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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ISA Marketing, and Federation Internationale de Football Association vs. Jonathan Nutt

Case No. D2000-0363

 

1. The Parties

Complainant is ISL Marketing AG (ISL), the exclusive marketing agent for Federation Internationale de Football Associations (FIFA). FIFA is a non-profit association under Article 60(ff) of the Swiss Civil Code and comprises such associations from 203 countries. FIFAґs indicated address is FIFA, Hitzigweg 11, Zurich 8030, Switzerland, and ISLґs address is ISL Marketing AG, Zentralstrasse 1, P:O: Box 3339, CH-6002 Lucerne, Switzerland. ISL is represented by Mark. S. Sommers, Esq. Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P 1311 I Street, NW, Washington. D.C. 20005-3315, United States of America.

Respondent is Mr Jonathan Nutt, an individual, with a postal mailing address at 166 Rowley Avenue, Sidcup, Kent, DA15 91G, United Kingdom. Mr. Nutt is listed as the Administrative and Billing contact for the disputed domain name, for which Easyspace is listed as the Technical and Zone Contact with the e-mail address "hostmaster@easyspace.com" and the facsimile number 44-1932-350222.

 

2. The Domain Name and Registrar

The domain name at issue is "FIFA-WORLD-CUP.COM" which is registered with Easyspace Limited (Easyspace).

 

3. Procedural History

A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) On May 1, 2000, in e-mail form and subsequently in hard copy. On May 4, 2000, the WIPO Center issued an Acknowledgement of Receipt of Complaint

Upon the transmission of a Verification Request to Easyspace a Verification was received on May 4, 2000.

That Verification indicated

a) that Easyspace was in receipt of the Complaint,

b) that Easyspace is the Registrar of the domain name registration (although it was indicated that the WHOIS information may be 24 hours out of date),

c) that Jonathan Nutt is the current Registrant of the FIFA-WORLD-CUP.COM domain name registration,

d) that Jonathan Nutt is indicated as the Administrative and Billing Contact for the domain name FIFA_WORLD_CUP.COM domain name with the e-mail address "jayen72@aol.com" and the facsimile number 01811-859-0702,

e) that Easyspace is the Technical and Zone Contacts with the e-mail address as mentioned above under 1,

f) that the Uniform Name Dispute Resolution Policy applies to the subject domain name, and

g) that the domain name registration FIFA-WORLD-CUP.COM is currently registration only.

The WHOIS Query Results attached to the Complaint indicate that the domain name was registered on January 29, 2000.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted on May 16, 2000, to Respondent by Post/Courier (with enclosures) by fax (without enclosures) and by e-mail, and copied to the Complainant, Easyspace and ICANN.

 

4. Factual Background

The Complaint is based on the following factual grounds.

a) FIFA is an international federation of 203 national football associations formed to promote the sport of football and to protect the sport and its good image. As part of that role FIFA controls all international football competitions, in particular the FIFA WORLD CUP, which event started in 1930. It has attracted a wide audience; the 1998 WIFA WRRLD CUP in France had about 40 billion television viewers and about 2.6 billion live spectators in its altogether 64 matches. In 2002, Japan and Korea will co-host the first FIFA WORLD CUP held outside Europe and/or the Americas, an event which has already attracted significant media attention in the world.

b) FIFA maintains a website located at "WWW.fifa.com" where it, inter alia, promotes the 2002 WORLD CUP as shown in Exhibit 4 attached to the Complaint.

c) FIFA has numerous trademark registrations for the marks FIFA and WORLD CUP, and variations of those marks, as shown in Exhibits 5 to 16 attached to the Complaint. The registrations relate to the mark FIFA WORLD CUP (International and Swiss registrations), FIFA (International, Swiss and UK registrations), WORLD CUP (International, Swiss, Japanese and Korean registrations), 2002 FIFA WORLD CUP KOREA JAPAN (Swiss registration) and WORLD CUP Trophy and Device (International registration). These registrations were effected before the registration of the domain name by the Respondent.

