WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V.
Case No. D2000-0230
1. The Parties
The First Complainant is ISL Marketing AG ("ISL"). The Second Complainant is the Union des Associations Européennes de Football ("UEFA"). ISL and UEFA collectively are referred to herein as the "Complainants".
Respondent is European Unique Resources Organisation 2000 B.V., hereinafter referred to as "Respondent".
2. The Domain Name and Registrar
The domain name the subject of this Complaint is euro2000.com.
The Registrar is Network Solutions, Inc.
The Remedy sought by Complainants is transfer of the domain name euro2000.com to UEFA.
3. Procedural History
On March 30, 2000, (by e-mail) and April 3, 2000, (in hard copy) the Complainants submitted to the WIPO Center a Complaint under the Uniform Policy and the Uniform Rules. Panelists agree that payment was properly made, that the Center rightly assessed the Complaint's compliance with the formal requirements; that the Complaint was properly notified in accordance with paragraph 2(a) of the Rules. Having obtained an extension of the term, Respondent submitted a Response on May 11, 2000, (by e-mail) and on May 12, 2000, (in hard copy). Respondent elected to have this case decided by a three-member panel. The Panel agrees that it was properly constituted and, that all Panelists submitted a Statement of Acceptance and Declaration of Impartiality. The Panel further acknowledges that on May 18, 2000, Complainants submitted a "Correction of Misstatements of Facts, Submission of Recent Case Decision and Designation of Panelists", and at the same date Respondent submitted a "Respondent's Objections to Correction of Misstatement of Facts submitted by the Complainant".
The Panel also acknowledges that other proceedings were brought by UEFA against Respondent before the Justice Court of Paris, France. On June 13, 2000, the latter court rejected UEFA's claims. Having been informed of this decision, the Panel issued on June 16, 2000, an order asking the parties to submit copies of the French decision, together with an English translation and their comments. Complainant submitted these documents and comments on June 23 and Respondent on June 26.
While it may have been more significant to have rendered the Panel's decision prior to the Euro 2000 soccer event, the controversy between the parties went on for some four years before the complaint was filed. Complainant may have filed its complaint immediately upon the coming into force of the Policy, but did not. Complainant also elected to file a parallel court case before the Court of Paris, thus creating the possibility of an interference between the two procedures. Finally, both parties did not comply immediately with the Panel's order to file documents and comments about the Paris judgement, and another week was lost.
4. Factual Background
UEFA is one of the six continental confederations recognized by the Fédération Internationale de Football Association (FIFA), the world governing body of football (called "soccer" in the U.S. and in this opinion). UEFA organizes several soccer competitions, including - every four years - a European championship for national teams. Such championship to be held in the year 2000 is commonly called Euro 2000. UEFA owns trademarks and service marks for EURO 2000 in Benelux, and one international registration (two of the former were registered in the name of the national soccer associations, of the Netherlands and Belgium, where the Euro 2000 event will be held, and further assigned to UEFA in 1998). ISL acts as a marketing agent for UEFA, charged in particular with the commercial exploitation and protection of the EURO 2000 marks and properties. UEFA maintains several Web sites including one at www.euro2000.org.
Respondent is the owner of U.S. trademark registration EURO2000 in connection with "providing information concerning historical, cultural and entertainment events by means of a global computer information network", applied for on April 2, 1997 (reference to a filing date of February 2, 1997, by Respondent appears to be incorrect) and registered on April 25, 2000, registration No. 2345898. It also obtained, by way of assignment, a Benelux registration for EURO 2000 for "metal building materials, non-metal building materials, and products made of plastic". Further attempts by Respondent to register a service mark EURO 2000 in Benelux were unsuccessful, as the trademark was regarded as generic. Respondent started its business in 1996, was registered as a company with the Dutch Chamber of Commerce on January 1, 1997, and registered its domain name euro2000.com with Network Solutions on April 28, 1997. It claims that a previous registration with Network Solutions for euro2000.com in the name of Euro 2000 of Alkmaar, The Netherlands, dated April 16, 1996, was in fact controlled by Respondent's chief executive officer, Mr. Daniel Oudejans, and by his partner Ms. Heleen Visser (the latter being indicated as the administrative contact) and that in fact the 1996 and 1997 registrations are one and the same.
Respondent operates a Web site at the address www.euro2000.com. When accessed on June 1, 2000, although including a left-hand side title "Euro2000.com European Events", it featured prominently, on a green background depicting a soccer field, the words "European Championship Football 2000" and the flags of the 16 teams participating in the final phase of the Euro 2000 event. The site also provides links to other European cultural and business events.
