WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UEFA and Funzi Furniture
Case No. D2000-0710
1. The Parties
Complainant: Union des Associations Europeennes de Football (UEFA)
Route de Geneve 46, 1260 Nyon
Switzerland
Respondent: Funzi Furniture, Funzi, Funzi
Mombasa, Coast P.O. Box 9
Kenya
2. The Domain Name and Registrar
Domain Names: "championsleague.com" ("the Domain Name")
Registrar: Network Solutions Inc. ("the Registrar")
3. Procedural History
The Complaint was received by WIPO on July 3, 2000. A partial amendment of the Complaint was received by WIPO on September 18, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy("the Rules"), and the World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that the Respondent is the current registrant of the Domain Name. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On September 20, 2000, WIPO notified the Respondent of the Complaint by courier and e-mail and informed the Respondent inter alia that the last day for sending its response to the Complainant and to WIPO was October 10, 2000. The Response was lodged with WIPO by email on October 6, 2000.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is October 25, 2000.
4. Factual Background
The Complainant is football’s European governing body. It is the organizer of inter alia an international football competition, which since 1992, has been called the Champions League. The Champions League is an important sports event and very well known to football enthusiasts.
The Complainant is the registered proprietor of inter alia international trade mark registration number 677,160 dated March 3, 1997, for the mark CHAMPIONS LEAGUE (words) in classes 16, 18, 21 and 25. This registration covers several countries.
The Domain Name was registered by the Respondent on December 17, 1998.
On February 22, 2000, the Complainant visited the GreatDomains.com site and found that the Domain Name was available for sale at an asking price of $1,450,000
On April 24, 2000, the Respondent sent an email to the Complainant asking for an email address within the Complainant’s executive department.
On April 27, 2000, the Respondent sent an email to the Complainant informing the Complainant that it was the owner of the Domain Name, that it had just received an offer for the Domain Name from a major basketball organization in America and wondering if the Complainant would be interested in making a counter offer. The email went on to say that the writer preferred to have the name associated with football rather than basketball and that the site to which the Domain Name resolves was receiving thousands of ‘hits’ every day.
On May 3, 2000, the Complainant visited the site at "www.championsleague.com" and found a banner featuring the Domain Name below which appeared the Complainant’s logo and the slogan "Welcome to the home of soccer". On the same day the Complainant wrote to the Respondent drawing the Respondent’s attention to its rights in the name CHAMPIONS LEAGUE and effectively threatening to invoke this procedure unless the Respondent came up with a sensible price for transferring the Domain Name to the Complainant.
On May 5, 2000, the Respondent replied disputing that CHAMPIONS LEAGUE is anything other than a generic name and saying that it is used in relation to a number of other sports. The Respondent stated that it is a web developer by trade and that the purchase of the Domain Name for resale was not its intention when it purchased the Domain Name from the Registrar. The Respondent states "I was unaware UEFA had a competition by that name when I registered". The email goes on to suggest four methods of resolving the dispute. First, the Complainant can pay the GreatDomains asking price; secondly, the price to be paid is arrived at by averaging the estimates as to the Domain Name’s market value from three independent domain name agencies; thirdly, in return for transferring the Domain Name the Respondent receives all the advertising revenue from the site’s home page; fourthly, the parties co-operate to market email addresses attached to the Domain Name.
On June 18, 2000, the Complainant views the site to which the Domain Name resolves and the metatags behind it. The site now makes reference to a number of other sports in addition to soccer. Behind the site the Complainant finds inter alia the following, namely "content= "Championsleague is the largest soccer competition in the world"".
On July 3, 2000, the original Complaint is lodged with WIPO.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical to its International Trademark Registration referred to above and is confusingly similar to other UEFA trademark registrations to which the Panel has not felt it necessary to refer.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support of this assertion the Complainant points to the fact that its rights pre-date registration of the Domain Name, the fact that the CHAMPIONS LEAGUE brand of the Complainant is among the most famous in professional sport, the fact that the Complainant is not aware of any other widely known competition going under the official name "Champions League", the fact that the name is not a common name, the fact that the Respondent is not a sports organization and only a sports organization could have a legitimate interest in the name. Finally, the Complainant points to the content of the Respondent’s website as described above and asserts that, contrary to the Respondent’s claim, the Respondent was well aware of the Complainant’s rights to the name CHAMPIONS LEAGUE when it registered the Domain Name.
The Complainant asserts that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
It claims that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant for a sum of money well in excess of the respondent’s out-of-pocket expenses in respect of the Domain Name (paragraph 4(b)(i) of the Policy). It points to the GreatDomains asking price. It points to the fact that the Respondent’s website while originally featuring the Complainant’s logo did not contain matter relating to the Complainant’s competition.
