ISL Worldwide and The Federal Internationale de Football Association
.v. Western States Ticket Service
Case No. D2001-0070
1. The Parties
The Complainants are ISL Worldwide [ISL] of Grafenauweg 2, P O Box 4433, CH-6304
Zug, Switzerland and The Federation Internationale de Football Association [FIFA]
of Hitziweg 11, P O Box 85, 8030 Zurich, Switzerland
The Respondent is Western States Ticket Service of 143 W McDowell Road, Phoenix,
AZ 85003, United States of America
2. The Domain Name and Registrar
The domain name at issue is : "fifatickets.com" and the Registrar
is: Network Solutions, Inc
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint
on January 15, 2001, [electronic version] and on January 16, 2001, [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 February 1, 2001.
On January 26, 2001, the Center transmitted via email to Network Solutions,
Inc a request for registrar verification in connection with this case and on
January 31, 2001, Network Solutions, Inc transmitted by email to the Center
Network Solutions’ verification response confirming that the registrant is Western
States Ticket Service and that the contact for both administrative and billing
purposes is Wayne Hungerford of Western States Ticket Service.
Having verified that the Complaint satisfied the formal requirements of the
Policy and the Rules, the Center transmitted on February 1, 2001, to
a Notification of Complaint and Commencement of the Administrative Proceeding.
The Center advised that the Response was due by February 19, 2001. On the same
day the Center transmitted by fax and by mail copies of the foregoing documents
to:
Wayne Hungerford
Western States Ticket Service
143 W McDowell Road
Phoenix
AZ 85003
United States of America
and to
Adhost Internet Advertising
400 - 108th Ave N.E
Suite 700
Bellvue
WA 98004
United States of America
On February 13, 2001, [electronic version] and on February 14, 2001, [hard
copy], the Center received Respondent's Motion for Extension of Time to File
Response. The basis for the Motion was that the Respondent is presently a respondent
in Case D2000-0903 wherein the Complainant
is National Collegiate Athletic Association, which, Respondent states, involves
issues substantially similar to those in this administrative proceeding. The
Respondent submitted that the decision in this administrative proceeding should
await the Panel decision in Case D2000-0903 in the interest of attempting to
avoid the risk of inconsistent decisions in the two proceedings.
The Respondent proposed [fax dated February 5, 2001] to the Complainants that
if the Decision in Case D2000-0903 was
adverse to the Respondent then, without more, the Respondent would transfer
the domain name in issue to the Complainants. By fax dated February 6, 2001,
the Complainants apparently rejected this proposal By fax of the same date the
Respondent sent the Complainants a copy of the Decision in National Collegiate
Athletic Association .v. Rosemary GiancolaCase
D2000-0836 and reiterated the proposal made in the fax dated February 5.
On February 14, 2001, [electronic form] the Complainant's Response to the Respondent's
Motion was received by the Center. That Response opposed the Motion for Extension
of Time on various grounds including, inter alia, that there is no reason for
linkage between the outcome of Case D2000-0903
and the decision in this administrative proceeding.
On February 15, 2001, the Center ruled that no decision need be taken at that
stage on the Respondent's Motion in view of the imminent notification of the
decision in Case D2000-0903. Once the
Decision in Case D2000-0903 was issued, the Respondent was invited to
inform the Center whether it would still require an extension to file its Response
in this administrative proceeding.
On February 20, 2001, the Center informed the parties that, due to a further
delay in the issuance of a decision in Case
D2000-0903, the deadline for submission of the Respondent's Response
in this administrative proceeding was set for February 26, 2001. The Center
also advised the parties that the Panel in this administrative proceeding might
request further submissions by the parties in the light of that Decision.
The Response was duly received from the Respondent on February 26, 2001, and
on February 28, 2001, Acknowledgement of Receipt of Response was sent to the
Complainants and to the Respondent using the same contact details and methods
as were used for the Notification of Complaint and Commencement of Administrative
Proceeding.
Having received on March 6, 2001, Mr David Perkins' Declaration of Impartiality
and Independence and his Statement of Acceptance, on March 8, 2001, 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 March 22, 2001. 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 paragraph
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 Policy, the Rules and
the Supplemental Rules.
4. Factual Background
4.1 The Complainants
4.1.1 The Complainant, ISL
No details are given in the Complaint in relation to ISL, save that it appears
from the exhibits filed with the Complaint that ISL represents the Co-Complainant,
FIFA, in certain respects including marketing.
4.1.2 The Complainant, FIFA
History and Activities
FIFA was formed in Paris in 1904. It is the governing body of the sport of
Association Football, commonly known as soccer and today represents 204 countries
worldwide [its Member Associations]. FIFA is the originator and organizer of
a number of world and European soccer championships including, in particular,
the World Cup, the Olympic Football Tournament, the World Youth Championship,
the Under 17 World Championship, the FIFA / Confederations Cup, the FIFA Futsal
World Championship and the FIFA Club World Championship.
FIFA Sponsors
Many major corporations sponsor FIFA. This was the result of a marketing policy
introduced by FIFA in the late 1970s. FIFA's sponsors help the organization
of world championships with supplies not only of football - technical equipment
such as footballs and referees' equipment, but also of modern office and audio-visual
equipment, cars, stadium installations and other products and services. They
support the promotion of the event and the sport itself by projects and advertising
campaigns. Official Sponsors for the FIFA World Cup 2002 to be held in Korea
and Japan include ADIDAS, BUDWEISER, COCA-COLA, FUJIFILM, GILLETTE, HYUNDAI,
JVC, MASTERCARD, and McDONALDs.
Television Coverage
The FIFA World Cup is said to be the No. 1 sports event in terms of television
viewing. The figures for the 1998 World Cup held in France reached 33.4 billion,
the 1998 final alone being watched by 1 billion viewers. The transmission time
totalled 29,700 hours covering 32 teams contesting 64 matches at 10 locations
in France.
