WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Football Association Limited v. UKIP (Internet Consultants) Limited
Case No. D2000-1359
1. The Parties
The Complainant is The Football Association Limited ("The Football Association") of 16 Lancaster Gate, London, W2 3LW, United Kingdom.
The Respondent is UKIP (Internet Consultants) Limited ("UKIP") of Berkeley House, Berkeley Street, Preston, Lancashire, PR1 7ET, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is facup.com and the Registrar is Network Solutions, Inc. of 505 Huntmar Park Drive, Hendon, Virginia VA20170, United States of America.
3. Procedural History
The complaint was submitted by both email and hard copy on October 10, 2000. The relevant notification procedures were complied with. There was a passage of communication between the Respondent and the WIPO Arbitration and Mediation Center, culminating in the submission of the response by email on November 5, 2000.
The Panel was appointed on November 13, 2000 and the date fixed for submission of the decision was November 27, 2000. However, following consideration of the first submissions, the sole panelist made a request under paragraph 12 of the UDRP for the submission of further information by the parties. A timetable was duly set, and the Respondent filed a further communication on December 1, 2000. The Complainant replied on December 7, 2000.
The sole panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The language of the proceedings is English.
4. Factual Background
The Football Association is the governing body of Association Football in England, with responsibility for administering the game, and the rules under which it is played. It is also the organizer of various competitions including what is, perhaps, the best known knockout challenge football competition in the world - the FA Cup.
The Complainant is the registered proprietor of a number of trademarks relating to the name "FA Cup" across a wide range of categories.
The Football Association asserts that, when it first became aware of the disputed domain name in July 2000, upon accessing the site a page appeared which contained the England crest, namely the mark worn on the shirts of England footballers, which is in itself a registered trademark.
The Football Association commenced correspondence with UKIP in July 2000, and that correspondence proceeded through August and September.
It appears that subsequently the site changed so that it now defaults to a website for "the Fast Action Cup Company". This purports to be a trading company dealing in a range of cups and mugs.
There is no evidence of the names "Fast Action Cup Company", or "Fast Action Cup" having been registered as domain names or indeed company names.
5. The Partiesí Contentions
The Football Association contends that the domain name in question is identical or confusingly similar to its trademark, that UKIP has no right or legitimate interest in respect of the domain name, and that the domain name has been registered and is being used in bad faith.
The assertion regarding the alleged identicality of the trademark is straightforward and incontestable.
The Football Associationís contention in relation to the legitimate rights or interest of UKIP is that UKIP is not and has never commonly been known by the disputed domain name, nor has it shown any demonstrable preparation to use the disputed domain name in connection with the bona fide offering of goods and services prior to notice being given to the Respondent of the dispute over the disputed domain name.
In relation to bad faith, The Football Association contends that UKIP must have been very well aware of The Football Associationís trademarks in the name "FA Cup" and this is, in the view of The Football Association, exacerbated by the fact that at the outset the domain name in question defaulted to a display of the FA England crest. It is further asserted that the next screen offers the visitor various football email addresses, demonstrating, in the view of The Football Association, a pattern of conduct in the sale or offer for sale of domain names by UKIP.
In response, UKIP accuses The Football Association of reverse domain name hijacking. It asserts that, upon receipt of notification that the England crest was a trademark, the "splash page" was amended within minutes. It asserts that Fast Action Cup Company (a trading name of UKIP) had a web presence on this disputed domain name since 1997, and cites an example of an enquiry regarding the purchase of cups and mugs dated May 23, 1999.
UKIP asserts that the name "facup.com" is a legitimate abbreviation of Fast Action Cup Company, confirming that "every established domain house and domain strategist knows that a short and memorable domain name betters a long one.
UKIP asserts that it was not aware of any registered trademark until the first correspondence was received from the Complainant and, once again citing the example of the email on May 23, 1999, claims that there is clear evidence that the Fast Action Cup Company has been operational as a legitimate trading concern at least since that date.