It appears from Easyspaceґs Verification Response that Respondent is the current registrant of the domain name FIFA-WORLD-CUP.COM and is listed as the Administrative and Billing Contact, while Easyspace is listed as the Technical and Zone Contact for this domain name.

 

5. Parties Contentions

A. Complainant

Complainant contends as a general background:

a) that it finances the FIFA WORLD CUP events through (i) FIFAґs sale of the broadcasting rights to the events and (ii) through ISLґs licensing of the trademarks FIFA WORLD CUP, FIFA and WORLD CUP and related marks to third parties for sponsorship and merchandising purposes;

b) because the marks have been widely promoted among the consuming public and because they have been exclusively associated with FIFA and its famed international football championship for nearly a century, they have come to symbolise the tremendous goodwill associated with FIFA and are property rights of incalculable value; because also of their wide and substantial international use they enjoy unquestionable fame and notoriety.

The Complainant furthermore alleges, as regards Respondentґs activities in relation to the domain name registration(s),

a) that, as the domain name FIFA-WORLD-CUP.COM incorporates the famous FIFA WORLD CUP and the separate marks FIFA and WORLD CUP, the Respondent clearly knew of the Complainant and its marks when he registered the domain name and thus expressly misrepresented and warranted in his registration contract with Easyspace that the registration of the domain name did not infringe the rights of any third party;

b) that, prior to the registration of the domain name, the Respondent never used, or was known in relation to, the FIFA WORLD CUP or other formative marks in this respect;

c) that the Complainant wrote to the Respondent on March 23, 2000, notifying him about its rights in the trademarks and requesting the transfer of the domain name to the Complainant, as shown in Exhibit 17;

d) that the Respondent replied on March 27 (Exhibit 18) indicating, inter alia, that he had in fact registered the domain name at issue as well as "over 100 other domain names" and that a website was under construction with the domain names listed with the current sales price or auction price; the Respondent, in a letter of April 20 (Exhibit 19), indicated that he had received an offer from someone offering to buy the domain name;

e) that Complainant, wrote to Respondent, on the same date, inquiring about the amount of money that Respondent would ask for the transfer of the domain name (Exhibit 20);

f) that, on April 12, 2000, Respondent wrote to Complainant indicating that he had registered a second domain name "FIFAWORLDCUP2002.CO.UK" and asking Complainant for an offer for the two domain names basing the offer "on their current full market potential" (Exhibit 21); on April 19, 2000, Respondent sent another letter asking for a bid for the two domain names (Exhibit 22);

g) that, on April 25, 2000, Respondent sent an e-mail to Complainantґs general e-mail address "domain.admin@islworld.com" asking for a bid on the FIFA-WORLD-CUP.COM" domain name, mentioning that he had set up a meeting with an American company wanting to buy the name (Exhibit 23), indicating also that he believed that the "domain is very valuable to you"; on the same date Respondent sent a facsimile to Complainant again mentioning the possibility of selling the domain name to a third party (Exhibit 24);

h) that, on the same date, Complainant notified Respondent that because no one else is entitled to use or own domain names containing FIFAґs trademarks, the fair market value of the FIFA-WORLD-CUP.COM and FIFAWORLDCUP2002.CO.UK domain names must correspond to Respondentґs out-of pocket expenses, generously estimated to be USD 2000 (Exhibit 25); Respondent did not reply to that offer;

i) that the domain name FIFA-WORLD-CUP.COM currently connects to a website advertising Easyspaceґs services (Exhibit 26).

Furthermore, Complainant alleges, as regards the injury caused by Respondentґs registration and use of the domain name at issue:

a) that Respondentґs use of the domain name at issue will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its trademarks, and Complainant will be unable to use its marks to designate and identify a website by a name likely to be used by persons looking for the website of FIFA and/or its 2002 FIFA WORLD CUP;

b) that Respondentґs continued ownership of the domain name at issue will leave Complainant unable to control the material and information that Respondent may post at a website which consumers will confuse and associate with FIFA and/or its FIFA WORLD CUP;

c) that Respondentґs continued ownership of the domain name at issue will mean that Complainant will not be able to control and benefit from the licensing of its trademarks.