The US and IR marks claim priority of November 8, 1994 from the original Swiss
Application of that date. Undoubtedly, the FIFA mark is exceptionally well known
worldwide. In that respect, this Panel adopts the statement made by the Panel
in Case D2000-0363 ISL Marketing and
Federation Internationale de Football Association .v. Jonathan Nutt
"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 FIFA's famous international football championships and as symbols of the
goodwill enjoyed by FIFA in this respect."
The FIFA domain name
FIFA is also the owner of the domain name: "fifa-tickets.com" registered
on July 27, 2000. The Complaint states that through that domain name consumers
will be able to order tickets directly on-line, either through a website or
by email.
Council of Europe Resolution [1999/C196/01 of June 21, 1999]
This consists of a Handbook of working methods designed to increase co-operation
between the police forces of Member States of the European Union to prevent
and control violence and disturbances in connection with international football
matches. Chapter 6 of the Handbook sets out requirements for a ticketing policy.
The Complaint contains the following extracts from that Policy:
"1. Ticketing policy
(…)
The following are the basic requirements to be made of organisers by authorities
and police forces for a responsible ticketing policy:
- the distribution of tickets should ensure that fans of the participating
teams are separated into sections,
- ticket distribution policy, the allocation of tickets among participating
countries, should reflect ticket demand from fans in those countries,
- sales policy should be designed to prevent black-market sales,
- fans should be prevented from buying tickets for a section of the stadium
not designated for them,
- tickets should provide information about the holder of the ticket and its
origin, in other words the history of that ticket.
(…)
2. Ticket control
(…)
- ticketing policy should be designed so that allocation and hence separation
of rival fans cannot be bypassed through the transfer of tickets in any form,
(…)
- stadium bans are enforced by the arrangements for applications for and distribution
of tickets and measures against any form of transfer of tickets issued,
(…)
4. There should be requirements for the distribution of tickets
(…)
- admission tickets should not be transferable,
(…)
- purchasers will not be supplied with more than two tickets. The tickets will
be issued in their names."
FIFA's Ticketing Policy
FIFA has developed a ticketing policy which complies with the Council Resolution.
Because FIFA's Membership is worldwide that ticketing policy applies not only
to Europe but to any FIFA ticket sold anywhere in the world. The terms and conditions
of sale of the tickets are, therefore, universal. The Complaint states that
the tickets are personal to the buyer and that the transfer of tickets is prohibited.
4.2 The Respondent
4.2.1 The Respondent's Business
The Respondent is a ticket broker, who registered the domain name in issue
on January 18, 2000. That domain name resolves to the Respondent's website which
offers to buy and to sell tickets for admissions to concerts, sporting and theatre
events worldwide, including tickets for soccer matches to which the FIFA Ticketing
Policy applies. Other events include American football, hockey, basketball,
golf, rodeo, boxing, tennis, horse racing, autoracing, London, New York and
European theatres and special events, including even the Chelsea Flower Show.
The website prominently states the following:
WESTERN STATES TICKET SERVICE is an independent, privately-owned company engaged
in the service of finding and providing tickets for admission to any and all
concerts, sporting and theatre events worldwide. We are not affiliated with,
nor do we have any licenses or strategic alliances with, nor are we authorised
by any box office, promoter, venue, theatre, stadium, hotel, sporting team
or sporting association. All and any copyrights, trademarks, or trade names
used within this website are for descriptive purposes only. We are not acting
on the authority of or by the permission of any of the above-mentioned entities.
We are able to provide access to tickets for events through our contacts and
various sources. Our prices are much higher than the face value of the tickets.
This reflects the degree of difficulty, and, of course, the cost of obtaining
the tickets. [Emphasis added].
4.2.2. The Respondent states that FIFA traditionally allows a ticket purchaser
to buy four tickets. Because, a purchaser will commonly not use all four, this
is a source of tickets for the Respondent's ticket brokering service. The Respondent
states that the identity of ticket holders is not controlled at the Stadium
so that, in practice, tickets are transferable. Tickets offered on the Respondent's
website as at December 18, 2000 were for the:
FA Cup Final at the Millennium Stadium, Cardiff, Wales
May 12, 2001
UEFA Cup Final at the Westphalen Stadium, Dortmund, Germany
May 16, 2001
UEFA Champions League Finals at the Stadio Giusseppe Meaza, Milan, Italy
May 23, 2001
The Euro Cup at various venues and at a date to be announced
4.2.3. The Respondent's Domain Names
The Complaint exhibits evidence from Network Solution's WHOIS domain name list
that the Respondent owns more than 50 domain names, the majority of which resolve
to the same website as the domain name in issue. The Complaint identifies a
number of these domain names as including well known third party names or trademarks.
In the field of soccer these include:
"acmilantickets.com"
"glasgowrangerstickets.com"
"intermilan-tickets.com"
"newcastletickets.com"
"bayernmunchentickets.com"
"juventustickets.com"
The list also include the following generic soccer domain names:
"soccertickets.com"; and
"footballtickets.com"
as to which, see discussion below.
4.2.4 As to trademark usage, the Complaint also lists the following which
are registered by the Respondent:
WNBA is a registered US trademark of NBA Properties Inc and resolves to The
Women's National Basketball official website.
MLB is a registered US trademark of Major Leaguer Basketball Promotion Corporation.
PATRIOTS is a registered US trademark of New England Patriots L.P.
FLYERS is a registered US trademark of Philadelphia Hockey Club Inc.
76ERS is a registered US trademark of Philadelphia 76ers Basketball Club
Inc
AJAX is a registered US trademark of DeVereniging A.F.C. "Ajax" Company Netherlands
CELTICS is a registered US trademark of Celtics Limited Partnership Boston
Celtics Corporation
4.2.5 As noted in paragraph 4.2.1 above the Respondent's website acknowledges
use of third party trademarks and trade names but asserts that such use is
for descriptive purposes only.