The Complainant also claims in support of its allegation of bad faith registration and use of the Domain Name that by using the Domain Name the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
It points to the fact that the current version of the Respondent’s website contains a link to the Respondent’s associated trading site, which deals with the sale of African furniture. The Complainant also refers to the references to the Complainant’s competition in the text behind the site, which was designed to attract web users to the site and from there to its furniture business.
The Complainant concludes that the Respondent’s only purpose in registering the Domain Name was to make money by reselling it at a very high price and to use it as a means of attracting web users to its furniture products.
B. Respondent
Lawyers representing the Respondent state that he (sic) is a web developer and has been developing websites for the past 3 years without having faced any problems over domain names from third parties. He is a legitimate entrepreneur. He has never sold a domain name.
In response to the Complainant’s assertion that the Complainant has rights in the trade mark CHAMPIONS LEAGUE, the Respondent produces a wealth of evidence to demonstrate beyond doubt that there are a number of sports other than soccer which have competitions named "Champions League" and that there are other soccer competitions in Africa, which bear that name.
The Respondent also attacks the claimed fame of the Complainant’s competition and points to the countries, which have rejected applications for registration of the name CHAMPIONS LEAGUE as a trade mark on the grounds of lack of distinctiveness. The Respondent regards it as important that the trademark is not registered for services and that until January 1998, the International registration was owned by a German company.
The Respondent observes that the other trade mark registrations upon which the Complainant relied to show confusing similarity all feature the acronym UEFA, which the Respondent concedes is distinctive. Indeed the Respondent says that the Complainant would not have achieved those registrations without the inclusion of the acronym.
The Respondent says that if the Complainant’s Champions League is famous it can only be famous for goods (the registration only covering goods) and the fame will not extend beyond Europe. CHAMPIONS LEAGUE is generic and cannot be monopolized by anybody. The Respondent points out that when the Complainant registered eufa.com the Domain Name was available and it presumes that the Complainant did not register it then because it only uses CHAMPIONS LEAGUE in conjunction with the acronym UEFA.
In response to the assertion that the Respondent has no rights or legitimate interests in the Domain Name, the Respondent relies upon what it regards as being the inherently generic nature of the name and the fact that the Respondent is a web designer and its intention all along has been to develop "a website to divulge information about ‘champions’ in the different ‘leagues’ in general".
As to the assertion that it registered the Domain Name in bad faith it relies on its contentions set out above. It also claims that the negotiations regarding transfer of the Domain Name should not count against it, for mere discussion of means of resolving a dispute should not be regarded as bad faith. As to the level of the asking price, the Respondent claims that this should operate in it s favour. "The large amount mentioned is the proof that the Respondent had not the intention to sell its domain name". The Respondent says that it refused other offers to purchase the Domain Name, but does not provide particulars. The Respondent goes on to say that "when the Respondent contacted UEFA it was with the intention to develop its site, as indicated in the letter dated May 05, 2000.
The Respondent says that it did not register and has not used the Domain Name in bad faith. It points to the fact that if it had, it would not have linked the site to its furniture factory site. It says that nobody could be confused. It says that anybody wishing to know about the Complainant and its activities will go to www.uefa.com and that anybody going to the site connected to the Domain Name will immediately see the reference to furniture, the reference to Africa and the "aussiemike" copyright notice and will know the site has nothing to do with the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interest in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
Identical or Confusing Similarity
The Complainant has produced evidence to show that CHAMPIONS LEAGUE is the name of one of its premier competitions and that it is the registered proprietor of the International Trade Mark Registration of the name CHAMPIONS LEAGUE.
The Panel accepts that the Complainant’s rights in the name are not exclusive, but the Policy does not talk of exclusive rights. If the onus on the Complainant was to establish exclusive rights across all categories of goods and services and across all territorial boundaries, the object of the Policy (namely to combat bad faith registration and use of domain names) would be defeated. The purpose of paragraph 4(a)(i) of the Policy is simply to ensure that the Complainant has a bona fide basis for making the Complaint.
The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or Legitimate Interests of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name involves proving a negative. Proving a negative is notoriously difficult and it is no doubt for this reason (at any rate in part) that by virtue of paragraph 4(c) of the Policy the burden of proof is to a certain extent shifted onto the shoulders of the Respondent. That sub paragraph sets out certain circumstances which, if found by the Panel to be proved, will demonstrate the Respondent’s rights or legitimate interests to the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy.
