The Complainant is Wembley National Stadium Limited of York House, Empire Way, Wembley, Middlesex HA9 0PA, United Kingdom.
The Respondent is Tim Gordon of 111 St. Mary's Drive, Pound Hill, Crawley, West Sussex RH10 3BG, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is "wembleystadiumonline.com" and the Registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on September 14, 2000 [electronic version] and on September 18, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is September 25, 2000.
On September 19, 2000 the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on September 24, 2000 Network Solutions, Inc. transmitted by email to the Center Network Solution's verification response confirming that the registrant is Tim Gordon and that the contact for both administrative and billing purposes is Domain Names.com Ltd.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on September 25, 2000 the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by October 14, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Tim Gordon
111 St Mary's Drive
Pound Hill
Crawley
West Sussex RH10 3BG
United Kingdom
and to
DomainNames.com Ltd
The Teleport
Doxford International
Sunderland
Tyne & Wear , SR3 3XA
United Kingdom
A Response [hard copy only] was received from the Respondent on October 16, 2000. Also on October 16, 2000, Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. A Supplemental Communication was received from the Complainant on October 25, 2000 [facsimile version] and on October 30, 2000 [hard copy]. At the request of the Panel on November 14, 2000 the Center advised the Respondent that he had until November 22, 2000 within which to submit any Supplemental Response to the Complainant's Supplemental Communication. In the event, no such Supplemental Response was submitted by the Respondent by that date, although on November 24, 2000 a communication from the Respondent was received by the Center. The Panel finds that that communication adds nothing to the Response.
The Panel in its discretion [Rules, paragraph 12] admits the Complainant's Supplemental Communication. The Panel so decides since the Response raised issues that were not addressed in the Complaint and permitting the Complainant to comment in relation to those new issues is consistent with the Panel's duty to ensure that each Party is given a fair opportunity to represent its case [Rules, paragraph 10(b)]. Further, by admitting the Complainant's Supplemental Communication and allowing the Respondent until November 22, 2000 within which to submit any Supplemental Response thereto, no significant interference with the due expedition of this Administrative proceeding has occurred. The relevance, materiality and weight of the evidence presented in the Complaint, the Response and the Complainant's Supplemental Communication are reflected in this Decision [Rules, paragraph 10(d)].
Having received on November 3, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was November 16, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Complainant's Supplemental Communication, the Policy, the Rules and the Supplemental Rules.
4. Factual background
The Complainant
The Complainant is Wembley National Stadium Limited the owner of Wembley Stadium, which venue hosts large scale sporting events and entertainment events. The Stadium opened in 1923 and since that date the Complainant maintains that the name WEMBLEY has become synonymous internationally with the Stadium and the events hosted at it. The Complainant states that it publicly advertises and markets those events, including by means of the Internet. From the Panel's own searches it appears that the Complainant registered the domain name wembley-stadium.com on March 23, 1998. From the Panel's own knowledge, Wembley Stadium is an exceptionally well known venue at least to the United Kingdom public and the Panel accepted the Complainant's assertion that it is also well-known internationally. The Complainant's assertions are not accepted by the Respondent.
The Respondent
The Respondent resides in Crawley, West Sussex. No particulars are given in the Response as to his business or activities. The Respondent registered the domain name in issue on January 11, 2000.
The Complainant's Trade Marks
The Complainant relies on the following registered trademarks.
The Complainant states that UK Trademark 2,000,877 WEMBLEY, registered with effect from October 31, 1994 was granted on the basis of evidence of distinctiveness acquired through use. The Complainant's case is that this evidences:
- that there has been longstanding and substantial use of the trade mark WEMBLEY in relation to promotion of its goods and services;
- that the Complainant has acquired substantial goodwill in the WEMBLEY trademark; and
- that WEMBLEY is seen by the public as the Complainant's trademark and not only as a geographical name, Wembley being the district of London where the Stadium is located.
The Complainant also appears to rely upon common law rights in the name WEMBLEY STADIUM on the basis that the Stadium is commonly known as such. In this Panel's view the requirement in paragraph 4a(i) of the Policy that the Complainant must demonstrate rights in the trademark or service mark asserted is not limited only to registered trademarks. The requirement can also be met by demonstrating common law rights in a mark, such as the Complainant would need to establish in order to sustain a cause of action in passing-off under English law or some analogous right under the unfair competition laws of other countries.