5. The Parties' Contentions
5.1. The Complainants
The Complainants contend that the Respondent has registered as a domain name
a mark which is identical or at least confusingly similar to the Complainants'
FIFA trademark and service mark, that the Respondent has no rights or legitimate
interests in respect of the domain name in issue, and that that domain name
was registered and is being used in bad faith.
5.2. The Respondent
The Respondent states that the Complainants fail to meet any of the criteria
set out in paragraph 4(a) of the Policy.
5.3. Correspondence between the parties preceding the Complaint
ISL wrote on September 6, 2000, by email to the Respondent requesting transfer
to FIFA of the domain name in issue in consideration for payment of the Respondent's
out of pocket costs directly related to the domain name. The Respondent's
attorneys replied by email on September 22, 2000, pointing out the disclaimer
[see above] on the Respondent's website, denying that use of the domain name
in issue is likely to lead to confusion and offering to discuss any concerns
the Complainants might have as to the adequacy of that disclaimer. ISL answered
by email on September 25, 2000, taking issue with the relevance of the disclaimer,
pointing to attempted resale by the Respondent of tickets for the 2002 FIFA
World Cup Korea / Japan (constituting breach of the terms and conditions for
sale of those tickets) and reiterating the request for transfer of the domain
name in issue to FIFA.
The Respondent's attorneys responded by email on October 11, 2000, referring
to almost identical issues regarding other domain names in arbitration
and suggesting that both parties take no action until the decision in the
other administrative proceeding is made. The Panel assumes this to be a reference
to Case D2000-0930 referred to above.
6. Discussion and Findings
6.1. The Policy, paragraph 4(a), provides that the Complainants must prove
each of the following:
that the Respondent's domain name is identical or confusingly similar to
a trademark or service mark in which the Complainants have 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
6.2.1 The Complainants' Case
The Complainants' case is that the prefix of the domain name in issue, FIFA,
is the trademark and the distinguishing element of the name. The suffix TICKETS
is merely a descriptor. The public will undoubtedly connect the domain name
in its entirety with FIFA and the disclaimer will either not be effective to
distinguish the Complainants' activities with the ticket booking business of
the Respondent or will merely confuse.
The Complainants cite in support of the proposition that the addition of
a generic term does not avoid confusing similarly for the purposes of paragraph
4(a)(i) of the Policy the following Decisions under the UDRP.
Case
Domain Name in Issue
Complainant's Trademark
D2000-0123
"buyserta.com"
SERTA
D2000-0435
"olympiconlinestore.com"
OLYMPIC
D2000-0494
"buyguerlain.com"
GUERLAIN
D2000-0826
"betwilliamhill.net"
WILLIAM HILL
D2000-0878
"canoninkjet.com"
CANON
D2000-1126
"buychanel.com"
CHANEL
In each of these Decisions the generic descriptor was held not to avoid confusing
similarity with the Complainant's trademark.
The Complainants also cite Case D2000-0700
National Collegiate Athletic Association & Anor .v. Mark Halpern & Anor
which involved the domain names;
"finalfourtickets.net";
"finalfour-tickets.com";
"finalfour-tickets.net";
"ncaatickets.org"; and
"finalfourticketsforsale.com"
wherein the Panel concluded:
"Halpern and Front & Center expect consumers to recognise the marks NCAA
and FINAL FOUR and as a result visit their sites. It is highly likely that
anyone interested in acquiring tickets via the Internet to an NCAA event,
and more specifically to the Final Four collegiate basketball tournament,
would start a search with NCAA or FINAL FOUR. A searcher may well expect tickets
to be used by NCAA in connection with its marks. The record here is more than
sufficient to support the conclusion of identity or confusing similarity under
paragraph 4a(i)."
The above finding was made, notwithstanding the fact that, as in this administrative
proceeding, the Respondent's website carried a Disclaimer:
"The National Collegiate Athletic Association (NCAA)® has neither licensed
nor endorsed Front & Center Entertainment Group to sell goods and services
in conjunction with NCAA Championships."
6.2.2 The Respondent's Case
The Respondent's case is as follows:
"fifatickets.com" and the Complainants' FIFA trademark are not
identical.
Addition of the suffix TICKETS to the domain name in issue serves a dual
purpose;
to direct people wishing to purchase tickets to the WESTERN STATES TICKET
SERVICE website; and
to limit persons visiting the website through that domain name to those interested
in purchasing tickets.
The Disclaimer is designed to indicate to such potential purchasers that
the website is only concerned with re-sale of tickets and that it does not contain
anything to do with FIFA or information about FIFA. Thus, the domain name in
issue will avoid consumer confusion as between the business of WESTERN STATES
TICKET SERVICE and the activities of FIFA.
The use of the Complainants' FIFA trademark in this way is no more than fair
use. Such use is limited to the re-sale of tickets to two major events staged
by the Complainants, the European Championship and The World Cup. The Respondent
cites in support of its fair use defence the case of Playboy Enterprises
Inc .v. Terri Welles Inc 78F Supp. 2d 1066 (S.D. Cal. 1999).
The Plaintiff held registered US trademarks for PLAYBOY: PLAYMATE: PLAYMATE
OF THE MONTH; and PLAYMATE OF THE YEAR. Although sometimes the latter registration
was abbreviated to PMOY, the Plaintiff had no registration for that abbreviation.
The Plaintiff nevertheless contended that it owned common law trademark rights
in PMOY.
