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

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

World Wrestling

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

Case No.

DTV 2001-0010

1. The Parties

The Complainant is

World Wrestling Federation Entertainment, Inc., a corporation organized

in the State of Delaware, United States of America (USA), with place of

business in Stamford, Connecticut, USA.

The Respondent is Michael

Rapuano, also known as Bobby Rogers, with address in Sunrise, Florida, USA.

2. The Domain Name and

Registrar

The disputed domain

names are <worldwrestlingfederation.tv>, <therock.tv>, <undertaker.tv>,

<stonecold.tv> and <austin316.tv>.

The Registration Authority

for the disputed domain names is dotTV Corporation, with business address

in Los Angeles, California, USA.

3. Procedural History

The essential procedural

history of the administrative proceeding is as follows:

(a) Complainant

initiated the proceeding by the filing of a complaint by e-mail received

by the WIPO Arbitration and Mediation Center ("WIPO") on April 4, 2001,

and by courier mail received by WIPO on April 9, 2001. Complainant paid

the requisite filing fees. On April 9, 2001, dotTV Corporation ("Registration

Authority") transmitted its Registrar Verification Response to WIPO

regarding the disputed domain names.

(b) On April 23,

2001, WIPO transmitted notification of the complaint and commencement

of the proceeding to Respondent via e-mail, telefax and courier mail.

Courier tracking information shows successful delivery of the package

transmitted by WIPO.

(c) On May 14,

2001, WIPO transmitted notification to Respondent of its default in responding

to the complaint via e-mail.

(d) On May 15, 2001,

WIPO invited the undersigned to serve as panelist in this administrative

proceeding, subject to receipt of an executed Statement of Acceptance

and Declaration of Impartiality and Independence ("Statement and

Declaration"). On May 15, 2001, the undersigned transmitted

by fax the executed Statement and Declaration to WIPO.

(e) On May 16, 2001,

Complainant and Respondent were notified by WIPO of the appointment of

the undersigned sole panelist as the Administrative Panel (the "Panel")

in this matter. WIPO notified the Panel that, absent exceptional circumstances,

it would be required to forward its decision to WIPO by May 29, 2001.

On, May 16, 2001, the Panel received an electronic file in this matter

by e-mail from WIPO. The Panel subsequently received a hard copy of the

file in this matter by courier mail from WIPO.

The Panel has not received

any requests from Complainant or Respondent regarding further submissions,

waivers or extensions of deadlines, and the Panel has not found it necessary

to request any further information from the parties (taking note of Respondent’s

default in responding to the complaint). The proceedings have been conducted

in English.

4. Factual Background

Complainant has registered

the word trademark and service mark "WORLD WRESTLING FEDERATION"

on the Principal Register of the United States Patent and Trademark Office

("USPTO") (reg. no. 1564148, dated November 7, 1989, covering

various merchandise, and reg. no. 1317318, dated January 29, 1985, covering

entertainment services, namely, "provision of sporting events such

as wrestling exhibitions for television"). Complaint, para. 13 &

Annex C.

Complainant has registered

the "WORLD WRESTLING FEDERATION" mark in countries outside the

United States. It has also registered abbreviated forms of the mark, including

with design elements, in the United States. Id., at para. 13 &

Annexes C & D.

Complainant maintains

an active commercial website at Internet address <www.wwf.com>, on

which it displays its "WORLD WRESTLING FEDERATION" mark. Id,

para. 13.

Complainant has registered

the word trademark and service mark "UNDERTAKER" on the Principal

Register of the USPTO (reg. no. 1755782, dated March 2, 1993, covering entertainment

services, namely, "live, filmed and televised appearances by a professional

wrestler/entertainer"; reg. no. 1729405, dated November 3, 1992; reg.

no. 1755482, dated March 2, 1992; reg. no. 1771513, dated May 18, 1993;

reg. no. 1980341, dated, June 18, 1996; reg. no. 2327493. dated March 14,

2000, and; reg. no. 1771405, dated May 18, 2001, each covering various merchandise).