The circumstances set out in that sub paragraph are:
h Before any notice to the Respondent of the dispute, the Respondent’s use, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
h The Respondent, (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
h The Respondent is making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent does not claim any rights in respect of the Domain Name save such rights as anybody may acquire by being the first to register an inherently generic and non-distinctive name.
The only evidence of use of the Domain Name prior to notice of the dispute being given to the Respondent was the appearance of the Domain Name on the GreatDomains site at an asking price of in excess of $1,000,000, the email to the Complainant dated April 27, 2000, inviting the Complainant to make an offer for the Domain Name and the web page annexed to the Complaint as Annex 11 featuring the Complainant’s logo and welcoming the visitor to the home of soccer.
None of that demonstrates any rights or legitimate interests of the Respondent in the Domain Name. At that stage at any rate the Domain Name was being targeted specifically at the Complainant. By no stretch of the imagination could the Respondent be regarded as the home of soccer. Nor at that stage was there any indication that the Respondent had been preparing to use the Domain Name for a site devoted to the league champions of all sports. Indeed, the clear indication was that the respondent was targeting the site solely to the Complainant’s competition.
The Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy and that the Respondent has failed to establish the contrary.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
A remarkable feature of the Response is that it does not repeat the claim made in the Respondent’s letter of May 5, 2000, that when the Respondent registered the Domain Name in December 1998, it was unaware of the existence of a football competition of the Complainant going under the name "Champions League". If that were true, the Complaint would have to fail, because, self-evidently, at the time of registration the Respondent could not have intended to take the Complainant’s name.
Did the Respondent know of the Complainant’s competition when it registered the Domain Name? The Panel believes that it did and for several reasons, which taken individually may not be sufficiently persuasive, but which taken together are very powerful. First, while the Panel recognizes that the person behind the Respondent is Australian born and living in Africa, it seems to the Panel unlikely that the Respondent who is evidently a football enthusiast would not have heard of such a famous competition, the fame of which in football circles extends far beyond Europe. The Panel is aware that African countries receive television coverage of the Complainant’s Champions League matches. The Panel deduces that the Respondent is a football enthusiast from the email of April 27, 2000, and the content of the respondent’s website on May 3, 2000. Secondly, the earliest recorded web page of the Respondent makes specific reference to the Complainant, when the Respondent is now arguing that its original intention was to develop a site for champions from all sports. Thirdly, the vast sum being sought for the Domain Name, which is indicative that the Respondent recognized that it held significant special value. True, this could be because it was a valuable generic name applicable to all sports, but it is a fact that it was the Complainant whom the Respondent approached in April 2000, and it was the Complainant’s Champions League competition and no other which featured at that time on the Respondent’s website.
The Panel observes that the manner in which the Respondent is contesting this complaint hardly suggests a good faith approach to the issue. For example, the Respondent asserts in paragraph 6.15 of the Response that the Respondent did not intend to sell the Domain Name. In support it cites the very large asking price on the GreatDomains site which it claims is ‘proof’ of a lack of intention to sell; it goes on to say in the same paragraph of the Response that "when the Respondent contacted UEFA it was with the intention to develop its site, as indicated in the letter dated May 05, 2000". That was manifestly not the case, as is apparent from the email of April 27, 2000, which the Respondent fails to mention in the Response and which was an express invitation to name a price. Additionally, the reference to development in the May 5 email was just one of several suggestions made to the Complainant for remunerating the Respondent, one of which was for the Complainant to pay the GreatDomains asking price of in excess of $1,400,000, the very figure which a sentence or two earlier the Respondent claims is proof that the Domain Name was not for sale.
The Panel finds that the circumstantial evidence against the Respondent is too strong. The Panel finds that the Respondent was indeed aware of the Complainant’s competition when it registered the Domain Name. The Panel finds that at the time of registration the Respondent either hoped to make a large profit from selling the Domain Name to the Complainant or to a competitor sports body (the Panel points to the Respondent’s attempt to play the Complainant off against an unnamed American basketball organization) or, by use of the Domain Name connected to a web site, hoped to get a large number of ‘hits’, which could be directed for commercial gain to its African furniture business. Indeed, as indicated above, the Respondent claimed that it was receiving 2000 hits per day, which seems to the Panel an extraordinarily high number of hits for a non-distinctive generic name of this type.
The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith.
7. Decision
In light of the above findings, namely that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith, the Panel finds that the Complaint succeeds. The Panel directs that the Domain Name, "championsleague.com", be transferred to the Complainant, Union des Associations Europeennes de Football.