The Defendant, formerly Playmate of the Year 1981, operated a website
under the domain name "www.terriwelles.com", the website
being headed Terri Welles Playmate of the Year 1981. Each page of the
website used as a background watermark the abbreviation PMOY'81. The court
held that this constituted fair use under the US Statute because;
the Defendant had used that title since 1981 without objection from the Plaintiff;
she minimised her references to the Playboy organisation on her website;
she did not attempt to trick consumers into believing that they are viewing
a Playboy website endorsed by the Plaintiff;
her domain name "terriwelles.com" does not use either of
the Plaintiff's PLAYBOY or PLAYMATE trademarks, nor the Plaintiff's bunny
logo;
her website contained a disclaimer clearly stating that it was not endorsed
by the Plaintiff;
such uses as were made of the PLAYBOY and PLAYMATE trademarks
as meta tags to the Defendant's website were legitimate references to her identity
as Playboy Playmate of the Year 1981 and were also legitimate editorial
uses and did not constitute infringement of those marks. Use of the meta tags
was in good faith to index the marks content of her website;
her use of the terms Playmate of the Year 1981: PMOY'81: PLAYBOY and
PLAYMATE in connection with her website were not likely to cause websurfers
to believe that her website was endorsed or sanctioned in any way by the Plaintiff's
PLAYBOY organisation, even though the PLAYBOY and PLAYMATE marks are
strong trademarks. There was no identical use of those marks by the Defendant
nor did the Plaintiff produce any evidence of actual confusion; and
because the Defendant's use of the Plaintiff's trademarks was fair use,
there could be no dilution of those marks.
The Court denied the Plaintiff the preliminary injunction sought, finding
that
"… there is not a strong likelihood of success on the merits."
The Court characterised fair use as a defence which;
"… in essence, forbids a trademark registrant to appropriate a descriptive
term for his exclusive use and to prevent others from accurately describing
a characteristic of their goods."
It cited Justice Holmes in Prestonettes .v. Coty 264 US 359, 368 (1924)
"When the mark is used in a way that does not deceive the public we see no
sanctity in the word as to prevent it being used to tell the truth. It is
not taboo."
6.3 Rights or Legitimate Interests
6.3.1 The Policy paragraph 4(c) provides that any of the following circumstances,
in particular but without limitation, shall demonstrate rights or legitimate
interests to the domain name for the purposes of paragraph 4(a)(ii);
(i) before any notice to you of the dispute, your use of, or demonstrable
preparation 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
(ii) you (as an individual, business or other organisation) have been commonly
known by the domain name, even if you have acquired no trademark or service
mark rights; or
(iii) you are 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 trademark or service mark at issue.
6.3.2 The Complainants' Case
The Complainants' case is as follows:
The Complainants have not licensed or otherwise permitted the Respondent
to use its trademarks or to apply for or use any domain name incorporating
its trademarks,. The Complainants cite the Decision in The Stanley Works
and Stanley Logistics Inc .v. Camp Creek Co IncD2000-0113.
In that case the disputed domain names were "stanleybostich.com"
and variants incorporating the trademarks BOSTITCH and STANLEY and "bostitch.net"
and variants of the BOSTITCH trademark. Both marks had been in use by the
Complainant for over 70 years. The Respondent used the domain names in issue
for websites at which the Respondent offered to sell certain STANLEY BOSTITCH
products, having been [according to the Respondent] an authorised retailer
for such products since 1991. In fact, the Panel found little evidence
that the Respondent was an authorised retailer. As to paragraph 4(a)(ii) of
the Policy, the Panel held:
Moreover, even if Respondent is a retail seller of Complainant's products,
the collateral trademark use necessary to allow resell of Complainant's products
is not enough to give Respondent proprietary rights in Complainant's trademarks,
and certainly not enough to confer the right to use these trademarks as domain
names. Many famous trademarks designate goods that are manufactured and sold
through numerous retail stores. But this, without something more such as authorisation
in a licensing agreement or other special circumstance, does not give the
retail sellers rights of domain name magnitude over the manufacturer's trademarks.
The Respondent has never been commonly known by the domain name in issue,
nor has the Respondent acquired any trademarks rights in that name.
The Respondent, by its own admission [see, the Disclaimer quoted above],
has no authorisation to promote FIFA's products nor to use the FIFA trademark.
Use of the domain name in issue cannot, therefore, be fair use within
paragraph 4(c)(iii) of the Policy. The Complainants rely upon the Serta Case
[see above] where lack of legitimate interest was found on the basis of
the Respondent's lack of authorisation by the trademark owner to promote
its products or use of its trademark;
the Respondent's knowledge of the Complainant's trademark rights; and
where the Respondent was trading in tickets of and held itself out as trading
in tickets of the Complainant.
The Complainants also rely upon Case D2000-0700 [see above] in relation
to paragraph 4(c)(iii) of the Policy. In that case the Respondents relied upon
their established reputation as ticket-brokers for premium NCAA events; the
Disclaimer [the text of which is quoted above] as constituting fair use
of the NCAA and FINAL FOUR trademarks; and the domain names were only a feeder
to websites providing consumers substantial benefits not provided by the NCAA.
In that Case the Panel referred to the Decision in Stanley Works as
instructive in terms of its approach to paragraph 4(a)(ii) of the Policy.
The Panel then went on to hold:
Halpern and Front & Center clearly intend to attract customers to their
primary websites for the purposes of commercial gain. They intend to do so
by taking commercial advantage of the goodwill associated with the NCAA marks
which forms part of their domain names. It is difficult to believe that consumers
are not misled by this use of the NCAA marks. Halpern and Front & Center
expect consumers looking for NCAA tickets to be led to the Halpern and Front
& Center sites simply because of the inclusion of the NCAA marks in the
domain names in issue. Such customers are necessarily misled by those domain
names because they are not directed to an authorised NCAA site, but rather
to Halpern and Front & Center's primary sites, where NCAA tickets are
offered without authorisation from NCAA and where other tickets, goods and
services are offered.
….
Halpern and Front & Center's use of the NCAA and FINAL FOUR marks in
the domain names in issue is commercial, is not authorised, and is with the
intent to divert consumers to the Halpern and Front & Center primary sites
which offer not only NCAA tickets but also other goods and services not sanctioned
by NCAA. Thus, consumers are misled.