Id., at para. 13 & Annex C.

Complainant maintains

an active commercial website at Internet address <www.undertaker.com>.

Id., para. 13.

Complainant has registered

the word trademark and service mark "AUSTIN 3:16" on the Principal

Register of the USPTO (reg. no. 2313120, dated February 1, 2000, covering

"entertainment services in the nature of live and filmed televised

performances rendered by a professional wrestler/entertainer"; reg.

no. 2299462, dated December 14, 1999, and; reg. no. 2299461, dated

December 14, 1999, each covering various merchandise). Id., para.

13 & Annex C.

Complainant uses the

term "THE ROCK" in connection with providing wrestling entertainment

services as the identifier for one of its principal actors. It uses the

term "THE ROCK" in connection with the promotion and sale of merchandise,

including T-shirts, jackets, posters, toys and videocassettes. Complainant

maintains an active commercial website at Internet address <www.therock.com>.

Complainant has four pending applications at the USPTO for registration

of the term "THE ROCK". Id., para. 13.

Complainant uses the

term "STONE COLD" in connection with providing wrestling entertainment

services as the identifier for one of its principal actors. It uses the

term "STONE COLD" in connection with the promotion and sale of

merchandise, including T-shirts, jackets, posters, toys and videocassettes.

Complainant maintains an active commercial website at Internet address <www.stonecold.com>.

Complainant has two pending applications at the USPTO for registration of

the term "STONE COLD". Id., para. 13.

According to the Registration

Authority Verification Response, the disputed domain names <worldwrestlingfederation.tv>,

<stonecold.tv>, <therock.tv>, <undertaker.tv> and <austin316.tv>

are registered in the name of Respondent. According to a WHOIS database

query response from the Registration Authority to Complainant, each of the

disputed domain names was registered on June 21, 2000 (e-mail from whois@www.tv

to Complainant, dated March 5, 2001, Complaint, Annex A).

Respondent has not

made use of any of the disputed domain names in connection with maintaining

an active website.

By e-mail and certified

mail dated January 10, 2001, Complainant (through its counsel) sent a cease

and desist and transfer demand to Respondent regarding the disputed domain

names (with the exception of <austin316.tv>). By e-mail dated January 13, 2001,

Respondent notified Complainant’s counsel that he intended to transfer the

disputed domain names to it. Respondent repeated this intention in subsequent

correspondence to Complainant’s counsel. Respondent did not, however, respond

to follow-up correspondence or transfer the names. Complaint, Annexes F

& I.

On January 16, 2001,

the Miami Herald newspaper website (www.miamiherald.com) posted a report

regarding this dispute and related matters (headed "Rogers in WWF’s

sites again"). According to this news report, Respondent is a professional

wrestler and "chief event coordinator" of "Future of Wrestling,

Inc." In that report, Respondent is quoted as follows:

"Those sites

were never put up. However, I do intend to put up sites now. My plans

for therock.tv are a big picture of a crack rock with the circle and slash

through it, telling kids to ‘JUST SAY NO’ to therock because crack kills.

"There will

be a link to my undertaker.tv site on there which will have a picture

of an undertaker with a coffin reminding youths if they do say yes to

therock they may get a visit from the undertaker someday. My undertaker

site will have a link to my stonecold.tv site – urging the public one

more time to go stonecold sober and get help for any drug or alcohol addictions

they might have. All are public service announcements that in no way infringe

any copyright laws or trademark laws."

The Service Agreement

in effect between Respondent and dotTV Corporation subjects Respondent to

dotTV’s dispute settlement policy, the Uniform Domain Name Dispute Resolution

Policy, as adopted by ICANN on August 26, 1999, and with implementing documents

approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution

Policy (the "Policy") requires that domain name registrants submit

to a mandatory administrative proceeding conducted by an approved dispute

resolution service provider, of which WIPO is one, regarding allegations

of abusive domain name registration (Policy, para. 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts

that it has rights in the trademarks and service marks "WORLD WRESTLING

FEDERATION", "UNDERTAKER" and "AUSTIN 3:16" based

on use in commence and as evidenced by registration of those marks at the

USPTO. Complainant asserts that it has common law rights in the trademarks

and service marks "THE ROCK" and "STONE COLD" based

on extensive use in commerce. Complainant states that it has applied to

register "THE ROCK" and "STONE COLD" at the USPTO. See

Factual Background, supra.