Although the precise circumstances of these contacts are disputed between the parties, at various stages Respondent offered to sell the domain name to Complainants for sums ranging from 2.000.000 Euro to US $ 4.000.000 and at one stage for a sum to be determined by an independent expert.
Part of the dispute is also that both Complainants and Respondent, at various stages, have been in touch with actual or potential sponsors of their Web sites, and some of them are also sponsors of the Euro 2000 event and other UEFA football events.
By an action dated March 12, 2000, UEFA asked the Paris Court to order that the Respondent cease the use of the domain name euro2000.com, the latter being an infringement of both the "famous brand name" EURO 2000 and of international trademark registration 703249 EURO2000 and device owned by UEFA. On June 13, 2000, UEFA demands were dismissed, the court having concluded that UEFA is not the owner of a "famous brand name" EURO 2000 in France and that international trademark registration 703249 is not infringed by Respondent's current use of the domain name euro2000.com.
5. Parties' Contentions
a) Complainants claim that EURO 2000 (as it was previously the case for EURO 1996 and the names of previous European Championships) is a trademark identifying the European soccer championship to be held in the year 2000, and is recognized as such by a majority of consumers.
b) Complainants claim the validity of their trademark registrations, and suggest that they have "incalculable value." According to a late statement by Complainants, this validity has been recognized even in Benelux in a very recent court case. Respondent objects to Complainants' late submission of references to this case.
c) They claim that the main purpose of Respondent was to divert both Internet users interested in finding the official Web site for the event Euro 2000, and sponsors, to their own Web site. A secondary (and, perhaps later, primary) aim of the Respondent, according to the Complainants, was to sell the domain name to Complainants for a highly significant sum.
d) As a consequence of these activities, evidencing bad faith by Respondent, not only a likelihood of confusion has been created, but Complainants have been injured and continue being injured.
e) The Paris decision involved different issues and is irrelevant for the present case.
a) Respondent preliminarily claims that since UEFA already filed a Complaint against Respondent on September 29, 1998 with Network Solutions, before the current Policy was adopted, the current Policy and the Rules cannot be applied against Respondent.
b) Respondent, on the substance of the matter, claims that, as evidenced by its own experience with the Benelux Trademark Office and the Dutch High Court, the trademark or service mark EURO 2000 lacks distinctiveness and is not a valid mark.
c) It claims that EURO 2000 does not clearly, or only, identify the Euro 2000 soccer event firstly because "a lot of people do not care for soccer at all" and, secondly, because the past UEFA European championships were identified by the marks EURO 84, EURO 88, EURO 92 and EURO 96, and an event called "EURO 00" in 2000 [rather than EURO 2000]" would have been more likely".
d) The domain name of Respondent identifies a genuine business activity, which - Respondent claims - is not limited to the Euro 2000 event, or to soccer, but includes a number of other links and information.
e) Only when asked by Complainants, Respondent offered to sell the domain name to them, and this is not evidence of bad faith.
f) The fact that Complainant UEFA owns Benelux trademark registrations is not an argument against lack of distinctiveness, since they were obtained by third parties before the new Benelux law preventing registration of generic terms as trademarks came into force.
g) As a consequence, it is claimed that Respondent registered its domain name at a time when Complainants did not have any rights whatsoever in the name EURO 2000.
h) Last (but not least) any contradiction between the decision of the Panel and the Paris judgement of June 13, 2000, would constitute a violation of the Policy under Paragraph 18(a )of the Rules.
6. Discussion and Findings
A. Preliminary Objection
The preliminary objection that Complainants are prevented from filing this Complaint because UEFA filed a previous Complaint with Network Solutions on September 29, 1998, is rejected. Firstly, one of the Complainants, ISL, was not a party to this previous dispute. Secondly, and most importantly, there is nothing in Art. 9 of the ICANN Policy about complaints filed under a previous Policy preventing the filing of new complaints under the 1999 Policy and subsequent versions thereof. The wording "the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over" has no obvious retro-active effect, and refers to the Policy adopted on August 26, 1999, in its relations to future versions of the Policy. Thirdly, the case which was the subject matter of the Dispute with Network Solutions in 1998 is not one and the same with the present case, since circumstances have significantly changed in more than one respect.
