The Panel is satisfied that the Complainant has rights in its "WORLD TRADE CENTER" and "WTC" service marks cited above. The original transfer of these rights from the Port Authority to the Complainant for mere 10 US$ might appear questionable. But according to one of the documents which the Respondent had referenced in the Response (http://www.ag.ny.gov/ the Office of the Attorney General of the State of New York ("OAG") has conducted an investigation into the 1986 transfer of rights from the Port Authority to the Complainant. These investigations resulted in a settlement agreement ("Assurance of Discontinuance") signed by the Complainant and the OAG on February 12, 2015, according to which the OAG discontinued all aspects of its investigation and agreed not to take further legal action against the Complainant (or any of its officers, directors, employees, subsidiaries, or affiliates) in relation to the 1986 transfer of rights. Based on this "Assurance of Discontinuance" it seems safe to assume that the Complainant actually owns the "WORLD TRADE CENTER" and "WTC" service marks cited above.
The location of the Complainant's marks, their date of registration (or first use), and the goods and/or services for which they are registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. The Respondent's reference to the USPTO's objections against the Complainant's attempt to protect the "WORLD TRADE CENTER" and "WTC" marks for selling apparel and other consumer items as well are therefore not relevant for this element of the UDRP, but will be discussed in connection with the additional "bad faith" requirement below.
The Complainant has, to the satisfaction of the Panel, shown that the following domain name are confusingly similar to the "WORLD TRADE CENTER" and "WTC" service marks in which the Complainant has rights within the meaning of paragraph 4(a)(i)of the Policy:
2WORLDTRADECENTER.COM, 2WORLDTRADECENTER.ORG, 2WTC.COM, 2WTC.ORG, 9-11WTC.COM, 911WTC.COM, FIVEWTC.COM, FOURWTC.COM, I-WTC.COM, INTERNETWTC.COM, LIVEWTC.COM, NEWYORKWORLDTRADECENTER.COM, NYCWTC.COM, NYCWTC.NET, ONLINEWTC.COM, OURWTC.COM, REMEMBERWORLDTRADECENTER.COM, REMEMBERWTC.COM, REMEMBERWTC.ORG, THEWTC.COM, THREEWTC.COM, TWOWORLDTRADECENTER.COM, TWOWORLDTRADECENTER.ORG, TWOWTC.COM, TWOWTC.ORG, VISITWTC.COM, W-T-C.NET, WEBWTC.COM, WORLDTRADECENTER2.COM, WORLDTRADECENTERATTACK.COM, WORLDTRADECENTERATTACK.ORG, WORLDTRADECENTERATTACKS.COM, WORLDTRADECENTERDVD.COM, WORLDTRADECENTERDVDS.COM, WORLDTRADECENTERFACTS.COM, WORLDTRADECENTERFILM.COM, WORLDTRADECENTERFILMS.COM, WORLDTRADECENTERFORUM.COM, WORLDTRADECENTERIMAGES.COM, WORLDTRADECENTERINFERNO.COM, WORLDTRADECENTERMEMORIAL.NET, WORLDTRADECENTERMEMORIALS.COM, WORLDTRADECENTERMOVIE.COM, WORLDTRADECENTERMOVIES.COM, WORLDTRADECENTERMUSEUM.ORG, WORLDTRADECENTERNEWS.COM, WORLDTRADECENTERSITE.COM, WORLDTRADECENTERSITE.INFO, WORLDTRADECENTERSITE.NET, WORLDTRADECENTERSITE.ORG, WORLDTRADECENTERTIMELINE.COM, WORLDTRADECENTERTOWER.COM, WORLDTRADECENTERTOWER.NET, WORLDTRADECENTERTOWER.ORG, WORLDTRADECENTERTOWERS.COM, WORLDTRADECENTERTOWERS.NET, WORLDTRADECENTERTOWERS.ORG, WORLDTRADECENTERTWO.COM, WORLDTRADECENTERVIDEO.COM, WORLDTRADECENTERVIDEOS.COM, WTC2.COM, WTCDAY.COM, WTCDISASTER.COM, WTCDVD.COM, WTCDVDS.COM, WTCFACTS.COM, WTCFILM.COM, WTCFORUM.COM, WTCHORROR.COM, WTCIMAGES.COM, WTCINFERNO.COM, WTCMEMORIAL.INFO, WTCMEMORIAL.NET, WTCMEMORIALS.COM, WTCNEWYORK.COM, WTCSITE.COM, WTCSITE.INFO, WTCSITE.NET, WTCTIMELINE.COM, WTCTIMES.COM, WTCTODAY.COM, WTCTOWER.COM, WTCTOWER.NET, WTCTOWERS.NET, WTCTV.COM, WTCVIDEOS.COM, WTCWEB.COM, WTCWEBSITE.COM, WTCWEBSITES.COM
Each of these domain names consists of one of the Complainant's marks (either "WORLDTRADECENTER" or "WTC", respectively) combined with a generic term, namely
