WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The London Marathon Limited v. Websitebrokers Limited
Case No. D2001-0157
1. The Parties
The Complainant is The London Marathon Limited of Waterloo Court, 10 Theed Street, London SE1 8ST, UK.
The Respondent is Websitebrokers Limited of P17-P19 Bow Wharf, 221 Grove Road, London E3 5SN, UK.
2. The Domain Name and Registrar
The Domain Name is <thelondonmarathon.com>, registered by Network Solutions Inc.
3. Procedural History
(1) The Complaint in Case D2001-0157 was filed on January 29, 2001 and was notified to the Respondent on February 15, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The Complainant has submitted observations on the Response, which under the UDNDRP are admissible only in my discretion. In reply to this the Respondent has submitted that the observations should not be admitted. Given the straightforward nature of proceedings under the Policy, panelists have been reluctant to admit observations of this kind, particularly where they amount to comments on matters which can be deduced by the panel from the material submitted in connection with the Complaint and the Response. The Complainant's observations in the present proceeding are either of this character or else raise issues insufficiently relevant to the disposition of the issue before me. I accordingly refuse to admit the Complainant's observations and related Annexes.
(5) The date scheduled for issuance of a decision is: April 1, 2001, but the late stage at which the submissions referred to in the previous paragraph were received has made it impossible to adhere strictly to this timetable.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
(1) The Complainant is the corporate body which since 1981 has each year organised the London Marathon, a widely publicised event which attracts thousands of spectators to the Metropolis and reaches a very large audience through broadcasting. It is well-known that many entrants raise money themselves for charity by seeking sponsorship for their entry. The Complainant asserts that it makes its money from obtaining sponsors for the London Marathon and certain other athletic events, and also from charging fees for entrants, from selling merchandise and from licence fees for use of the words "London Marathon". The Complainant does not specify to what extent it is the body responsible for such crucial factors in running the London Marathon as determining the route of the race, traffic and safety arrangements, the list of permitted entrants and many other logistics. However, the Respondent does not suggest that Complainant is only the organiser of the London Marathon in some limited sense associated with the obtaining money from sponsorships and fees of various kinds. The Respondent does emphasise that the Complainant is not itself a charitable body. Instead it donates its surplus profits to a charitable body called The London Marathon Charitable Trust Limited, which is now the Complainant's holding company.
(2) The Complainant has registered in the UK the mark "London Marathon" for a wide variety of goods and services within eight classes of the Register. These registrations were obtained before the date on which the Domain name in issue was registered.
(3) The Respondent maintains a portfolio of domain names, of which it lists 52 examples, some of them sports related, some descriptive of types of business, some town and place names. So far as these consist of the names of, or directly related to, sporting events, the Respondent states that its purpose in holding them is to provide a website giving information about the event and to offer the services of its associated business, Ace Options, "as a brokerage" to book accommodation and such like. The Respondent has established one such website, at < Racemeetings.com >. It asserts that this is a prototype for the use that it will make of the other similar domains on its listing, including < thelondonmarathon.com >, when it has the resources.
(4) This complaint and that in D2001-0156 (<thefa.com>) have been referred to the same Panelist, since, although the Complainants differ, the Respondent is the same and the cases arise out of the same activity by the Respondent. There is considerable similarity between the submissions on each side in the two cases. As will be seen, however, my reasoning and decision in the two cases differ.
5. Parties’ Contentions
The Complainant asserts the following:
(1) Its name, "the London Marathon", constitutes a trade mark to which the domain name in dispute is (but for the TLD) identical, and its registered mark, "London Marathon", is confusingly similar to that domain name.
(2) The Respondent has no rights or legitimate interests in respect of the domain name (see UDNDRP, Paragraph 4(c)). It has not used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. It has not been commonly known by the domain name, nor has it made legitimate noncommercial or fair use of the domain name.
(3) On the contrary, the Respondent has registered the domain name and is using it in bad faith, particularly in the forms identified in the UDNDRP, Paragraph 4(b)(ii) and (iv). It has registered numerous domain names in which third parties have trade or service mark rights. hese are displayed on one of two brokerage websites belonging to the Respondent as being for sale or lease. Six examples are given:<thegunners.com>, <therydercup.com>, <thetoonarmy.com>, <thefa.com>, <baftatelevisionawards.com> and <alfreddunhillcup.com>.
(4) The registration of the Domain Name would suggest to Internet users a connection between Complainant and Respondent, and this gives a detrimental impression of the former.
The Respondent asserts the following:
(1) It has not agreed to and is not bound by the UDNDRP, its Rules or the WIPO Supplemental Rules; they are all unlawful, void or infringe the Respondent's rights and are accordingly unenforceable. It accordingly takes part in the present proceedings under protest. The essence of this protest is that the UDNDRP cannot properly be applied retrospectively to a domain name registered before its introduction, and that the Policy has been imposed unilaterally on registrants without any opportunity for voluntary acceptance.