B. Effects of res judicata
Respondent claims that under Paragraph 18 (a) of the Rules the Panel's proceedings "are de facto terminated" when a decision emanating from a judicial authority on the same matter has been rendered is not, in this rather draconian form, acceptable. In fact, Paragraph 18 (a) leaves a large scope to the Panel's "discretion", and not all judicial proceedings or decisions are equal. The scope and effects of each decision should be considered on a case by case basis.
In this case, however, it was UEFA, one of the Complainants, that elected to file a court case in Paris concerning precisely the same domain name which is the subject matter of this dispute, and vigorously argued that the French court did indeed have jurisdiction in a domain name (.com) controversy. As a result, the situation is now that Respondent has a "right" to use the domain name at least in one country, i.e. France (not a minor or peripheral country for this controversy: France is the current world champion of soccer and one of the most prominent national teams in the Euro 2000 soccer event). This circumstance creates a situation where Respondent has a "right" to the domain name, and this is sufficient under Paragraph 4 (a) (ii) of the Policy to prevent the Panel from finding in favor of Complainants.
This, of course, does not mean that Complainants may not eventually prevail in cases brought before other jurisdictions. It simply leads to the conclusion that carrying on an analysis of the French case leading eventually to conclusions other than those reached by the Paris court, or canceling the "rights" on the domain name just confirmed or created by the French judges goes beyond the scope and the possibilities of the present administrative proceedings. The Panel does not necessarily agree with the content of the French decision, nor is it the Panel’s place to act as a "court of appeals" or commentator with regard to adjudicated matters. It is, however, compelled to consider the existence of this decision and its force in law which was established by a court of law in a party proceeding brought by a Complainant, which determines a "right" for the Respondent. For this reason the Panel finds that the Complainants fails to satisfy the UDRP’s criteria for transferring a domain name away from a registrant, in that Complainants cannot now prove, as required, that the Respondent has "no rights or legitimate interests in respect of the domain name".
This Panel believes that, in a complicated case such as this one, Panels have a duty to state for the record, if briefly, their conclusions on the different features of the case, even if all conditions of Paragraph 4(a) are needed in order to find for the Complainants.
C. Validity of the Trademarks
Stating for the record the conclusions reached by the Panel on the validity of the Complainants’ trademarks, it should be emphasized that the Policy has adopted a very broad concept of "trademark or service mark." It simply mentions "a trademark or service mark in which the Complainant has rights". These "rights" may not be sufficient to obtain a trademark or service mark registration everywhere in the world. This is not required by the Policy, which also considers common law trademarks and other trademarks not yet registered or not registrable in one or more jurisdictions.
In a National Arbitration Forum case (FA0002000093633, Cedar Trade Associates v. Gregg Ricks, February 25, 2000) it was decided that, under the Policy, common law trademark rights on BuyPc.com and BuyPc for the services of selling computers are "rights on a trademark or service mark" under the Policy. In this case, there was no trademark registration, and presumably such may not have been obtained (absent substantial evidence of secondary meaning, not mentioned in the case) in the United States (the country of the Complainant), nor in a number of other countries in the world. In another National Arbitration Forum decision (FA003000094237, Shri Ram Chandra Mission (California) v. Shri Ram Chandra Mission (India), April 4, 2000), the request was denied but it was not contested that trademark or service mark rights under the Policy may be obtained on "Sahaj Marg", an Indian religious expression meaning "natural path" in fact used by several different religious groups, irrespective of any registration. A case somewhat similar to this one concerned the rights of FIFA (UEFA’s parent body) and of one of the present Complainants, ISL, on trademarks and service marks connected with the World Cup of soccer to be held in 2002. In that case (ISL Marketing AG and Fédération Internationale de Football Association v. J.Y. Chung and others, WIPO case D2000-0034, April 3, 2000), rights of the Complainants were regarded as valid. It is true that they do own a number of trademark and service mark registrations for WORLD CUP and WORLD CUP 2002, but these do not cover the whole world, and presumably – again – the registration of such trademarks would prove impossible in several jurisdictions. It may also well be that in some jurisdictions trademarks and service marks related to sport events are not registrable at all, but – again – registrability in a given country, or even in several of the countries in the world having a trademark and service mark system, does not appear to be requested by the Policy. The Policy’s requirements appear to be minimal, and limited to the fact that a certain combination of letters and/or numbers is recognizable as a trademark or service mark by a significant number of Internet users or consumers in general. Secondary meaning is also not specifically requested.
