2009-08-17 / English Premier League clubs win important ‘cyber squatting’ case

by Ian Blackshaw
 

Introductory Remarks

The Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO), a specialized agency of the UN based in Geneva, Switzerland, has recently delivered an important ruling in a ‘cyber squatting’ sports-related case brought by five leading English Premier League Football Clubs, including Manchester United, all of whom successfully claimed that their trademarks had been misused through the registration and commercial use of domain names incorporating them by an unassociated and unauthorized third party offering for sale so-called ‘official’ tickets to their matches.

To succeed in a ‘cyber squatting’ case, a Complainant is required to prove each of the following three conditions specified in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of 1999, namely that:

(i) the Disputed Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights; and

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

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The present case citation is:

Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd

And the reference is: WIPO Case No. D2009-0331

Factual Background

The background to this case is as follows:

The Complainants are Fulham Football Club (1987) Limited, Tottenham Hotspur Public Limited, West Ham United Football Club PLC, Manchester United Limited, and Liverpool Football Club and Athletic Grounds Limited.

The Respondent is Domains by Proxy, Inc./ Official Tickets Ltd., of United States of America.

The Complainants are all professional football clubs playing in the English Premier League. The Complainants have become widely known throughout the world through advertising and media coverage.

The Complainants are the owners of a number of trade marks registered in the United Kingdom, the European Union and the United States of America including, but not limited to:

FULHAM FC;

TOTTENHAM HOTSPUR;

WEST HAM UNITED;

MANCHESTER UNITED; and

LIVERPOOL FOOTBALL CLUB.

The Complainants own domain names which incorporate the Complainants’ registered trade marks. These include:

<fulhamfc.com>;

 <tottenhamhotspur.com>;

<westhamunited.co.uk>;

<manchesterunited .com>; and

<liverpoolfc.com>.

The Respondent is Domains by Proxy, Inc. / Official Tickets Ltd. of the United States of America.

The Disputed Domain Names were registered by Official Tickets Ltd. on October 24, 2007. The Disputed Domain Names resolve to websites selling tickets to the Complainants’ football matches and other events.

The Respondent is not affiliated with the Complainants, nor is it - in any way - endorsed by the Complainants as an authorised distributor of tickets to the Complainants’ football matches.

The Disputed Domain Names are:

<official-westham-tickets.com>;

<official-tottenham-tickets.com>;

<official-fulham-tickets.com>;

<official-manchester-tickets.com>; and

<official-liverpool-tickets.com>.

The Complainants’ Contentions

The Complainants contended that they have registered trade marks in their respective names; and that the Disputed Domain Names are identical or confusingly similar to the trade marks or service marks in which the Complainants have rights.

The Complainants supported their contention by reference to the fact, for example, that the Domain Names <official-westham-tickets.com> and <official-tottenham-tickets.com> are similar to the respective Complainant’s registered trade marks WEST HAM and TOTTENHAM.

The Complainants also argued that the addition of the generic terms “official” and “tickets” is not enough in law to distinguish the Disputed Domain Names from their registered trade marks. In other words, these terms are descriptive and not distinctive.

The Complainants also contended that the Respondent has no legitimate interests in respect of the Domain Names. The Complainants submitted that the Respondent is an unauthorized distributor and retailer of Premier League Tickets and that the Disputed Domain Names currently resolve to football ticket websites.

The Complainants further contended that the utilization of the fame and notoriety of the Complainants’ respective trade marks and branding to promote and sell football team tickets and other sporting events and concerts is not a bona fide offering of goods and services within the scope of paragraph 4(c)(i) of the Policy.

The Complainants also submitted that the Respondent is selling unauthorized tickets, and, furthermore, that tickets purchased through the websites in question cannot be verified as being legitimate. The Complainants also claimed that the generation of revenue from the utilization of the Complainants’ brand and mark in this manner does not constitute a legitimate non-commercial use of the Disputed Domain Names in accordance with the provisions of paragraph 4(c)(iii) of the Policy.

For these reasons, the Complainant claimed that the Respondent did not fulfill the requirements of paragraph 4(a)(ii) of the Policy.

The Complainants also contended that the Disputed Domain Names were registered and being used in bad faith. In support of this contention, the Complainants made reference to the fact that the Respondent was aware of the Complainants’ legitimate websites when registering the Disputed Domain Names.