Complainant indicates

that the disputed domain names are identical or confusingly similar to marks

in which it has rights.

Complainant states

that Respondent has no rights or legitimate interests in the disputed domain

names. Respondent has made no use of the marks in connection with active

websites.

Complainant alleges

that Respondent registered and has used the dispute domain names in bad

faith. Complainant states that Respondent’s "warehousing" of the

names, his registration of the names with clear knowledge of Complainant’s

marks, his participation in a business that competes with Complainant’s

business, and his use of this dispute to draw attention to his competing

business, all constitute evidence of bad faith registration and use.

Complainant requests

the Panel to direct the Registration Authority to transfer the disputed

domain names to it.

B. Respondent

Respondent did not

reply to Complainant’s contentions.

6. Discussion and Findings

The Uniform Domain

Name Dispute Resolution Policy (the "Policy") adopted by the Internet

Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999,

(with implementing documents approved on October 24, 1999), is

addressed to resolving disputes concerning allegations of abusive domain

name registration. The Panel will confine itself to making determinations

necessary to resolve this administrative proceeding.

It is essential to

dispute resolution proceedings that fundamental due process requirements

be met. Such requirements include that a respondent have notice of proceedings

that may substantially affect its rights. The Policy, and the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish

procedures intended to assure that respondents are given adequate notice

of proceedings commenced against them, and a reasonable opportunity to respond

(see, e.g., para. 2(a), Rules).

In this case, the Panel

is satisfied that WIPO took all steps reasonably necessary to notify the

Respondent of the filing of the complaint and initiation of these proceedings,

and that the failure of the Respondent to furnish a reply is not due to

any omission by WIPO. There is ample evidence in the form of air courier

tracking records and the sending of e-mail that Respondent was notified

of the complaint and commencement of the proceedings (see Procedural

History, supra).

Paragraph 4(a) of the

Policy sets forth three elements that must be established by a complainant

to merit a finding that a respondent has engaged in abusive domain name

registration, and to obtain relief. These elements are that:

(i) Respondent’s

domain name is identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and

(ii) Respondent

has no rights or legitimate interests in respect of the domain name;

and

(iii) Respondent’s

domain name has been registered and is being used in bad faith.

Each of the aforesaid

three elements must be proved by a complainant to warrant relief.

Because the Respondent

has defaulted in providing a response to the allegations of Complainant,

the Panel is directed to decide this administrative proceeding on the basis

of the complaint (Rules, para. 14(a)), and certain factual conclusions may

be drawn by the Panel on the basis of Complainant’s undisputed representations

(id., para. 15(a)).

Complainant is the holder

of trademark registrations at the USPTO for the trademarks and service marks

"WORLD WRESTLING FEDERATION", "UNDERTAKER" and "AUSTIN

3:16".(Footnote 1) Registration

on the Principal Register establishes a presumption of rights in the marks that

Respondent has not rebutted. The Panel determines that Complainant has rights

in the marks "WORLD WRESTLING FEDERATION", "UNDERTAKER"

and "AUSTIN 3:16".

Complainant’s registration

of the "WORLD WRESTLING FEDERATION", "UNDERTAKER" and

"AUSTIN 3:16" marks preceded Respondent’s registration of the

disputed domain names <worldwrestlingfederation.tv>, <undertaker.tv"

and <austin316.tv>.

