Decision for dispute CAC-UDRP-101033

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns registrations for the phrase "WORLD TRADE CENTER" as a service mark in numerous jurisdictions throughout the world, including the United States service mark registration no. 1,469,489, first used in commerce in March 1961, application date September 26, 1986, registered on December 15, 1987. This service mark is protected for "association services - namely, fostering and promoting world trade and international business relationships" in international class 42.

The Complainant also owns registrations for the acronym "WTC" as a service mark in numerous jurisdictions throughout the world, including the United States service mark registration no. 1,749,086, first used in commerce on April 17, 1961, application date May 21, 1992, registered on January 26, 1993. This service mark is also protected for "association services; namely, fostering and promoting world trade and international business relationships" in international class 42.

The Complainant is a not-for-profit corporation, incorporated in the US State of Delaware on August 22, 1969. The Complainant describes itself as an organization that stimulates trade and investment opportunities for commercial property developers, economic development agencies, and international businesses looking to connect globally and prosper locally. It serves as an 'international ecosystem' of global connections, iconic properties, and integrated trade services under the umbrella of its brands "World Trade Center" and "WTC". "World Trade Center" and "WTC" branded properties and trade service organizations are located in more than 90 countries.

The majority of the disputed domain names were registered on various dates between 2003 and 2014. The earliest domain name registrations (nycwtc.com, worldtradecentermemorials.com) were made on September 11, 2001, i.e. on the day on which Al-Qaeda terrorists crashed two planes into two towers of the World Trade Center complex in New York City.

The websites associated with each of the disputed domain names resolve to substantially similar pay-per-click advertising websites that display "sponsored links" and thereby generate advertising revenue for the Respondent.

All of the Whois records for the disputed domain names state identically, "This Digital Address Is Not For Sale" in the ‘registrant organization’ section.

No business relationship exists between the Complainant and the Respondent. The Respondent does not have, and never has had, permission to use the Complainant's marks. On or about July 14, 2014, and July 16, 2014, the Complainant's counsel sent cease and desist notices regarding the disputed domain names via email to the Respondent. The emails explained that the domain names infringed on the Complainant's "World Trade Center" and "WTC" marks and requested that the Respondent cease and desist use of the domains and transfer the domains to the Complainant. The Complainant’s counsel received a reply from the Respondent, wherein the Respondent stated: “We believe that you should contact The Port Authority of New York, The Durst Organization, and Silverstein Properties, Inc. regarding their agreement with us.” Upon receiving this communication the Complainant confirmed with its licensee, Silverstein Properties, Inc., that no one by the Respondent's name was or currently is associated with Silverstein Properties or licensed to use the "World Trade Center" and "WTC" marks. On July 16, 2014, the Complainant’s counsel responded and requested that the Respondent provide information on his alleged “agreement” with The Port Authority of New York, The Durst Organization, and Silverstein Properties, Inc. On July 28, 2014, the Respondent replied to this request and stated:

"We own the largest collection extant (600+) of "digital addresses" related to the events of September 11, 2001. And not one of them is for sale or has ever been for sale. Nor will any of them ever be for sale!
But we did make one exception.
Your contact is:
[name redacted]
The Durst Organization
[phone number redacted]
Regarding a "Non-disclosure Agreement" effective April 23, 2012."

Within these proceedings und the UDRP neither the Respondent nor the Complainant has provided any additional information on such an alleged agreement between the Respondent and The Durst Organization.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s "WORLD TRADE CENTER" or "WTC" marks, respectively, because each of the 91 disputed domain names incorporates either one of these marks. The numbers and/or letters and/or generic terms added at the beginning and/or end of each of the domain names only result in minor differences, which, according to the Complainant, are not enough to overcome a finding of confusing similarity.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names. None of the webpages associated with the disputed domain names demonstrate a bona fide offering of goods and services, because they are merely pay-per-click sites that post links to third party offerings. Nor can it be said that demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services have been made, because the Respondent has owned many of the Disputed Domain Names for many years and has never used the disputed domain names in connection with a bona fide offering of goods or services. Second, there is no evidence that the Respondent is commonly known by any of the disputed domain names. Third, the Respondent does not proffer any legitimate non-commercial use for the Disputed Domain Names because the websites resolve to pay-per-click sites that exist merely to generate revenue when internet users click on sponsored links.

The Complainant finally contends that the disputed domain names were registered and are being used in bad faith, namely because the Respondent registered the disputed domain names to prevent the Complainant from reflecting its marks in corresponding domain names, and that the registration of multiple domain names involving the Complainant's marks constitutes a pattern of bad faith conduct in this regard. The Complainant also argues that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent's pay-per-click sites by creating a likelihood of confusion with the Complainant's marks.


RESPONDENT:

The Respondent contends that he has rights and/or legitimate interest in the disputed domain names because he makes legitimate noncommercial or fair use of the domain names, without intent for commercial gain, by operating non-profit websites used to commemorate and memorialize the events of September 11, 2001. The Respondent also argues that the Complainant has failed to meet the required standard of proof in this regard.