6.3.3 The Respondent's Case
The Respondent's case is that it has a legitimate interest in the domain
name in issue as evidenced by its use of that name to identify the tickets
and service sold and delivered by them. The Respondent is selling items originated
by FIFA and is using the FIFA trademark to identify the source of the items.
In this respect, the Respondent cites Adaptive Molecular Technologies
.v. Priscilla Woodward,Case D2000-0006.
In that case, the domain name in issue was "militec.com" and the
Complainant was the owner of a US registered trademark for MILITEC
and logo for lubricants in Classes 1 & 4, together with corresponding
registered trademarks for the mark MILITEC-1 in many other countries
worldwide.
The Respondent was selling genuine bottles of the Complainant's MILITEC-1
metal conditioner offered at its "militec-1.com" website,
the only content of that website being to promote the product. The website
clearly stated;
This Site is Owned & Operated by Machines & More
The Panel held that the Complainant failed to satisfy the requirements of
paragraph 4(a)(ii) of the Policy, stating
Under these circumstances and on this record, it cannot be concluded that
Respondent has no rights or legitimate interests in the domain as is required
under the Policy. While Respondent does not own MILITEC as a trademark, questions
remain as to whether Complainant has legally acquiesced in Respondent's registration
and use of the domain, at least initially or whether Respondent's use is nominative
fair use. Acquiescence and fair use are principles of trademarks law, each
requiring full analysis of the underlying facts. These are issues for the
Courts.
The Respondents in the NCAA Case [Case
D2000-0700 referred to above] also relied upon the Decision in Case
D2000-0006 in support of both its fair use and lack of bad faith
defences. In its Decision in the NCAA Case the Panel preferred to follow
the Panel in the Stanley Case.
6.4 Registered and Used in Bad Faith
6.4.1 Paragraph 4(b) 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;
(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of your documented out-of-pocket-expenses
directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct;
or
(iii) you have registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your website or on-line location, by
creating a likelihood of confusion with the Complainant's mark as to the source,
sponsorship, application, or endorsement of your website or location or of
a product or service on your website or location.
6.4.2 The Complainant's Case
The Complainant's case is as follows:
When registering the domain name in issue on January 18, 2000, the Respondent
knew of the Complainants, their activities and the famous FIFA trademark.
Whether or not the Respondent is able to trade legitimately in tickets for
the FIFA World Cup and other FIFA events, the Respondent could accomplish this
by using a domain
adequately reflecting both the object and independent nature of its site,
as evidenced today in thousands of domain names [Compagnie de Saint Gobain
.v. Com-Union Corp Case D2000-0020]
The fact that the Respondent registered knowingly a domain name that incorporated
the Complainants' FIFA trademark is itself evidence of bad faith [Case
D2000-0494Guerlain SA .c. H I Investments where the domain name
at issue was "buyguerlain.com".]
The similarities between GUERLAIN and the domain name cannot result from
a mere coincidence. While Respondent could have chosen a million of other
names for his company and his online store he precisely chose a domain name
incorporating Complainant's name so as to be identical or at least extremely
confusingly similar to Complainant's trademark. By knowingly choosing a domain
name consisting of Complainant's trademark preceded by the verb "to buy",
Respondent intentionally created a situation which is at odds with the legal
rights and obligations of the parties.
The offering by the Respondent of tickets to FIFA's events or tournaments
violates FIFA's ticketing policy, its terms and conditions of sale and Chap.
6 of the Council Resolution of June 9, 1999. Consequently, purchasers of FIFA
tickets bought through the Respondent's WESTERN STATES TICKET SERVICE website
could be refused access to FIFA's events, which could have a negative effect
on FIFA's image and the concept of quality and value connected to the FIFA trademarks
in the mind of the public. This amounts to use in bad faith of the domain name
in issue contrary to paragraph 4(b)(iv) of the Policy.
The Respondent has registered over 50 domain names, most of which are linked
to the same WESTERN STATES TICKET SERVICE website and incorporate famous trademarks
and names. Linking to that website all of these domain names, which on their
face offer access to tickets related to specific events, is designed to increase
traffic to the website and is misleading to the Internet user.
The Complainants' cite the NCAA Case [Case
D2000-0700]. The Panel in its Decision in that case held:
On balance, however, the record here shows that likelihood of confusion is
what Halpern and Front & Center count on.
…
Overkill in registering domain names incorporating well-known trademarks
for commercial purposes logically leads to an inference of bad faith registration
and use.
Halpern and Front & Center's conclusory contentions that their consumers
are sophisticated and know they must go to a ticket reseller for hard to find
and premium NCAA tickets are not dispositive on the issue of likelihood of
confusion as to source or endorsement of their websites incorporating the
NCAA and FINAL FOUR marks … . Not until a consumer searches on one of the
domain names in issue and actually visits the site associated with the domain
name, will the consumer learn that the site is not an authorised NCAA site,
or is no site at all. Indeed, the consumer will be channelled to Halpern's
and Front & Centre's primary sites - not to an authorised NCAA site.
Initial confusion is enough to demonstrate bad faith under paragraph 4b(iv).
Initial attraction is what Halpern and Front & Center are counting on.
Consumers are likely to be drawn to Halpern's and Front & Center's FINALFOURTICKETS.NET
in the belief that Final Four tickets will be transferred.
6.4.3 The Respondent's Case
The Respondent's case is as follows:
A profit motive by the Respondent is insufficient to establish bad faith.
The Respondent cites Case D2000-0006.
See, the MILITEC case.
The use of the suffix tickets distinguishes the domain name from the
Complainants' FIFA trademark.
The Respondent's website contains an appropriate disclaimer of affiliation
with the Complainants.
The Respondent has legitimate interests in the domain name in issue, since
he is using it to identify the tickets and services sold. The tickets sold are
genuine tickets issued by FIFA. This is arguably fair use and is for
determination by the Courts [see, Case D2000-0006].