Accordingly, whether or not EURO 2000 may be registered as a trademark in Benelux, now or before the Benelux law was amended, a circumstance vehemently disputed between the parties, is not crucial for this decision. It is also noted that, while denying that EURO 2000 is capable of being registered as a trademark, Respondent does own a registration for EURO2000 in connection with computer information network services that it obtained from the U.S. Patent and Trademark Office (USPTO). This registration is in the Principal, not the Supplemental Register of the USPTO. When it applied for EURO2000 as a service mark, Respondent did regard it as distinctive and executed an application for the benefit of the USPTO claiming distinctiveness. That simply shows that the law may be different between the United States and Benelux (and would be still more different in Korea, Japan, France, or Brazil), while the Policy has not tied itself to any specific trademark law among the many existing throughout the world.
Under the (minimal) requirements of the Policy, EURO 2000 is potentially capable of functioning as a trademark or service mark.
But does this potentiality translate into an actual trademark or service mark?
Respondent claims that EURO 2000 is recognized as a sign identifying the European soccer championship organized by UEFA in the year 2000 only by a "much smaller public" than the general one, since "a lot of people do not care for soccer at all". These objections were already discussed in a previous case, already mentioned, dealing with the WORLD CUP 2000 marks and domain names. Quite correctly, it was concluded that, although there are "World Cups" for a number of different sports, soccer enjoys a unique popularity; its world events are followed by billions of people. Particularly (but not exclusively) in Europe, events such as the World or the European soccer championships are so prominent in the media that even "people not caring for soccer at all" will eventually become aware of them, unless they carefully avoid during the relevant period both printed and electronic media in their entirety. Respondent quotes a poll according to which "a large majority of the European public did not know in which countries EURO 2000 (…) was going to be organized." This may well be true, but does not prove they will not recognize Euro 2000 as a soccer tournament. Most people know that, somewhere in the world, Olympics will be organized in 2000 and again in 2004, but they do not know (or have forgotten when asked) where exactly they will take place. Respondent itself admits that there are many Web sites mentioning Euro 2000, and that indeed many of them use the words "Euro 2000" with reference to the European Football Championship. This again seems to confirm that for a significant number of Internet users and consumers in general, EURO 2000 means the European Football Championship, and not other European events or the coming of the euro as a currency.
Respondent’s further objection that users and consumers would recognize a mark EURO 00, rather than EURO 2000, does not make sense. Media have always called the event Euro 2000. More generally, while the year 1996 is referred to, easily, as "ninety six", the year 2000 is normally not referred as "zero-zero" but rather, in fact, as "two thousand."
Finally, even assuming that a significant percentage of the population could not care less about soccer, it is precisely those who do care about soccer and the European Championship that are the consumers and Internet users targeted by any use of EURO 2000 as a trademark, service mark, or domain name.
The fact that EURO 2000, as owned by UEFA, does not qualify as a "famous brand name" under French law, even if true, would not in itself be crucial. French law should not be regarded as the only law to be taken into account.
It is concluded that, for the purposes of the Policy, although possibly not registrable as such in some jurisdictions (but registrable, and in fact registered, in others) EURO 2000 is a trademark and a service mark, and that UEFA as organizer of the event commonly known as Euro 2000 has rights on it.
D. Respondent’s Registration of the Domain Name
"Euro 2000" is immediately linked by a significant percentage of the consumers in Europe (and certainly by the Internet users looking for soccer-related Web sites) to the Euro 2000 soccer event, and has been perceived in such a way since the event was announced. The Euro 2000 soccer event was planned on or before January 1994 (not to mention that it was not a difficult guess that it would have been planned and announced, given that UEFA European soccer championships are organized every four years and are identified by the name "Euro" followed by the year). In fact, on January 28, 1994, Benelux trademark application 544492 for EURO 2000 was filed by a national soccer association which is part of the European network of national associations ultimately authorized and controlled by UEFA (it was later assigned to UEFA). This shows that as of January 28, 1994, the European soccer championship for the year 2000 was being actively planned and was called "Euro 2000" (rather than "Euro 00"). January 28, 1994, is before Respondent’s domain name was registered. Already before Euro 96 the Euro 2000 event was very much part of the news in Europe (and certainly in The Netherlands, where Respondent has its main place of business), as several countries where competing for organizing it (including The Netherlands) and eventually it became the first major soccer international tournament to be jointly organized in two countries, Belgium and The Netherlands. Respondent could not have ignored when it registered the domain name that Euro 2000 was the name of the European soccer championship then in the process of being planned by UEFA in a location later to be determined to be Belgium and The Netherlands jointly, and may have easily determined that the event’s name was protected by trademark registrations. Accordingly, we believe that an arguable case may be made that the registration of euro2000.com as a domain name intended to capitalize on that event and on UEFA’s corresponding trademark rights from the very beginning.
