Islj 2009 3-4 - TMC Asser Instituut

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:
;
;
;
; and
.
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:
;
;
;
; and
.
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
and 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 ,