The Complainants' have failed to establish the grounds necessary to satisfy
paragraph 4(a)(iii) of the Policy. The Respondent cites Do the Hustle LLC
.v. Tropic Web, Case D2000-0624. In
that case, the domain names in issue were "polyester.co" and
"pollyesters.com" and the Complainant's registered marks were
POLLY ESTHER'S for bars and restaurants and POLLYESTHERS for T-Shirts and baseball
caps.
The Respondent had registered over 50 domain names, virtually all of which
were descriptive or generic in nature. It was a start-up web development company.
Although the domain names at issue did not all resolve to active websites,
the Respondent had developed 6 websites and planned to develop more. The Respondent
claimed that the Complainant's trademark was phonetically identical to polyester
and that Polly and Esther are common first names. Moreover,
it was the nickname for a member of the Respondent's family.
Held, that the first 2 limbs of paragraph 4(a) of the Policy were satisfied
by the Complainant but that the third limb - bad faith registration and use
- was not.
In this case, the Panel finds that where (1) the trademarks and service marks
asserted by the Complainant are weak and where they are homophones of a generic
term, (2) the domain names registered by the Respondent are generic or descriptive
terms, rather than obvious trademarks or service marks, (3) the Respondent
is already making use of some of the domain names it registered … the Complainant
has failed to prove that Respondent's inaction constitutes bad faith registration
and use of the domain names in issue.
The Case is authority for the proposition that in relation to the 3 limbs
of paragraph 4(a) of the Policy, it is for the Complainant to prove that each
of the elements are present. But,
a Panel is not required to blindly accept assertions offered by a Respondent,
any more than it is required to accept unsupported assertions offered by a
Complainant. It is especially important under this procedure to test Respondent's
assertions for evidentiary support and credibility, since normally the Complainant
has no opportunity to counter the Respondents assertions, while the Respondent
does have the opportunity to counter those of the Complainant.
In this case, the Respondent asserts that FIFA has totally failed to deal
with its fair use defence under US law, which it claims is a complete
defence to the Complaint. The relevant US provision is that
bad faith intent … shall not be found in any case in which the court determines
that a person believed that the use of the domain name was a fair use or otherwise
lawful.
The Respondent relies upon the Playboy case discussed above and asserts
that, on the facts of this case, it has a complete defence under paragraph
4(b) of the Policy because
- the domain name in issue was used by the Respondent to promote the resale
of tickets to FIFA events prior to the notice of dispute from the Complainants,
- so that such use is fair use for the purposes of paragraph 4(a)(ii)
of the Policy, applying paragraph 4c(i) of the Policy. Further,
- the Respondent has not offered to sell the domain name in issue to the
Complainants at an over value [paragraph 4b(i) of the Policy];
- the Respondent did not register the domain name in order to prevent FIFA
from reflecting its trademark in a corresponding domain name [paragraph 4b(ii)
of the Policy]; nor
- has the Respondent interfered with use of the FIFA trademark by the Complainants
[presumably, paragraphs 4(b)(iii) and/or (iv) of the Policy].
6.5 Findings under paragraph 4a(i) Policy : identical or confusingly similar
6.5.1 The Respondent does not contest that the Complainants' have rights
in the FIFA trademark.
6.5.2 The Panel considers that the domain name in issue is, to all intents
and purposes, identical to the Complainants' FIFA trademark. The suffix tickets
is merely a descriptor. The Respondent has taken the trademark. That it has
added a descriptive suffix does not change the fact that the domain name in
issue incorporates the FIFA trademark in its entirety.
6.5.3 In any event, the Panel also finds that the domain name in issue is
confusingly similar to the FIFA trademark and finds the Decisions under the
UDRP cited above to be persuasive.
6.5.4 As to the Playmate case upon which the Respondent relies in
support of its contention that their use of the domain name is legitimate
fair use under US law, the Panel's view is as follows:
National case law is not determinative for the purpose of Decisions under
the Policy. It is one only of the considerations to be considered
A 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 [Rules, paragraph 15(a)].
The Playmate Decision was concerned with a motion for a preliminary
injunction. Although the Court held that the Plaintiff's case did not show
… a strong likelihood of success on the merits …
at trial, it has to be seen for what it was, namely a Decision applying the
criteria applicable to adjudicating on motions for preliminary relief.
By comparison with this administrative proceeding, in the Playmate
case Ms Welles was not making use of the Plaintiff's trademarks in her domain
name. She used her own identity for that purpose, namely "www.terriwelles.com"
The Plaintiff's two websites used the domain names
" www.playboy.com"; and
"www.cyber-playboy.com"
It appears that the Plaintiff, at least at first, consented to Ms Welles
use of the PLAYBOY etc trademarks in the context of her website, which was headed
TerriWelles Playmate of the Year 1981
That was a true description of Ms Welles' identity.
Here the FIFA trademark is being used as the Respondent's domain name. By
contrast, in the Playmate case the Plaintiff's trademarks were being
used as legitimate meta tags.
Use of a third party's trademark as a domain name does not amount
to use of FIFA to characterise the goods. This would be a very different
case if, for example, the Respondent was using its domain name
"soccertickets.com"
and the website offering tickets to events staged by FIFA used the trademark
solely to describe the tickets as such.
This is, the Panel believes, consistent with case law in the European Union
not cited by either of the parties. Take, for instance, the Decision of the
European Court of Justice in BMW .v. Deenik [Case C-63/97 1999 1 CMLR
1099] of February 1999. This concerned a mechanic and trader [Deenik] in second-hand
/ used BMW automobiles, who was not a part of BMW's authorised Dealer Network.
He was also involved with the repair / servicing of BMW vehicles. Was Mr Deenik
entitled to promote his activities using the name / descriptor "BMW Specialist"?