As to registration of the domain name as issue in bad faith, Complainant alleges that such bad faith exists under Paragraph 4(a) of the Policy in four respects.

Bad faith under Paragraph 4(a)(i) exists because Respondent registered the domain name at issue primarily to sell, rent or otherwise transfer it back to Complainant for valuable consideration in excess of its documented out-of-pocket costs directly relating to the domain name. To support this allegation, Complainant refers to Respondentґs invitations to Complainant to indicate a price for obtaining the domain name, his statements about the interest from third parties and the mentioning of the "fair market value" of the domain name and his belief that the domain name would be very valuable for Complainant. Respondentґs statements about the value of the domain name mean that the consideration requested clearly exceeds his out-of pocket-expenses. Furthermore, Respondent did not reply to the offer of USD2000, which is likely to in itself far exceed such expenses. Respondentґs allegation that his use is "non-commercial" is not correct in view of the "bidding war" which he initiated.

Bad faith under Paragraph 4(a)(iv) exists because the domain name at issue creates a likelihood of confusion with Complainant and its marks. In this respect, Complainant states that FIFA WORLD CUP, FIFA and WORLD CUP ant other related marks are famous and exclusively identify FIFA and its famed FIFA WORLD CUP event. By design, Internet users have been and will continue to be mislead into believing that Respondentґs FIFA-WORLD-CUP.COM website is operated/registered by Complainant or with its permission and authorization. Given the fame of the 2002 FIFA WORLD CUP the public will reasonably expect to find an official FIFA WORLD CUP website at the FIFA-WORLD-CUP.COM DOMAIN NAME. Respondentґs registration and use of the domain name at issue is also likely to confuse and deceive consumers into mistakenly believing, in particular, that Respondent and its activities are offered, authorised, licensed or sponsored by Complainant. In this respect Complainant also indicates that Respondentґs attempts to sell and profiteer the domain name at issue is clearly a commercial use. Also, as the domain name has no value apart from in connection with Complainantґs World Cup tournament there is no justification or excuse for Respondentґs unauthorised registration of that domain name.

Bad faith under Paragraph 4(a)(iii) exists because Respondentґs registration and use of the domain name at issue interferes with Complainantґs business. In this respect Complainant alleges that Respondent registered and uses the domain name to interfere with Complainantґs business and its ability to license official sponsors of its FIFA WORLD CUP. By using the domain name for a website advertising the services of Easyspace, Respondent is interfering with Complainants ability to effectively and fully promote its FIFA WORLD CUP mark and 2000 FIFA WORLD CUP event on the Internet, to control the images and information associated with its trademarks and logos, and to license others to use Complainantґs mark.

Bad faith exists also because in registering the domain name at issue, Respondent knowingly misrepresented information to Easyspace by stating in its registration contract that the domain name did not infringe the rights of any third party.

Complainant furthermore asserts that Respondent has no rights or legitimate interests in the domain name FIFA-WORLD-CUP.COM. In this respect Complainant alleges that Respondent is not using, has not used and is not demonstrating or has demonstrated an intent to use the domain name at issue in connection with a bona fide offering of goods and services, that Respondent is not and has not been legitimately and commonly known by the names FIFA WORLD CUP, FIFA-WORLD-CUP.COM or any other name containing the term FIFA WORLD CUP, and Respondent is not making legitimate noncommercial or fair use of the domain name at issue without intent to mislead and divert consumers or to tarnish Complainant’s marks for commercial gain.

Complainant agrees to submit with respect to any challenges to a decision in this administrative proceeding to the jurisdiction of the courts in one specified Mutual Jurisdiction, in this case the jurisdiction of the principal office of Easyspace (the Registrar), that is the courts of England and Wales.