Complainant asserts common

law rights in the marks "THE ROCK" and "STONE COLD".(Footnote

2) U.S. federal trademark law provides for the establishment of common law

rights in trademarks and service marks based on use and distinctiveness. (Footnote

3)

"Rock" is a term

with numerous meanings in the English language. As a noun, "rock"

may refer, inter alia, to a concreted mass of stony material. As a verb,

it may refer, inter alia, to moving back and forth. As an adjective,

it may refer, inter alia, to a type of popular music.(Footnote

4) Complainant’s asserted mark, "THE ROCK", is formed by

combining the definite article "THE" with this common term in the

English language.

"STONE COLD"

also combines two common terms in the English language. As a noun, "stone"

may refer, inter alia, to a piece of mineral material. As a verb,

it may refer, inter alia, to the act of hurling a rock with the intention

to cause injury. As a noun, "cold" may refer, inter alia,

to an illness. As an adjective, "cold" may refer, inter alia,

to low temperature.

Complainant has asserted

extensive use of the terms "THE ROCK" and "STONE COLD"

in commerce in the United States. In order to demonstrate that these terms

are distinctive and therefore serve as marks, Complainant may demonstrate

that they are used suggestively. Alternatively, it may present substantial

evidence that the public associates the terms with Complainant’s goods or

services.

The Panel notes that

Complainant is not attempting to use the term "rock", or "the

rock", in the sense of generic identification of a thing. Complainant

could not acquire rights in the term "rock" in reference to compressed

stone.

Complainant has not

made any suggestion regarding whether its claimed marks are suggestive.

Complainant’s has indicated

that the terms "THE ROCK" and "STONE COLD" are very

well known among the public as being associated with characters involved

in providing wrestling entertainment services, and with merchandise tied-in

to those characters. Complainant has referred to web sites it maintains

at the Internet addresses <therock.com> and <stonecold.com>.

A study by the Panel of these websites indicates that Complainant offers

goods and services under the terms "THE ROCK" and "STONE

COLD" at these Internet locations.

Complainant has made a

prima facie showing that the terms "THE ROCK" and "STONE COLD"

each has acquired common law status as service marks and trademarks in the field

of wrestling entertainment and related merchandising. Based principally on Respondent’s

acknowledgement of Complainant’s pre-existing rights in these marks,(Footnote

5) the Panel determines that Complainant rights in the marks arose prior

to Respondent’s registration of the disputed domain names. Respondent has failed

to provide any evidence to rebut Complainant’s prima facie showing of rights

in these marks. The Panel determines that for purposes of resolving this dispute,

Complainant has demonstrated rights in the marks "THE ROCK" and "STONE

COLD" in the field of wrestling entertainment services and related merchandising.

The disputed domain

names <worldwrestlingfederation.tv>, <undertaker.tv>, <therock.tv>,

<stonecold.tv> and <austin316.tv> are essentially identical

to Complainant’s marks. The addition of the country code top level domain

(ccTLD) designation <.tv> does not serve to distinguish those names

from Complainant’s marks since ".tv" is a common Internet address

identifier that is not specifically associated with Respondent.

The Panel determines

that the disputed domain names are identical to trademarks and service marks

in which Complainant has rights. Complainant has established the first of

the three elements necessary to proving abusive domain name registration

and use.

Respondent has asserted

no rights or legitimate interests in the disputed domain names, and the

Panel can detect none on the evidence before it. Respondent’s statement

to a news organization that he intends to use the domain names to convey

an anti-drug and alcohol message as a public service does not establish

legitimate non-commercial or fair use of the names.

Complainant has demonstrated

that Respondent has no rights or legitimate interests in the disputed domain

names, and has thus established the second element needed to prove abusive

domain name registration and use.

The Policy indicates

that certain circumstances may, "in particular but without limitation,"

be evidence of bad faith (Policy, para. 4(b)). Among these circumstances

are: (1) that a respondent has registered the domain name "in

order to prevent the owner of the trademark or service mark from reflecting

the mark in a corresponding domain name, provided that [the respondent has]

engaged in a pattern of such conduct" (id., para. 4(b)(ii));

(2) that a respondent has "registered the domain name primarily for

the purpose of disrupting the business of a competitor" (id.,

para. 4(b)(iii)); and (3) that a respondent "by using the domain name,

… [has] intentionally attempted to attract, for commercial gain, Internet

users to [its] web site or other on-line location, by creating a likelihood

of confusion with the complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of [respondent’s] web site or location of a

product or service on [its] web site or location" (id., para.