Held, that a party can make use of a third party trademark only where
necessary to indicate the origin of the goods or services. Such was fair
use. It was not fair use to advertise the business as "BMW Specialist"
when this was not necessary and could well be understood as indicating that
Mr Deenik was an authorised BMW Distributor / Repairer, which he was not.
One of the provisions involved was Art. 7 of the EC Trademark Directive,
a provision which limits the effects of a trademark. This provides:
The trademark shall not entitle the proprietor to prohibit a third party
from using, in the course of trade,
…
(b) indicators concerning the kind … intended purpose … of rendering of a
service, or other characteristics of goods or services;
(c) the trademark where it is necessary to indicate the intended purpose
of a product or service, in particular as accessories or spare parts;
provided that he uses them in accordance with honest practises in industrial
or commercial matters.
· Held, that it was contrary to Art. 7 for the proprietor of
a mark to prohibit the use of its mark to advertise specialisation in the
sale of second-hand vehicles bearing the mark, provided that the manner in
which the mark was used did not give rise for a legitimate reason for opposition
under the above proviso - namely, the use must be in accordance with honest
practises in industrial or commercial matters. Use of the mark suggesting
a commercial connection between the advertiser and the mark's proprietor was
capable of constituting such a legitimate reason for opposition. Whether in
fact such a suggestion was created was a matter of fact for the National Court
to decide. The mere fact that the use of a mark in otherwise honest and fair
advertising lent an aura of quality to the advertiser's business did not constitute
a reason for opposition.
Thus, what amounts to the equivalent under European trademark law of fair
use is in fact an issue for the National Court. An example of how this has
been applied by a National Court in the context of domain names arose in a decision
of August 18, 2000 by the Maritime and Commercial Court in Copenhagen, Denmark
in the case of Montres Rolex .v. John Fogtmann.
The facts were that Montres Rolex owned trademarks for its famous ROLEX watches.
Mr Fogtmann operated a business selling second-hand ROLEX watches using the
domain name
"www.rolex.dk"
Mr Fogtmann's homepage read, inter alia,
We have always got DENMARK'S LARGEST selection of prestigious Swiss quality
watches. John Fogtmann is Denmark's largest reseller of second-hand Rolex
watches.
It also contained the following Disclaimer:
Rolex.dk is not in any way affiliated with the Swiss company, Montres Rolex
SA.
The Copenhagen Court considered the provision of the Danish Trademark Act,
which implements the EC Directive under which the BMW .v. Deenik case
was decided, together with a provision of the Danish Marketing Practices Act.
The Court also considered the Court of Justice Decision in the BMW case.
Held, use by Fogtmann of the domain name in issue amounted to infringement
of the ROLEX trademark, precisely as the Court of Justice had held that Deenik's
use of the BMW mark constituted a trademark infringement. Fogtmann's use also
contravened proper marketing practices because it gave an incorrect impression
of his relationship to the business of Montres Rolex, such that his business
might be confused with that of Montres Rolex or incorrectly linked to it,
his only reason for using the ROLEX name and mark being to exploit the reputation
attached to it. The Court did not consider that the Disclaimer of affiliation
on Fogtmann's homepage was effective because the domain name operated as a
key and shop front on the Internet which aroused commercial interest
of would-be consumers with his business. The Court duly injuncted Fogtmann
from continued use of the rolex.dk domain name.
6.5.5 In the Panel's view, this is a simple and straightforward issue. The
Respondent can re-sell genuine tickets subject to local laws. The Panel makes
no finding as to whether the Respondent's offer for sale and sale of FIFA
tickets contravenes the terms and conditions of the sale of those tickets
and/or local laws. Such finding is not necessary to this Decision.
6.5.6 The Respondent can refer to the FIFA mark to describe genuine tickets.
But, importantly, this can be accomplished through, as here, a website bearing
a non-infringing title - WESTERN STATES TICKET SERVICE - and using a generic
or other domain name that does not infringe the Complainants' trademarks.
Is this hopelessly impractical? Not at all. As with any other commercial enterprise,
a website owner is able to advertise its goods and services. There is no need
to piggyback on a trademark owner's investment and rights in his trademark.
The Complainants' have satisfied the requirements of paragraph 4a(i) of the
Policy.
6.6 Findings under paragraph 4a(ii) Policy: rights or legitimate interests
6.6.1 The Stanley Works and Adaptive Molecular Technologies
Decisions under the UDRP are at odds with each other. This Panel finds the
Panel's reasoning in Stanley Works both more persuasive and more apposite
to this administrative proceeding. It is also consistent with the Decisions
in the NCAA and BUYSERTA cases, which the Panel also finds persuasive
and in point.
6.6.2 In any event, the Adaptive Molecular Technologies case can in
this Panel's opinion, be distinguished upon the bases that, by comparison,
in this case there is no suggestion of acquiescence by the Complainants to
use of the trademark; that here there is no fair use of the type found
by the US Court to apply in the Playmate case; and that it has not
been followed or applied in a number of Decisions under the UDRP including
the Stanley Works and NCAA cases, both of which this Panel finds
well reasoned and convincing.
6.6.3 Because the Panel does not consider the Respondent's use of the FIFA
trademark as a domain name to constitute fair use, the offering of
goods through that domain name is not bona fide either. The Respondent
does not satisfy any of the circumstances of paragraph 4(c) of the Policy.
6.6.4 Consequently, in the Panel's view the Respondent has failed to show
rights or legitimate interests in the domain name in issue.
6.7 Findings under paragraph 4a(iii) Policy: registration and use in bad
faith
6.7.1 The Panel has no quarrel with the Decision in the Do the Hustle
case as to where the burden of evidence lies and how that evidence is to be
assessed. As to the outcome of that Decision, it can readily be distinguished
from this administrative proceeding on the ground that here FIFA is a well-known
mark and on other substantial differences of fact.
6.7.2 The Panel finds the quoted extract from the Findings in the Guerlain
case both persuasive and applicable to the facts in this administrative proceeding.
