World Wide Fund for Nature wrestles for domain name
The outcome of World Wide Fund for Nature v World Wrestling Federation Entertainment (Chancery Division, Jacob J, 10/8/01, revised 1/10/01) should serve as a warning to others as to the problems that might arise through name sharing - even if the activities and business interests of the respective parties are entirely different.
The World Wide Fund for Nature (the Fund) was founded in 1961. The Fund had used the initials 'WWF' for a number of years and these, together with its famous Giant Panda logo, had become recognized worldwide as representative of the Fund and its work. In 1979 World Wrestling Federation Entertainment (the Federation), a live wrestling entertainment promoter, started using the same initials.
At first this was not seen as a problem as the Federation's activities were at that time mostly limited to the United States, whereas the Fund had become the world's largest private international nature organization.
The relationship between the two began to turn sour when the Federation's business interests started to expand. It further deteriorated when, in 1992, the Federation and one of its officers were indicted on charges for illegal possession of anabolic steroids with intent to supply, and conspiracy to defraud the US Food & Drug Administration. In addition, the Fund became aware of press articles in which involvement of Federation wrestlers and staff in serious criminal activities were alleged (involving drugs, violence, paedophilia and rape).
The Fund was concerned about the impact that any confusion or association between the two parties would have on its own image and fundraising activities. So, in 1994, the two parties entered into a contract in which the Federation agreed to "refrain from using…the initials [WWF] whether in printed or written or other visual form in any country of the world in or for the purposes or in connection with its business."
At first, the Federation complied with the agreement. However, in 1997, it adopted the web address www.wwf.com and increasingly began using the initials. As a result of this, the Fund sued for enforcement of the contract, one of the main points of issue being the scope of restraint in relation to whether or not the Federation was legally within its rights to use the web address. The court ruled in the Fund's favour, declaring that it had a legitimate interest in restricting the Federation's use of the initials to protect its own fundraising and merchandising activities.
The Federation claimed that the parties were not of equal bargaining power and therefore should not be bound by the agreement. The court rejected this argument as a detailed examination of the relative financial strengths of the two parties was considered irrelevant to the case.
Jacob concluded that the restraint was enforceable and that, since the Federation had had the benefit of an agreement, it should be held to its side of the bargain. He also decided that the contract's definition of 'initials' should cover both upper and lower case initials, meaning that it precluded the Federation's use, or registration of, the domain 'wwf.com'. He added that the Federation could have asked for permission to use a 'wwf' internet address when negotiating the contract in the first place, but had not done so.
The Federation has appealed the judgment.
Louisa Albertini, Field Fisher Waterhouse, London
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