The Respondent's activity complained of:
On January 11, 2000 the Respondent registered the domain name in issue. That domain name is not currently used in relation to a website.
The dialogue between the parties:
August 10, 2000: The Complainant's UK trade mark agents wrote to the Respondent [by registered mail] putting him on notice of the three trademarks identified in paragraph 4.3 above; stating their belief that the Respondent's ownership and future use of the domain name in issue may result in confusion by members of the public being misled into believing that the Respondent is in some way connected with the Complainant or its licensees; that this will also damage the integrity and exclusivity of the WEMBLEY STADIUM name; and requesting the Respondent to assign the domain name in issue to the Complainant for a consideration comprising the Respondent's costs in registering and maintaining that name.
August 17 and September 7, 2000: The Respondent vigorously rejected the claims made in the Complainant's cease and desist letter and stated that he required Ł10,000.00 for transfer of the domain name in issue. The points raised in these letters were subsequently reiterated in the Response and the Respondent's case is summarised in paragraph 5.2 below.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the domain name in issue is confusingly similar to the Complainant's registered trademarks WEMBLEY and WEMBLEY THE NATIONAL STADIUM because:
- the .com element is totally non-distinctive and cannot be regarded as a factor in distinguishing the domain name in issue from the Complainant's trademarks;
- the online component is wholly descriptive of the location where the relevant goods and services are offered, namely that they are provided on the Internet. That the public would regard wembleystadiumonline as simply referring to Wembley Stadium on the Internet;
- by reason of imperfect recollection, it is likely that the public will confuse wembleystadium and the registered trade mark WEMBLEY THE NATIONAL STADIUM or that the public will use the two interchangeably simply viewing wembleystadium as an abbreviation of WEMBLEY THE NATIONAL STADIUM; and
- because the Stadium is commonly known as Wembley Stadium, the public would expect to find the Complainant's website at a domain name using the words "wembleystadium".
The Panel takes the latter contention as the Complainant asserting rights in the unregistered mark WEMBLEY STADIUM which is identical with the substantive element of the domain name in issue. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue and that such name was registered and is being used in bad faith.
5.2 The Respondent
The Respondent's case is as follows:
5.2.1 The Complainant's Trade Marks
First, that the WEMBLEY trade mark is no more than a geographical name, which no one party is entitled to monopolise. The Complainant "… cannot reasonably have a whole geographical area as their sole property. No Wembley business would be safe, do they take action against London Underground for their Wembley Central, Wembley Park and North Wembley? Is the name Wembley Pregnancy Advice Centre similar?"
Second, that the Complainant's trade marks cannot "… be a catch all to encompass everything."
Third, that the Complainant has no registered trademark for "wembleystadiumonline".
Fourth, that the Complainant bought the Stadium in March 2000, after the Respondent registered the domain name in issue, in January 2000.
Fifth, that the Complainant intends to rename the Stadium as The National Stadium, thus eliminating likelihood of confusion by the public.
Sixth, that there is no confusing similarity because a company not associatedwith the Complainant, Wembley PLC, operates websites under the domain names wembley.co.uk and wembleytickets.com. Wembley PLC owns Wembley Arena, Wembley Conference and Exhibition Centres and Wembley TV, which broadcasts "live rock and pop acts from Wembley Arena, Brixton Academy and Shepherds Bush Empire". It follows that the name WEMBLEY cannot - contrary to the Complainant's case - have become synonymous internationally with the Stadium and the events hosted at it.
Seventh, that because the domain name in issue does not resolve to an active website, there can be no public confusion.
"I have no active website but if I did then the name would be too confusingly similar, it’s a Catch 22 scenario, I'm not supposed to mind as a site isn't up and running but if it was going then it would be confusing to the public …"
Eighth, that the Complainant has received public funds to assist in rebuilding the Stadium and, although it competes with other business enterprises (like Wembley PLC), it should not be entitled to a .com domain name but only to a .org domain name.
5.2.2 Rights and Legitimate Interests
First, that the Respondent registered the domain name in issue for his brother, Adrian Gordon, who was born on July 30, 1966 the day that England won the Soccer World Cup at the Wembley Stadium against Germany.
Second, that the domain name in issue was registered to preserve a piece of national history to commemorate that World Cup win by England.