The Respondent further contends that the disputed domain names have not been registered and used in bad faith, primarily because the Complainant's trade mark registration was made in bad faith, and also because the Complainant has failed to meet the required standard of proof in this regard. The Respondent particularly refers to various press reports discussing the fact that in 1986 the original owner of the "World Trade Center" and "WTC" marks, the Port Authority of New York and New Jersey, had sold its rights in these marks to the Complainant for merely 10 US$. This transaction was criticized because at that time a retiring executive of the Port Authority, Mr Guy Tozzoli, effectively controlled the Complainant. The Complainant subsequently earned millions of Dollars from licensing the "World Trade Center" and "WTC" marks, and Mr Tozzoli himself received significant payments from the Complainant (in 2011, Mr Tozzoli's last year as president of the Complainant, he allegedly received 626,000 US$ for working an average of one hour per week).

The Respondent also refers to press reports about a decision of the US Patent and Trademark Office (USPTO), which had refused a trademark application by the Complainant to protect the "World Trade Center" and "WTC" marks for selling apparel and other consumer items. The USPTO had based its refusal on the position that the Complainant's marks are incapable of functioning as trademarks for apparel since customers identify the "World Trade Center" with the tragedy of September 11, 2001 – not with any particular manufacturer of clothing. The USPTO examiner also wrote: "The practical import of permitting the applied-for mark to proceed to registration is that each family member, friend and member of the public at large seeking to produce goods like those attached hereto, which have become commonplace in efforts to remember the events of 9/11/01 and the associated tragic loss of life, will be prohibited from doing so due to applicant's exclusive rights to the wording in connection with those goods." According to the press reports, the Complainant has appealed this USPTO decisions. The Panel is not aware of the current status of these appeal proceedings.

The Respondent finally believes that that the complaint was brought in bad faith, namely in an attempt at Reverse Domain Name Hijacking.

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/pdfs/WTCA_AOD.PDF), 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".

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names within the meaning of paragraph 4(a)(ii)of the Policy.

The Complainant has successfully made out a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. The Respondent has stated in his Response that he has rights and/or legitimate interest in the disputed domain names because he makes legitimate noncommercial or fair use of the domain names, without intent for commercial gain, by operating non-profit websites used to commemorate and memorialize the events of September 11, 2001. This allegation was, however, not supported by any more detailed explanations as to the precise nature of such use, and the Respondent has not provided any evidence in this regard.

The Panel therefore relies on the screenshots of the websites operated under the disputed domain names, which the Complainant has provided as an Annex to the Complaint. These screenshots show that all disputed domain names have been used for typical pay-per-click sites which display advertisements for third party offerings, and thereby generate revenue for the Respondent when internet users click on the sponsored links that are displayed on the site. The domain names are therefore evidently not, as the Respondent claims, used for operating non-profit websites used to commemorate and memorialize the events of September 11, 2001. The Respondent's actual use for pure pay-per-click advertising sites cannot confer rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the disputed domain names.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii)of the Policy (with the possible exception of ZWTC.COM, which does not need further investigation because this domain name does not meet the first requirement of the UDRP, see above).

It is undisputed between the parties that the Respondent had the Complainant's trademark licensee, the "World Trade Center" or "WTC" complex in New York City, in mind when registering the disputed domain names.

Given the large number of disputed domain names the Respondent has engaged in a pattern of conduct to register domain names in order to prevent the Complainant from reflecting its mark in the corresponding domain names, which constitutes bad faith under Paragraph 4(b)(ii) of the Policy (cf. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, finding that the registration of 15 domain names incorporating the complainant’s mark was an obvious pattern of bad faith registrations).

Given the Respondent's use of the disputed domain names for pay-per-click advertising websites, the Panel also finds that by using the domain names the Respondent has intentionally attempted to attract, for commercial gain, internet users to advertising websites, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of these web sites, which also constitutes bad faith under Paragraph 4(b)(iv) of the Policy

The USPTO proceedings relating to the Complainant's attempt to protect the "WORLD TRADE CENTER" and "WTC" marks for selling apparel and other consumer items are not relevant for these UDRP proceedings. The service marks on which the Complainant primarily relies are protected for "association services; namely, fostering and promoting world trade and international business relationships" in international class 42. The Panel has no reason to doubt that for these services the terms "WORLD TRADE CENTER" and "WTC" can be protected as a service mark, and in fact are registered as such a mark for the Complainant. Had the Respondent used the disputed domain names to actually commemorate and memorialize the events of September 11, 2001, such "descriptive" use would likely have avoided the verdict of bad faith registration and use. But, as discussed above, the Respondent's use of the disputed domain names was not for these purposes.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Based on the reasoning above, the Complainant has demonstrated that all three requirements of Paragraph 4(a) of the Policy are met for the following domain names, so that the Panel orders them to be transferred:

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.

For ZWTC.COM the first requirement is not met, so that the Complaint is rejected in this regard. The Panel has no reason, however, to consider the Complaint regarding this domain name as an attempt of Reverse Domain Name Hijacking.