Islj 2009 3-4 - TMC Asser Instituut

tickets.com>, ,
and 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
and .
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 TOT-
TENHAM.
The Disputed Domain Names are not identical to the
Complainants’ respective trade marks. The Panel is however satisfied
that the Disputed Domain Names
and 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 ,
and
. 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
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
O P I N I O N
2009/3-4 137