E. Rights or Legitimate Interests in Respect of the Domain Name
Respondent’s possible rights or legitimate interests in respect of the domain name under Paragraph 4 (a)(ii) of the Policy were the subject of considerable study by the Panel. While Respondent has certainly shown that it has an interest in the domain name, not all interests are "legitimate". It was suggested that Respondent’s legitimate interest, or "rights", in the domain name arise from Respondent’s ownership of a corresponding U.S. trademark registration. Complainants object that Respondent filed its U.S. trademark application on April 2, 1997 (its claim in the response that it filed it on February 2, 1997 is a mistake, as evidenced by Exhibit 2B filed by Respondent itself), i.e. after it received Complainant’s cease and desist letter dated February 18, 1997. The same chronology applies to the trade name rights of Respondent and to its purchase of a Benelux trademark for building materials. While the interpretation of the word "rights" in Paragraph 4 (a) (iii) is not obvious (and perhaps some future guidance by ICANN would be in order), the Panel’s feeling is that the general principle that the owner of a domain name identical to a previous trademark or service mark may, when challenged by the trademark owner, establish (retroactively) legitimate use simply by filing a fresh trademark application in a jurisdiction other than those where the Complainant’s trademark is registered, is a dangerous principle. The owner of every contested domain name will always easily find at least one register where its opponent’s trademark or service mark is not registered. Paragraph 4(c)(i) of the Policy regards chronology as relevant. In WIPO Case No. D2000-0030, Lion Nathan Limited v. Wallace Waugh, the fact that Respondent had filed a U.S. trademark application and obtained a notice of allowance did not "carry weight" since Respondent did not register the trademark "before [Complainant] complained of [Respondent’s] activities". On the other hand, Respondent’s U.S. trademark in our case went all the way to registration and there is no evidence that Complainants opposed it (a move they may have made).
This difficult issue, on the other hand, became moot because of the Paris decision, which, as mentioned earlier, created in the Panel’s opinion a "right" under Paragraph 4(a)(ii), at least temporary, for Respondent to use the domain name.
F. Respondent’s Use of the Domain Name
A study of the Web site operated by Respondent at the address www.euro2000.com shows that this Web site is indeed primarily related to the Euro 2000 soccer event. It is surely true that there are links to a number of other European events’ Web sites. These Web sites are external to Respondent’s own Web site (or, at least, most of them are). The main thrust of Respondent’s Web site is to deal with the Euro 2000 European Football Championship. Accordingly, the claim by Respondent that its Web site is a "portal" dealing with a number of events in the business and finance, technology, science, health, art, culture, entertainment, communications and sport fields is not convincing, (the Paris decision notwithstanding). The main, if not the only, purpose of that Web site (a purpose which is not incompatible with providing links to very different Web sites operated by others) is to represent itself as connected with the Euro 2000 event.
Of course, UEFA has not a monopoly of information about the European Football Championship. Information on the Euro 2000 event is found in hundreds of different Web sites and is carried by all international media. However, if the primary purpose of Respondent was to provide, in good faith, alternative and unofficial information about the Euro 2000 event, it may have created a Web site under a large variety of domain names, perhaps clearly emphasizing its unofficial and "alternative" nature. The situation, here, is similar to the one decided by a WIPO Panel in Case No. D2000-0034 about the World Cup 2002. While it is perfectly legitimate "to provide alternative news and information about, or even commentary and criticism on a matter of public interest", it is another thing altogether to do it under a domain name strongly suggesting that this information is provided by an entity associated with the organizers of the event (and owner of the corresponding trademarks and service marks).
The situation, in this case, is even worse than in Case D2000-0034, where Respondent used the Web site in a "non-commercial" way, while here some services are offered for a fee, and sponsors have been contacted in direct competition with Complainants.
Documents are not easy to interpret on who contacted whom first about selling the domain name. Certainly the figures involved are quite high, and lesser figures have been regarded as evidence of bad faith in previous cases.
For the record, thus, it seems that issues connected with Paragraph 4(b)(iv) of the Policy may have been solved in favor of the Complainants, had not the Paris decision created a "right" of the Respondent on the domain name preventing the Panel from finding for the Complainants.
Pursuant to paragraph 4(i) of the Policy and Rule 15 of the Uniform Rules, this Panel denies the complaint and concludes that the domain name euro2000.com should remain registered in the name of Respondent.
Frederick Mostert Paul DeCicco
July 5, 2000