WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
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
hostmaster@ADHOST.com; and 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:
Western States Ticket Service
143 W McDowell Road
United States of America
Adhost Internet Advertising
400 - 108th Ave N.E
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 Giancola Case 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.
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.
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 FIFA Trademarks
Classes of Goods / Services
Classes 25 & 28
Application: November 8, 1994
Registered: March 31, 1995
United States of America
Classes 25 & 28
Application: March 23, 1995
Registered: May 30, 2000
Classes 25 & 28
Application and Registration: February 22, 1995
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:
The list also include the following generic soccer domain names:
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:
6.2 Identical or Confusingly Similar
6.2.1 The Complainants' Case
Domain Name in Issue
In each of these Decisions the generic descriptor was held not to avoid confusing similarity with the Complainant's trademark.
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:
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 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:
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 also cites Cases D2000-0435; D2000-0494; and D2000-0878 as sustaining that position [see above].
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:
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 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.
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:
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.
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:
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)].
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.
The Plaintiff's two websites used the domain names
" www.playboy.com"; and
TerriWelles Playmate of the Year 1981
That was a true description of Ms Welles' identity.
and the website offering tickets to events staged by FIFA used the trademark solely to describe the tickets as such.
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.
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.
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.
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 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.
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.
Dated: March 23, 2001
1. IR 633,108 covers 36 countries including France, Germany, Benelux, China, Egypt, Spain, Poland, Italy, Portugal etc.