"I had wanted originally to have a website dedicated to the glory of England's 1966 World Cup victory at the old Wembley which could be a "Hall of Fame" as it were with stories and news of personalities and memorabilia etc."
5.2.3 Registered in Bad Faith
First, the Respondent repeats the points identified above.
Second, there has been no breach by the Respondent of his warranty in the NSI Registration Agreement by registering a domain name which will infringe the legal rights of a third party, the Complainant. The Respondent repeats that at the time he registered the domain name (January 2000) the Complainant did not own the Stadium, which it later acquired in March 2000. He did not register the domain name for any unlawful purpose.
Third, the Respondent states that he did not approach the Complainant "… to hawk the domain name or apply to any competitors of this organisation." His offer to sell the domain name was merely in response to the Complainant's offer to purchase it (contained in the August 10, 2000 letter: paragraph 4.7 above).
"I can say that I did not demand Ł10,000 as they state but passed on to them an offer that had been made to me."
5.2.4 Used in Bad Faith
The Respondent relies on the fact that the domain name in issue does not resolve to an active website and on the submissions identified above under paragraph 5.2.1 (the fourth and seventh points) and under paragraph 5.2.2.
6. Discussion and Findings
6.1. Under paragraph 4a of the Policy, the Complainant must prove three distinct elements in order to succeed with a claim for transfer of a domain name, namely:
- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
6.2. Identical or Confusingly Similar
First, the Panel considers that the Complainant has common law rights in the name and mark WEMBLEY STADIUM in addition to its registered trade marks. That being the case, the substantive part of the domain name in issue is identical to that mark.
Second, in its Supplemental Communication the Complainant explains that it has a Sale and Purchase Agreement with Wembley PLC which sets out that PLC's rights to use WEMBLEY as part of their trading name. Under that Agreement the PLC apparently retained the right to use several of the Complainant's trade marks until March 15, 2001. That Agreement became effective March 15, 1999 and the Complainant took assignment of all the PLC's intellectual property rights at that time, including trade marks. The Panel is satisfied that the Complainant has rights in the trade marks relied upon in the Complaint.
Third, the Panel accepts that the Complainant is not opposing use of the name and mark WEMBLEY simpliciter. Rather, the Complaint is in relation to the name and mark WEMBLEY STADIUM. The activities of and use by the PLC of the name WEMBLEY are not relevant use of the WEMBLEY STADIUM name and mark.
Fourth, given the use of the Complainant's WEMBLEY registered marks in relation to goods and services promoted by reference to the Stadium, the Panel finds that there must be a likelihood of confusing similarity with the domain name in issue. The Panel also finds that the Complainant has common law rights in the name and mark WEMBLEY STADIUM (paragraph 6.2.1 above). In the circumstances, the Panel considers there is every likelihood that at least members of the British Public will expect a domain name comprising the words wembleystadium to have some connection with the famous Stadium of that name and the organisation which operates that Stadium, the Complainant.
Fifth, the Panel accepts that the suffix online is merely descriptive and will not differentiate from the business of the Company which runs the Stadium. Indeed, it is likely to be regarded as Wembley Stadium doing business on the Internet. The activities of the PLC are quite separate (paragraph 6.2.3. above).
In all the circumstances, the Panel finds that the Complainant has satisfied the requirements of paragraph 4a(i) of the Policy.
6.3 Rights or Legitimate Interests
Paragraph 4c of the Policy sets out circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate rights or legitimate interests in the domain name in issue. Those circumstances are not exhaustive of the circumstances which may establish rights or legitimate interests.
The Respondent has not shown that:
- before notice to him of the dispute (the letter of August 10, 2000 - paragraph 4.7 above) he has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
- nor that he, as an individual or business, has been commonly known by the domain name;
- nor that he is making a legitimate non-commercial or fair use of the domain name.
There is no evidence of any use or demonstrable preparations to use a "Hall of Fame" website to commemorate England's 1966 Soccer World Cup victory at the Stadium.
The Respondent has failed to bring himself within any of the circumstances set out in paragraph 4c of the Policy.
Nor has the Complainant licensed or otherwise authorised the Respondent to use the domain name in issue.
The submissions made by the Respondent (summarised in paragraph 5.2.2. above) do not, in the Panel's view, amount to other circumstances establishing rights or legitimate interests in the domain name in issue. The Panel, therefore, finds that the Complainant has satisfied the requirements of paragraph 4a(ii) of the Policy.
