIPO Case No. 2003-0598 (bad-faith effort to “hinder” the organizers of the bid to host the 2012 Summer Olympics in Madrid, by registering the disputed domain name following extensive publicity and just two days before the organizers applied for a trademark registration for MADRID 2012).

The Respondent, on the other hand, cites The Mills Limited Partnership v. Michael G. Miller, WIPO Case No. D2000-1577, to argue that there can be no finding of bad faith if the Respondent was simply “cleverly prescient” in choosing to register the Domain Names, before the Complainant had acquired trademark rights. In The Mills Limited Partnership, the disputed domain names were registered long before the complainant’s shopping mall project was finally approved and the complainant took steps to establish trademark rights in the name of the mall; the respondent gambled at a very early stage that a project with that name “would mature into a viable commercial enterprise.”

Here, by contrast, advance publicity (some of it on the Complainant’s own website) and the launch of the Complainant’s new website signaled to wrestling fans that the Complainant was about to re-brand its established and lucrative business by changing one letter in its famous WWF mark. The Complainant did so the day after the three “WWE” Domain Names were registered, filing an application for trademark registration one day after that. As a devotee of professional wrestling, it is reasonable to assume that the Respondent’s principal or predecessor was aware of the impending name change when the three “WWE” Domain Names were registered on May 5, 2002. What is not plausible is any notion that the registration of these Domain Names the day before the Complainant’s announcement was purely coincidental. The Respondent has not offered an alternative explanation to rebut the inference that the intention was to take commercial advantage of the Complainant’s new name, which those interested in professional wrestling had every reason to believe would quickly become as recognizable as the former WWF mark.

The Respondent’s assertions concerning the Complainant’s “surreptitious” efforts to obtain domain names and its secrecy concerning the name change are not persuasive. Whatever the Complainant’s intentions, its plans were publicly revealed before the name change, by an article published on the Complainant’s main website as well as other sources. Two days later, that website redirected visitors to a website with the new name -- on the same day that the three “WWE” Domain Names were registered. There was no effective secrecy by that time, and publicity is more likely than coincidence as an explanation for the timing of the Domain Name registrations.

Thus, the Panel concludes that the facts in this proceeding more closely resemble those of General Growth Properties, Kangwon Land, Inc., and Madrid 2012 than those of The Mills Limited Partnership. The Panel finds it more probable than not that the Respondent was aware of the impending name change and sought to trade on the valuable reputation that was likely soon to be associated with the Complainant’s new name, as it was with the old one.

Even if paragraph 4(b)(iv) of the Policy appears to contemplate the likelihood of confusion with an established (rather than merely announced) mark, the circumstances listed in paragraph 4(b) are expressly non-exclusive. The Panel concludes that an attempt to trade on the reputation of the Complainant as extended to its new name is not a good-faith reason to register and use confusingly similar Domain Names. The Panel accordingly finds that the Respondent registered and used the Domain Names <wwebackstage.com>, <wwecanada.com>, and <wwemagazine.com> in bad faith for purposes of the Policy.

The Complainant also alludes to the Respondent’s offer to transfer one of the Domain Names, <wwemagazine.com>, for $10,000 as further evidence of bad faith. However, these settlement discussions took place some four years after the registration of the Domain Name in question. The Respondent says that “but for this dispute” it would have no interest in selling any of the Domain Names. The Respondent argues that the Complainant has not met its burden under paragraph 4(b)(i)) of the Policy to establish that this Domain Name or any of the others was registered “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 [its] documented out-of-pocket costs directly related to the domain name.” The Respondent used the Domain Names for a website selling its informational manuals and did not approach the Complainant over the course of the years since the Domain Names were registered. Therefore, the Panel is inclined to credit the Respondent’s denial and agree with its argument that the Complainant failed to establish that the prospect of such a sale was the “primary purpose” for registering any of the Domain Names. There is sufficient evidence of the Respondent’s bad faith on other grounds, as discussed above.

The Respondent argues that its website disclaimer of affiliation with the Complainant demonstrates its good faith. The disclaimer, like the Respondent’s website links to at least two of the Complainant’s websites, certainly confirms the Respondent’s awareness of the Complainant, its websites, and its marks. The disclaimer does nothing to avoid initial confusion, however, when an Internet user types an address in a browser or queries a search engine to locate material posted by the Complainant. The fine-print disclaimer on the website does not prevent the Respondent from achieving its presumed purpose of diverting to its wrestling websites Internet users who are interested in the Complainant’s more famous events, performers, and products. The website disclaimer does not militate against the findings of bad faith discussed above.

 

8. Laches

The parties are both located in the United States, where courts recognize the doctrine of laches (undue delay in asserting a legal claim). However, the Panel concludes that the equitable defense of laches does not properly apply to this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4^th ed. 2005) §31:10, p. 31-35 and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this is not apposite to injunctive relief in a trademark action that seeks to avoid confusion among customers in the future).

Therefore, the Panel will not withhold a Policy decision in favor of the Complainant on the ground that the Complainant failed to seek transfer of the Domain Names more promptly.

 

9. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

Paragraph 15(e) of the Rules provides as follows:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

The Rules do not provide for monetary remedies or specific relief in such a case, so the utility of such a finding to the Respondent is questionable.

In any event, as the Panel concludes that the Complaint is well founded, there can be no finding of reverse domain name hijacking.

 

10. Decision

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, <eddieguerrero.com>, <eddyguerrero.com>, <smackdownmagazine.com>, <wwebackstage.com>, <wwecanada.com>, and <wwemagazine.com> be transferred to the Complainant.

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W. Scott Blackmer
Sole Panelist

Dated: March 5, 2007