The Complainants further argued that the Respondent purposefully registered the Disputed Domain Names to disrupt the Complainants’ businesses and subsequently to promote their own business by selling tickets to matches involving the Complainant clubs without authorization to do so. This, the Complainant claimed, constitutes behavior in accordance with paragraph 4(b)(iii) of the Policy.

The Complainants further submitted that the Respondent’s use of the Complainants’ registered trade marks, both in the Disputed Domain Names and throughout the websites to which the Disputed Domain Names resolve, combined with the use of the Complainants’ team colors, fonts, images, logos and the consistent reference to the term “official”, demonstrated  the intentional attempt on the part of the Respondent to attract Internet users to their website by creating a likelihood of confusion with the Complainants’ trade marks.

The Complainants also claimed that the Respondent did not satisfy the “bona fide reseller” test articulated by the panel in Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903.

The Complainants further argued that the Respondent was purposefully using a WhoIs privacy service to avoid detection and continue generating revenue without being identified. The Complainants submitted that the Respondent in the present proceedings is the same as the Respondent in the case of The Arsenal Football Club Public Limited Company v. Official Tickets Ltd, WIPO Case No. D2008-0842, and that the Respondent has utilized false and inaccurate registration information contrary to paragraph 2(a) of the Policy.

The Complainants further submitted that the Respondent purposefully registered the Disputed Domain Names to prevent the Complainants from reflecting their trade marks and has engaged in a pattern of such conduct in accordance with paragraph 4(b)(ii) of the Policy. The Complainants supported this contention by reference to the fact the Respondent has registered a series of domain names that wholly incorporate registered trade marks of which they are not the owner or licensee, and that the Respondent’s use of these sites to sell tickets to sporting events and concerts cannot be verified as authentic or legitimate.

The Complainants requested the Panel, in accordance with paragraph 4(i) of the Policy, for the reasons summarized above and more particularly set out in the Complaint, that the Disputed Domain Names <official-westham-ticktes.com>, <official-tottenham-tickets.com>, <official-fulham-tickets.com>, <official-manchester-tickets.com> and <official-liverpool-tickets.com> be transferred to the Complainants.

The Respondent

The Respondent did not reply to the Complainants’ contentions or take any other part in the proceedings.

The Findings of the Panel

The following are the grounds on which the Panel in the present case reached its Decision and found for the Complainants:

“If the Complainants are to succeed, they must prove each of the three elements referred to in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of 1999, namely that:

(i) the Disputed Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights; and

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

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) requires the Panel to:

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

If a Respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the Complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a Respondent’s failure to comply with the Rules (by failing to file a response), as the Panel considers appropriate.

The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of the three elements referred to in paragraph 4(a) of the Policy.

(i) Identical or Confusingly Similar

It is necessary to divide the Disputed Domain Names into two categories for the purposes of addressing whether paragraph 4(a)(i) of the Policy is satisfied.

The first category consists of the Disputed Domain Names <official-westham-tickets.com> and <official-tottenham-tickets.com>. The Complainants, West Ham United Football Club PLC and Tottenham Hotspur Public Limited, have respectively established that they have registered trade mark rights in WEST HAM and TOTTENHAM.

The Disputed Domain Names are not identical to the Complainants’ respective trade marks. The Panel is however satisfied that the Disputed Domain Names <official-westham-tickets.com> and <official-tottenham-tickets.com> are confusingly similar to the Complainants’ respective registered trade marks.

The basis for finding that the Disputed Domain Names are confusingly similar is that they incorporate the Complainants’ respective trade marks WEST HAM and TOTTENHAM in their entirety. The distinctive elements of the Disputed Domain Names are the names “West Ham” and “Tottenham”. As the Panel held in The Arsenal Football Club Public Limited Liability Company v. Official Tickets Ltd, WIPO Case No. D2008-0842, the words “official”, and “tickets” are generic, and do not reduce the confusing similarity between the Disputed Domain Name and the Complainant’s mark. Further, in this case the use of the words “official” and “tickets” if anything increases the likelihood of confusion, as both words are suggestive of one of the Complainants’ main business activities, namely the selling of “official tickets” to their respective matches.