As established in the Telstra case [D2000-0003]
and followed consistently in subsequent Decisions under the Policy, the examples
in paragraph 4(b) of the Policy are intended to be illustrative, rather than
conclusive of bad faith registration and use. The considerations held to be
relevant in the NCAA case quoted above apply with equal force to the facts
in this administrative proceeding.
6.7.3 The Panel does not find the Respondent's Disclaimer effective for the
purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount
to committing a tortuous act but then seeking to avoid liability after
the event. It is only by unauthorised use of the trademark that the potential
customer is brought to the website (containing the disclaimer) in the first
place. In the NCAA case the Panellist correctly found that the disclaimer
failed to avoid confusing similarity or to negative unauthorised use of the
NCAA and FINAL FOUR trademarks.
6.7.4 For the reasons identified above, the Panel does not find that the
Playmate case applies to the facts of this administrative proceeding
or that the Respondent's use of the FIFA trademark as a domain name is fair
use or bona fide use in any event.
6.7.5 In the Panel's view the domain name in issue was registered and is
being used in bad faith.
6.8 Case D2000-0903
The Panel has read and considered the Decision in Case No. D2000-0903 issued
March 9, 2001, in NCAA .v. Randy Pitkin et al. This is the administrative
proceeding referred to Section 3 above. The Decision in that case hinges on
paragraph 4(a)(ii) of the Policy "rights or legitimate interests". This issue
concerns the suffix tickets added to the Complainant's FINAL FOUR trademarks,
for example in the form of the domain name "final4-tickets.com",
for a website offering to resell genuine NCAA tickets. The Respondents' case
was essentially the same as in this administrative proceeding, namely that to
allow all potential consumers the opportunity to purchase the available tickets,
the language describing them must be understandable by the consumer. The Respondent
in this administrative proceeding was added as a Co-Respondent in Case D2000-0903.
Because the parties to that administrative proceeding were both domiciled
in the United States, the Panel looked - as the Rules entitle them to - to rules
and principles set out in decisions of the courts of the United States, This,
of course, is entirely proper. In this administrative proceeding where the parties
are domiciled in both the United States and Europe, the Panel has considered
it appropriate to consider both the US authority cited by the Respondent and
counterpart case law in Europe.
By a majority decision the Panel in Case D2000-0903 found for the
Respondents under paragraph 4(a)(ii) Policy applying the US doctrine of fair
use. Their Decision states that the Complainant [NCAA] only addressed the
fair use defence with an unsupported assertion that
The Respondents are able to conduct their business without using the NCAA
trademark.
The majority of the Panel were persuaded by the Panel Decision in Adaptive
Molecular Technologies [Case D2000-0006]
and found that the Respondents succeeded in bringing themselves within the
criteria of paragraph 4(c)(iii) of the Policy. The Respondents' use of the
NCAA trademarks was a fair use because the NCAA is identified as the
source of the tickets and any relationship between the NCAA and the Respondents
was disclaimed. This Panel finds that somewhat at odds with the Panel's finding
that
"… because the phrases "seats" and "tickets" are readily identifiable
with sporting events, their addition to the entirety of the trademarks may
not prevent confusion among users." [Emphasis added]
It seems to this Panel that such possibility of confusion does not sit readily
with making legitimate fair use.
The Panel in Case D2000-0903 however
rely in support of their majority fair use finding on the Playboy
case, specifically that use of the PLAYMATE and PLAYBOY words in the keyword
section of meta tags has a similar effect as the use of such words in the domain
name. That may well be the case but, in this Panel's view, that is not
the issue. In the Playboy case Ms Welles used an entirely different domain
name, which bore no relation to the Complainant's trademarks. Here, we are concerned
with the Policy applied to use of domain names, not meta tags. This Panel
believes that the Playboy case can and should be distinguished from the
facts of this administrative proceeding as regards applicability of the US fair
use doctrine.
But, unlike the majority Panellists in Case D2000-0903 this Panellist
is not a US lawyer and, therefore, is concerned to depart from the majority
view on the Playboy case to reach a contrary decision in this administrative
proceeding. However, as stated, this Panellist considers that other principles
of law - in this case, European law - should also be considered. The Rolex
decision of the Danish Court was made against the principles laid down by the
Court of Justice in BMW .v. Deenik and, furthermore, was specifically
concerned with use of a domain name which both infringed the ROLEX trademark
and contravened fair marketing practices. This Panel also agrees with the reasoning
of dissenting panellist, Page, in Case D2000-0903 in relation to paragraphs
4(a)(ii) and 4(c)(iii) of the Policy.
For all the foregoing reasons, the Panel respectfully disagrees with the
majority in Case D2000-0903. That majority's finding under paragraph
4(a)(iii) of the Policy followed their finding on the fair use point.
In the same way that dissenting panellist, Page, found for the NCAA under paragraph
4(a)(iii) of the Policy, this Panel has also found for FIFA under the bad faith
requirements of that paragraph and sees no reason to alter that finding in the
light of the majority decision in Case D2000-0903. Whilst this Panel
appreciates that it is undesirable for there to be inconsistency of decisions
under the Policy, Panellists are not bound by other Panel decisions. Principles
of law other than US law are touched upon in this Decision and future Panels
may regard them as worthy of consideration. Ultimately, of course, an aggrieved
party can have recourse to the Court(s) of any appropriate jurisdiction(s).
7. Decision
For all the foregoing reasons, the Panel finds that the Complainants have
succeeded in establishing the 3 requirements of paragraph 4(a) of the Policy
and directs that the domain name in issue "fifatickets.com" be transferred
to the Complainant, FIFA.
David Perkins
Panellist
Dated: March 23, 2001
Footnote:
1. IR 633,108 covers 36 countries including France, Germany,
Benelux, China, Egypt, Spain, Poland, Italy, Portugal etc.
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