B. Respondent

Respondent has not submitted any Response and is in Default

 

6. Discussion and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.

In the case of Default by a Party, Rule 14 prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and consequently, despite the possibility given, has not contested any of the contentions by the Complainant. The Panel will therefore have to operate on the basis of the factual statements contained in the Complaint and the documents available to support the contentions.

Applied to this case, Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and

2) that Respondent has no rights or legitimate interests in the domain name, and

3) that the domain name has been registered and is being used in bad faith.

The case concerns only the registration of the domain name FIFA-WORLD-CUP.COM.

In the following part of decision the Panel discusses each of these elements.

a) Identity or Confusing Similarity

The domain name at issue is "FIFA-WORLD-CUP.COM. The Verification Response shows that Respondent is the current registrant of the domain name.

Complainant has a number of registrations in different countries and also international registrations of the marks FIFA and WORLD CUP and FIFA WORLD CUP and variations of those marks. Obviously, the marks are very well known as indicators of FIFAґs famous international football championships and as symbols of the goodwill enjoyed by FIFA in this respect.

The domain name incorporates the elements FIFA and WORLD CUP and is thus almost identical to the trademarks registered and owned by Complainant. The only differences are that the domain name is hyphenated and includes the suffix "COM" which is meant to indicate, at least in principle, that the domain name is intended to be commercial. In the view of this Panel these are insignificant distinctions which do not change the likelihood of confusion.

On the basis of these findings and due to the fact that the allegations and statements of Complainant are undisputed, the Panel finds that in fact the domain name registered by Respondent is confusingly similar to the trademarks in which Complainant has rights.

b) Rights or Legitimate Interests

Complainant has not licensed or otherwise authorised Respondent to use Complainantґs trademarks and there is no relationship between Respondent or Complainant.

By not submitting a response, Complainant has failed to invoke any circumstance which could demonstrate, pursuant to Paragraph 4c) of the Policy, any rights or legitimate interests in the domain name.

Therefore, on the basis of the arguments and the evidence brought by Complainant, the Panel finds that Complainant has sufficiently established that Respondent has no right or legitimate interest in the domain name.

c) Registration and Use in Bad Faith.

To show bad faith Complainant has to present evidence showing that such bad faith exists in at least one of the situations mentioned in Paragraph 4(b)(i) to (iv) of the Policy.

Complainant has invoked evidence to show that the situations mentioned in (i), (iii) and (iv) exist. Thus, first Complainant has alleged that the domain registration was effected primarily for the purpose of selling, renting or otherwise transferring the domain name registration for valuable consideration in excess of Respondentґs documented out-of pocket costs (Paragraph 4(b)(i) of the Policy). Furthermore, Complainant has alleged that the registration and use of the domain name interferes with Complainantґs business, inter alia with its ability to license official sponsors. Finally, Complainant alleges that the registration and use of the domain name creates a likelihood of confusion with Complainantґs marks and is likely to confuse and deceive consumers in to believing that Respondent and its activities are offered, authorised, licensed or sponsored or authorised by Complainant; commercial use is obviously intended in view of Respondentґs continuing efforts to sell the domain name.

To support these allegations, Complainant has submitted various pieces of evidence, among them quotations from Respondentґs correspondence with Complainant. By not submitting a Response, Respondent has failed to address these allegations.

The evidence submitted by Complainant is in the view of this Panel uncontested evidence that the domain name has in fact been registered and used in bad faith as mentioned in Paragraphs 4(b)(i), (iii) and (iv) of the Policy.

 

7. Decision

In the light of the foregoing the Administrative Panel concludes that the domain name FIFA-WORLD-CUP.COM is confusingly similar to Complainants trademarks, that Respondent has no right or legitimate interest in respect of the domain name and that Respondentґs domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and in accordance with the request by Complainant, the Panel requires that the Domain name FIFA-WORLD-CUP.COM be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: July 17, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0363.html

 

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