Islj 2009 3-4 - TMC Asser Instituut

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. to Fulham Football Club (1987)
Limited;
2. to The Liverpool Football Club
And Athletic Grounds Limited;
3. to Manchester United Limited;
138 2009/3-4
O P I N I O N