(2) Its business, being based upon the intentions referred to in Paragraph 4(3) above, is entirely lawful; any action ordered in consequence of this complaint would accordingly infringe the European Convention on Human Rights, Article 10 (freedom of expression) and First Protocol, Article 1 (peaceful enjoyment of possessions), the English Unfair Contract Terms Act 1997, Section 3 (right to quiet use and possession) and the EU Treaty, Article 81 (objection to restrictive and distortive trade practices).
(3) Much of the use of "the London Marathon" in relation to the Complainant is descriptive of that event. In alleging that the expression is used as a trade mark for goods or services, especially through merchandising, no convincing evidence is adduced to show any such actual use. This aspect of the complaint is not strengthened by the United Kingdom registrations of "London Marathon" as a trade mark since no evidence of any use of these is adduced.
(4) Internet users now have no expectation that a domain name bearing or including a business or similar name will be connected with the person or organisation known by that name. Accordingly there can be no danger of confusion between the Complainant's trade marks and the domain name in issue.
(5) The Respondent is under no duty to seek authorisation from the Complainant for use of the domain name in issue.
(6) The Claimant has not succeeded in demonstrating that the Respondent has no rights or legitimate interests in the domain name in issue, particularly in relation to the matters specified in the UDNDRP, Paragraph 4(c).
(7) The Respondent has not been shown to have registered, acquired or used the domain name in issue in bad faith, and in particular those forms of bad faith within the UDNDRP, Paragraph 4(b) (ii) and (iv) which the Claimant alleges.
6. Discussion and Findings
A. Jurisdictional Basis of the Administrative Proceeding
The ICANN Uniform Domain Name Dispute Resolution Policy was incorporated by ICANN on October 24, 1999 into the terms on which certain registrations of Internet domain names are effected and held. The Policy, which took effect on January 1, 2000, was intended to affect domain names already registered when the Policy was introduced. As numerous decisions of panels applying the Policy have already held, it achieved that result thanks to the terms in which it had from the outset been couched. The objections to the legal effectiveness of the Policy as regards this complaint are accordingly not sustained.
B. Conflict between Mark and Domain Name
Under the UDNDRP, no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a). The first of these requirements is that the Respondent's domain name in issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Policy was introduced to deal, not with those who register, acquire, use or deal in attractive domain names in general, but with those who include in their domain a name so well-known as a trade mark that some potential uses of the domain could readily lead to confusion with that mark; this factor and the special interest which it may give the complainant in having the domain itself without having to pay an above-cost sum for it justify the remedies available under the Policy, provided that the other two elements in the overall test are also made out – bad faith and lack of right or legitimate interest.
Two consequences follow which are germane to the registration of the names of sporting events in domains. On the one hand, given the summary nature of the Dispute Resolution procedure, there must be clear evidence that the name on which the Complainant relies is widely known as a trade mark, i.e. as a sign distinctive of the source of goods or services. It is not therefore enough that the Complainant may hold relevant trade mark registrations in or for one or more countries. There must be substantial evidence of actual use as a mark. On the other hand, the Policy has a precautionary character and can be called into operation without demonstrating that the Respondent is actually itself using the domain to cause confusion as to source.
The difficulty with the name of a sporting event is that the general public's acquaintance with it is largely in relation to the event as an occurrence. The Respondent places repeated emphasis on this descriptive characteristic. The Complainant has gone into no detail about the precise name which it uses in its organisational work for the event. Even if this is always its corporate name, such a name can be a common law trade mark in the sense that it can in principle be protected against passing off, on the basis that the words, "London Marathon", when used to indicate the organiser of the event, identify it in the British public's mind. If, therefore, another body were to organise a different London Marathon using a name which could be mistaken for the London Marathon organised by the Complainant, the activity would in all likelihood amount to passing off. This element in the threshold test is thus made out.
In order to satisfy that test under the UDNDRP, it is also necessary to show that the domain name -- here <thelondonmarathon.com> - is confusingly similar to the Complainant's trade mark. Even though, doubtless for purposes of sponsorship, the Complainant now calls its event the Flora London Marathon, the manner in which it has built up the organisation of "The London Marathon" justifies it in claiming that title as the organisational name by which it is known. Since the addition of the TLD is discounted in making this comparison, the only difference between the two is the lack of spaces in the domain name. In this instance, the separate words are immediately apparent in the domain name. Confusing similarity is accordingly made out and the first element is established for a complaint under the Policy.