It asserts that its Football Club domain names are part of the legitimate business to enable people to personalize their email addresses and asserts that it has never contacted or endeavored to contact the Complainant regarding any offer for sale of the domain name.
UKIP points out that it has never before been the subject of a complaint of this nature in relation to its domain names. UKIP purports that it has no intention and never has had an intention to create commercial gain from confusion with the trademarks of The Football Association.
6. Panel Findings
Under paragraph 4 of the UDRP, the Complainantís burden is to prove in relation to the complaint, that:
(i) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complaint must prove that each of these three elements are present in order to make a successful case.
The first question is straightforward. The domain name "facup.com" is clearly identical to the trademark belonging to The Football Association. The question of confusion does not arise in this case.
The second leg of the test requires the Complainant to demonstrate that the Respondent has no rights or legitimate interest in respect of the domain name. The Football Association boldly asserts in its complaint (paragraph 12.9) that UKIP has not made any demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services. UKIP rejected that assertion on the strength of its offering of cups and mugs, printed in a bespoke fashion. It has cited one instance of an email enquiry relating to that business.
The Panelist, considering that it was possible that the Respondent had not properly understood its requirements in relation to this part of the test, invited UKIP to provide further substantial evidence of trading activity using the domain name in order to demonstrate a legitimate right or interest in it.
Unfortunately, UKIPís response to this reasonable request is not helpful. After a prolonged diatribe against the protest in general, UKIP concludes that "I shall not be providing any further information as requested nor shall I impede the decision making process of the Administrative Panelist based on the facts in hand to date".
The Football Association, in its response, notes that it specifically invited the Respondent to deal with this issue in a communication dated September 8, 2000, and that UKIP has failed to do so, both in that case, and in relation to the Administrative Panelistís request.
In the circumstances, the Panel is left with no choice but to conclude that UKIP has no right or legitimate interest in the domain name "facup.com". The evidence provided so far does not demonstrate such a legitimate interest.
Finally, the third leg of the test requires the Panel to consider the question of "bad faith".
Paragraph 4(b) of the UDRP sets out various "sign-posts" to the question of bad faith. These include evidence that the domain name has been registered primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for a sum in excess of out of pocket expenses; that the name was registered in order to prevent the owner of the trademark or service mark from using it properly; that the domain name has been registered primarily for the purpose of disrupting the business of the competitors; or that the owner of the domain name, by using it, has intentionally attempted to attract, for commercial gain, internet users to the website or other unknown location by creating a likelihood of confusion.
Whilst it does not appear that any of the first three conditions are satisfied, there is significant evidence that UKIP, by using the domain name, has intentionally attempted to attract for commercial gain internet users to their website creating a likelihood of confusion with the Complainantís mark.
There is no doubt that the name "FA Cup" is one of the best-known names in association football. The combination of that fact, together with the absence of any evidence of legitimate trading and the original use of the England crest, is sufficient, in the eyes of the Panelist, to demonstrate that the domain name was not only originally registered in bad faith, but subsequently used in bad faith. The fact that there is a strong association with the game of football surrounding the site indicates that UKIP must have been fully aware of the FA Cup and its significance at the time the name was registered. In the absence of any evidence to the contrary, the Panel suspects that the abbreviation "facup.com" was a contrivance designed to attract people to the site. Although there is some suggestion that it would actually be impossible to trade in relation to the cups as there is no proper contact information on the site, the site is in itself only two links away from a site in which it is clear that football relating domain names are being offered for sale.
In the circumstances, the Panel concludes that the requirement to demonstrate bad faith both in registration and ongoing use of the mark has been satisfied.
In the light of the foregoing, the Panel decides that the domain name registered by UKIP is identical to the registered trademarks of The Football Association; that UKIP has no rights or legitimate interest in respect of this domain name, and that the domain name at issue has been both registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain name "facup.com" be transferred to The Football Association.
Gordon D Harris
Dated: December 15, 2000