4(b)(iv)).

Respondent has registered

five domain names, each incorporating a trademark or service mark of Complainant.

As such, Respondent has prevented Complainant from registering its marks

in corresponding <.tv> domain names. The registration of five names

incorporating Complainant’s marks is sufficient to constitute a pattern

of conduct, and to evidence bad faith within the meaning of paragraph 4(b)(ii)

of the Policy.

Respondent registered

the disputed domain names as a means to attract media attention to himself

and to a business enterprise competing with Complainant. In this sense,

Respondent registered the disputed domain names to disrupt the business

of a competitor, and has evidenced bad faith within the meaning of paragraph

4(b)(iii) of the Policy.

Although Respondent

has not used the disputed domain names to establish active websites, he

was demonstrably familiar with Complainant’s marks, and worked in the same

field in which Complainant uses its marks. Absent some plausible explanation

for his conduct, the Panel would be prepared to infer that Respondent registered

the disputed domain names with the intention to use those names for commercial

gain by attracting Internet users to his own websites by creating confusion

as to Complainant’s sponsorship of or affiliation with those sites. However,

since the Panel has already determined that Respondent acted in bad faith,

it will not make a specific finding on this ground.

The Panel determines

that Respondent registered and used the disputed domain names in bad faith

within the meaning of paragraph 4(b) of the Policy. Complainant has thus

established the third and final element necessary to demonstrate abusive

domain name registration and use. The Panel will therefore direct the Registration

Authority to transfer the disputed domain names to Complainant.

7. Decision

Based on its finding

that the Respondent, Michael Rapuano aka Bobby Rogers, has engaged in abusive

registration and use of the domain names <worldwrestlingfederation.tv>,

<therock.tv>, <undertaker.tv>, <stonecold.tv> and <austin316.tv>

within the meaning of paragraph 4(a) of the Policy, the Panel orders

that the domain names <worldwrestlingfederation.tv>, <therock.tv>,

<undertaker.tv>, <stonecold.tv> and <austin316.tv> be

transferred to the Complainant, World Wrestling Federation Entertainment,

Inc.

Frederick

M. Abbott

Sole Panelist

Dated: May

23, 2001

Footnotes:

1. Complainant submitted evidence of trademark registrations at the USPTO in

the name of Titan Sports, Inc. Complainant has indicated that Titan Sports,

Inc., is the former name of World Wrestling Federation Entertainment, Inc. Complaint,

para. 13. (back to text)

2. Mere application for registration of a mark does not establish any presumption

of rights in that mark. (back to text)

3. 15 USCS § 1125(a) (2001).

(back to text)

4. See Merriam-Webster

On-Line Collegiate Dictionary, at http://www.m-w.com/cgi-bin/dictionary. (back

to text)

5. Complainant did not assert a date at which it considered itself to have

established common law rights in the marks. (back to text)

More cases by this complainant

• World Wrestling Federation Entertainment, Inc. v. Aaron Rift — D2000-1499 · wwfwcw.com · Transfer · 29 Dec 2000
• World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles — D2000-1306 · wwfauction.com, wwfauction.net · Transfer · 24 Jan 2001
• World Wrestling Federation Entertainment, Inc. v. M. de Rooij — D2000-0290 · iwwf.com, wwfshop.com · Transfer · 20 Jun 2000
• World Wrestling Federation Entertainment, Inc. v. Matthew Bessette — D2000-0256 · wwwstonecold.com, wwwwwf.com · Transfer · 07 Jun 2000
• World Wrestling Federation Entertainment, Inc. v. Michael Bosman — D1999-0001 · worldwrestlingfederation.com · Transfer · 18 Jan 2000