The second category of Disputed Domain Names consists of <official-fulham-tickets.com>, <official-manchester-tickets.com> and <official-liverpool-tickets.com>. They can be distinguished from the first category on the basis that the Complainants’ trade marks are geographic terms and by the fact the Disputed Domain Names do not include the whole of the Complainants’ respective registered trade marks.

The Complainants have respectively registered trade mark rights in FULHAM FC, LIVERPOOL FC and MANCHESTER UNITED. There is also considerable evidence of the respective Complainants’ unregistered trade mark rights in the FULHAM, LIVERPOOL and MANCHESTER UNITED trade names or trade marks which are so well known and by such a large section of local and international communities, that when used in a football and sporting context, they have developed a secondary meaning which distinguishes their respective owners from the ordinary geographical reference of “Fulham”, “Liverpool” or “Manchester”.

The Disputed Domain Names in this category are not identical to the Complainants’ trade marks. However on balance the Panel considers that the Disputed Domain Names in this category are confusingly similar to the respective parties’ registered or unregistered marks. This is so in particular because of the unusually high degree of renown attaching to each of the marks and the likelihood that use of the respective Disputed Domain Names would lead people to mistakenly believe that these Disputed Domain Names are authorized by or associated with the respective Complainants. In the Panel’s view this is so even in the case of the <official-manchester-tickets.com> Disputed Domain Name which even though it does not incorporate the whole MANCHESTER UNITED mark or name would still be likely to be perceived by people as referring to tickets provided by this particular football club, in circumstances that it is one of the most well known football clubs in the world.

For the foregoing reasons the Panel concludes that the Disputed Domain Names in question are confusingly similar to the Complainants’ respective trade marks for the purposes of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

A Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to the Respondent of the dispute, use by the Respondent of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) Where the Respondent as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) Where the Respondent is making a legitimate non-commercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

In this case the Complainants have clearly made out a prima facie case that the Respondent has no rights or legitimate interests:

Paragraph 4(c)(i) of the Policy is apparently not satisfied here as, for example, the Complainants have not authorized the Respondent to use their trade marks or trade name rights whether in a Domain Name or otherwise.

There is no evidence that the Respondent is a legitimate or authorized reseller of tickets. In determining whether the Disputed Domain Names have been used in connection with a bona fide offering of goods or services, the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 are of use.

The Oki Data panel observed the following circumstances must be present for an offering of goods or services to be bona fide for the purposes of paragraph 4(c)(i) of the Policy:

(i) the respondent must actually be offering the complainant’s goods or services at issue;

(ii) the respondent must use the site to sell only the trade marked products; otherwise, the respondent could be using the trade mark to bait other internet users and then switch them to other goods;

(iii) the web site must accurately disclose the respondent’s relationship with trade mark owner;

(iv) the respondent must not be allowed to corner the market in domain names that reflect that mark.

In the present case it is evident from reviewing the content of the Respondent’s websites that the second of the above conditions is not met as the websites are being used to sell tickets to matches organized by other clubs and tickets to various other concerts and events. The third condition is also not met as the Disputed Domain Names improperly suggest that the reflected websites are official websites authorized to sell tickets. The consistent use of the word “official” throughout the Respondent’s websites is further likely to mislead Internet users, causing them to mistakenly believe that they are purchasing official tickets.

There is evidence that the Respondent has, in circumstances similar to this case, registered a series of domain names that wholly incorporate the registered trade marks of well known European football clubs and major sporting events. These include: JUVENTUS, WIMBLEDON, S.S. LAZIO, REAL MADRID, CHAMPIONS LEAGUE, SEVILLA FOOTBALL CLUB, SIX NATIONS, UEFA CUP, A.S ROMA, and THE OLYMPICS. Each of these Disputed Domain Names incorporates the words “official” and “tickets”, and each appears to be designed to mislead Internet users into believing that the websites to which the Domain Names resolve are operated or authorized by the owners of the relevant trade mark rights. The websites to which these Domain Names resolve are similarly used to sell unofficial tickets to sporting events and concerts and would appear to form part of a scheme by the Respondent designed to promote the Respondents’ online ticket store. The Panel finds that such a pattern of registration of domain names for the purposes of misleading Internet users in this way is not consistent with the bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

Paragraph 4(c)(ii) of the Policy is not satisfied as there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Names. It is instructive in this regard that the Respondent only registered the Disputed Domain Names in October 2007, when the Complainants trade marks were already extremely well known.