6.4 Registered and Used in Bad Faith
Paragraph 4b of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Respondent's intent in registering the domain name in issue is summarised in paragraph 5.2.2. above. He says it was for his brother Adrian, who was born on the day England won the Soccer World Cup at the Stadium on July 30, 1966. He says it was also with the idea of having a "Hall of Fame" website to commemorate that victory.
Is that, coupled with the fact that the domain name is not actively in use in relation to a website, sufficient to defeat the Complaint? In the Panel's view it is not. The Respondent's two letters in reply to the Complainant's August 10, 2000 cease and desist letter indicate, in the Panel's view, a bad faith intent.
Respondent's letter of August 17, 2000
"Interested parties have approached me with regard to the name and two American companies have offered to buy the name from me."
"I like to think I am a reasonable guy. I saw an opportunity to have a piece of Heritage and secured it. Wembley it would seem to me are slow off the mark here and so once again, I state that I do not consider that they are entitled to this name which doesn't appear to be a trade mark."
"Personally I think a good little item could be made of how a guy born on World Cup Day handed over his dot com name to Wembley at this critical time for the Stadium - perhaps on London Tonight - it's just a thought."
Respondent's letter of September 7, 2000
"I had stated that two parties were interested in purchasing the name. They, I have subsequently found out, are foreign corporations and one of them has asked that I give them a reply to their offer within 10 days. Personally, I want the domain name to stay in Britain but football is big business, even the Americans can see the attraction of the game and a name synonymous with the football game - WEMBLEY.
Although I probably shouldn't say so, the offer received is valued at $12,000, rough mental arithmetic puts the figure at around Ł10,000 which I don't think it too bad for such a name. Due to the fact that the domain name arena is a controversial area I am of the opinion that this offer will be accepted unless (WNSL) come back to me almost immediately.
It would be a shame to sell to people who think Wembley is the home of soccer rather than the game we all know as FOOTBALL."
"I think it only right to let you know because you may not have received my reply and to give you a chance to come back to me.
As I would like to take into account exchange rates and commission / broking charges for a sum of $12,000 I could accept an offer of Ł10,000 from your client. It would need to be agreed in principle now. I probably shouldn't divulge this but I am a gambling man and lost over Ł8,000 backing England to beat Portugal in the Euro 2000 Championship - only England could throw away a 2-0 lead, so you can see I will have to take the offer already submitted unless Wembley can counter it and time is of the essence now …"
…
"My American associates are also interested in the domain name www.milleniumdomeonline.com. I think they want to annoy Nomura who beat them to a previous deal but once again, I would prefer to deal with, if not a British Company a company with a stake in Britain. … Perhaps WNSL would be interested, so that another name doesn't go to foreign owners.
If I do not receive a communication within the next few days I will take it that your clients do not want to strike a deal which in a way is quite understandable, they must be a little miffed to say the least that the domain name had already been assigned, but I considered that if an Englishman didn't snap it up a yank would soon get it, they own nearly every other name, company and profitable enterprise. I was struck by how lax Wembley were to find that the name was available and in the dot com world things seemed to operate on a first come first served basis like a goldminer's claim, a real free for-all so I stepped in."
The above statements by the Respondent indicate an opportunistic approach to registering the domain name with a view to selling it to the highest bidder. The Respondent's subsequent protestations to the contrary in his Response do not ring true. Further, the fact that the Panel has found that the Respondent has no rights or legitimate interests in the domain name is another incidence of bad faith.
As to use, the mere existence of the domain name in issue will likely give a false impression of an association between the Stadium and the Respondent. There is also the apparent willingness of the Respondent to sell the domain name in issue and not at a price reflecting only the cost of registering and maintaining the name.
In the circumstances, the Panel is not able to attach weight to many of the submissions made by the Respondent. The Panel, therefore, finds there to be sufficient indicia of bad faith to constitute registration and use in bad faith in this case by reason of the Respondent's passive holding of the domain name in issue. Accordingly, the Panel finds that the Complainant succeeds in establishing both limbs of paragraph 4a(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy and accordingly the Panel directs that the domain name wembleystadiumonline.com be transferred to the Complainant.
David Perkins
Sole Panellist
Dated: December 20, 2000
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