ATTACK
ATTACKS
DAY
DISASTER
DVD
DVDS
FACTS
FILM
FILMS
FORUM
HORROR
I
IMAGES
INFERNO
INTERNET
LIVE
MEMORIAL
MEMORIALS
MOVIE
MOVIES
MUSEUM
NEWS
NEWYORK
NYC
ONLINE
OUR
REMEMBER
SITE
THE
TIMELINE
TIMES
TODAY
TOWER
TOWERS
TV
VIDEO
VIDEOS
VISIT
WEB or
WEBSITES, respectively.
The combination of either mark with the various numbers (e.g. 2WORLDTRADECENTER.COM, 2WTC.COM, TWOWTC.COM) is in line with the naming convention used for the various buildings on the World Trade Center site in New York City and therefore confusingly similar to the respective marks as well. The same applies to 9-11WTC.COM and 911WTC.COM, which combine the "WTC" mark with the reference to the September 11, 2001 date of the terrorist attack. Finally, the domain name W-T-C.NET is per se confusingly similar to the Complainant's "WTC" mark.
This reasoning does not apply, however, to domain name ZWTC.COM. Given the large number of other domain names which the Respondent has registered comprising the "WTC" mark, it may well be possible that the Respondent had the Complainant's "WTC" mark in mind when registering this domain name. But even if this was the case the Panel does not consider the terms "WTC" on the one hand and "ZWTC" (or "ZWTC.COM") on the other hand to be confusingly similar. In its Complaint, the Complainant has referred to the WIPO Case No. D2008-0792 (SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.), in which the panel had found that
"...similarity is established whenever a mark is incorporated in its entirety, regardless of other terms added to the domain name. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. That is because “the issue under the first factor is whether the letter string of the domain name is confusingly similar to the letter string of the trademark, devoid of marketplace factors. . . . It is an objective test that looks only at the mark and the domain name; it is not a subjective test that also looks at the mental reaction of internet users to the domain name.” Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. Thus, as the domain name incorporates the entirety of Complainant’s mark, it is sufficiently similar to be confusingly similar to that mark."
While this test -- i.e. merely asking whether the domain name incorporates the entirety of Complainant’s mark -- will be adequate in most cases, there are some cases for which, according to this Panel's view, it is too broad and would result in a finding of "confusingly similar" even though the mark is not recognizable as such within the domain name. Section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") explicitly mentions that a trademark may not be recognizable as such within a domain name if the relied-upon mark corresponds to a common term or phrase which is itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com). Comparing the mark "WTC" to the domain name "ZWTC.COM" is not as clear a case as the HEAT/THEATRE example used in the WIPO Overview. But neither the Complainant nor the Respondent has put forward any potential explanation for the meaning of "Z" in "ZWTC". According to common internet search engines, the term "ZWTC" seems to be primarily associated with Tacheng airport in China. Outside the context of these UDRP proceedings there would be no apparent reason to associate the phrase "ZWTC" with the Complainant's "WTC" mark, so that the Panel finds that the Complainant's mark and the domain name ZWTC.COM are neither identical nor confusingly similar (within the meaning of paragraph 4(a)(i)of the Policy). See Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587, for a similar decision regarding the trademark "ELLE" and the domain name "naturelle.com".
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