Neither is there any evidence that the Respondent has been making a non-commercial or fair use of the Disputed Domain Names, without intent for commercial gain.

The Respondent has not filed a Response to the Complaint, none of the grounds set out in paragraph 4(c) of the Policy are made out based on the evidence put before the Panel and all the circumstances point to the Respondent using the Disputed Domain Names to channel Internet traffic to its website where it sells unauthorized tickets to the Complainants’ football matches.

In all the circumstances the Panel therefore finds the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and as such the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

(iii) Registered and Used in Bad Faith

The Policy requires a complainant to prove both registration and use in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and used of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on respondent’s website or location.

The Panel accepts the Complainants’ contention that the Respondent is unauthorized to sell tickets to their football matches and is the Complainants’ competitor in the context of ticket sales. As the Panel has already noted, the Respondent has engaged in a pattern of registration of domain names incorporating trade marks in which the Respondent has no rights, combined with the generic words “official” and “tickets”. The Panel accepts the Complainants’ submission that, as in this case, these other domain names have been registered and used by the Respondent as a part of a scheme designed to promote the Respondent’s online ticket store, by misleading Internet users seeking to purchase the official tickets of the relevant football club or sporting organizations. For these reasons, the Panel finds that this pattern of conduct is indicative of bad faith on the part of the Respondent.

For the purposes of paragraph 4(b)(iv) of the Policy the Complainants contend that the Respondent has used the Disputed Domain Names in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement.

As noted, the Complainants have developed substantial reputations in their respective trade marks. The Panel cannot objectively reason why the Respondent would use the Complainants’ respective trade marks in the Disputed Domain Names in addition to the terms “official” and “tickets” for any other reason save as to create a likelihood of confusion amongst Internet users with the Complainants’ trade marks. The fact that the Disputed Domain Names resolve to web sites that contain similar colors, fonts, images and logos to those of the Complainants’ registered trade marks and contain the term “official” throughout while seeking to generate revenue through the sale of tickets to the Complainants football matches is likely to cause further confusion amongst Internet users with the Complainants’ trade marks. In all the circumstances it appears to the Panel that the Disputed Domain Names and the websites to which they resolve were intended to confuse people as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly the Disputed Domain Names were registered and used in bad faith under paragraph 4(a)(iii) of the Policy.

The Decision of the Panel

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names be transferred to the Complainants’ respectively on the following basis:

1. <official-fulham-tickets.com> to Fulham Football Club (1987) Limited;

2. <official-liverpool-tickets.com> to The Liverpool Football Club And Athletic Grounds Limited;

3. <official-manchester-tickets.com>to Manchester United Limited;

4. <official-tottenham-tickets.com> to Tottenham Hostpur Public Limited;

5. <official-westham-tickets.com> to West Ham United Football Club PLC.

Alistair Payne
Sole Panelist

Dated: May 12, 2009”

Concluding Remarks

This case is a classic one of ‘cyber squatting’ and the misuse of valuable trademarks as part of domain names registered and used for commercial gains by a third party with no legal entitlement or authorization to do so. The effect of such conduct is to cause confusion in the market place and mislead consumers seeking information on line of the services and products of the legitimate owners of the marks concerned.

The WIPO Arbitration and Mediation Center, as an accredited organization under the Uniform Domain Name Dispute Resolution Policy, offers a valuable service in resolving such disputes - not only in the sporting field but also in other business sectors -effectively, quickly and inexpensively since the introduction of this form of dispute resolution ten years ago.

 For more information, log onto: www.wipo.int.

Ian Blackshaw is an International Sports Lawyer and an Honorary Fellow of the Asser International Sports Law Centre. He is also a member of the WIPO Arbitration and Mediation Centre, based in Geneva, Switzerland, where he deals with, inter alia, domain name disputes. He is also the author of a new Book on ‘Sport, Mediation and Arbitration’, published by the TMC Asser Press and distributed by Cambridge University Press, and may be contacted by e-mail at ‘ian.blackshaw@orange.fr’.