C. Bad Faith
There is a dispute between Complainant and Respondent over whether the domain was offered for sale through the Respondent's brokerage site or the associated <domainbrokers.com>. The Complainant submits that this goes both to the question of whether the Respondent can claim the legitimate interest of developing an information and agency service website under the domain name, and to the question whether the Respondent is shown to have been acting in bad faith. In part the Complainant relies upon a letter of October 11, 2000 which discusses terms for a sale of the domain and others close to it. But since the letter is "Without Prejudice" and concerns the settlement of a dispute, it must be discounted.
So far as concerns bad faith, the Complaint is not made on the ground that the Respondent was seeking to transfer the domain name to the Complainant for an above-cost sum (see the UDNDRP, Paragraph 4(b)(i)). Rather bad faith is alleged primarily on the ground that the domain name is registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and that this is part of a pattern of such conduct (see Paragraph 4(b)(ii)). The reference in this ground to "a corresponding domain name" is to a particular domain name, rather than to any domain name at all: see my decisions in D2000-1628, Julie Brown v. Julie Brown Club; D2000-1838, Celine Dion v. Burgar.
More difficult to interpret in relation to the brokering activities of the Respondent in this case is the requirement of a "pattern of such conduct". A great many of the domain names listed on one or other of its brokerage sites are too general in character to be taken as references to the well-known trade marks of established businesses or similar organisations. As set out in Paragraph 5A(3) above, the Complainant refers to six examples as specific enough to be objectionable on the same basis as it attacks the domain registration in dispute. What has to be shown, in respect of each example, is that the name is known to identify an organisation which runs a team, competition or event, and is not merely descriptive of the sporting activity.
Of the examples, <thefa.com> must be discounted for the reasons given in my decision of Case 2001-0156. However, two others identify well-known professional football teams by their nicknames, The Gunners and The Toon Army; and those referring to the Ryder Cup, the BAFTA Television Awards and the Alfred Dunhill Cup all concern competitions (one of them non-sporting) which must have an organiser in a position similar to that of the present Complainant. It must also be noted that the Respondent holds two .co.uk domains which are essentially the same as that in the present dispute. Although the scale on which the Respondent holds such domain names is much smaller than in some instances of brokerage which have been before Dispute Panels, in my view it amounts to a pattern of conduct which shows a relevant form of bad faith under the UDNDRP.
The Complainant has also alleged that the Respondent has shown bad faith within the UDNDRP, Paragraph 4(b)(iv), through use of the domain name it has intentionally attempted to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites, an association which it claims to be seriously detrimental to it. I am not persuaded that any sufficient objection has been raised under this head, since its relates to the Respondent's actual conduct. While the domain name at issue has been listed on the Respondent's websites, it has not been used in the manner which the Respondent states that it intends to do. In any case the parties dispute whether the Respondent's actual intention is, if possible, to sell or lease the domain to someone else. To bring the Respondent's largely inactive holding of the domain within this objection appears contrived. It is not a ground on which this decision is founded.
D. Right or Legitimate Interest
The ability of a respondent to defend its registration on the basis that it has a right or legitimate interest in the domain name is, as is shown by much of the Complaint and Response in this case, the obverse of bad faith on the Respondent's part. It is for the Respondent to demonstrate its right or interest and this must be based on use or at least demonstrable preparations to use, and not simply on expressions of intention. While the Respondent claims that it is in the process of setting up an information and service website for the domain name in dispute equivalent to that on its prototype site, that is not in my opinion a sufficient demonstration of preparations to use it. Scepticism towards this claim is increased by certain indications that the respondent is also interested in selling the domains it lists. While the Response denies that this is necessarily so in some cases, including this one, the domainbrokers.com site states: "Sale and lease all considered".
E. General objections
The Respondent challenges the application of the UDNDRP to its registration on general substantive and procedural grounds. As to the first, its essential objection is that it is being deprived of a freedom to express itself on a website about a sporting event, when the media, for example, are perfectly free to do so. A domain name, however, is capable of implying connections as to source which would not be present in a newspaper article. The Policy accordingly sets up a special balance of interests between owners of marks and registrants which, through its references to bad faith and lack of right or legitimate interest, leaves adequate scope for registrants to exercise their freedom of speech whenever there is sufficient justification for so doing. As to the second set of grounds, the essential complaint concerns the speed with which the Respondent is required to act. This is said unduly to truncate a Respondent's ability to prepare the Response, and the objection is made partly on behalf of those unable readily to gain adequate advice. However that may be, in this case the Respondent has been in a position to submit a Response of some thirty pages. o case of undue procedural prejudice can therefore be sustained.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4:
- that the domain name in dispute is identical with or confusingly similar to the Complainant's mark, "The London Marathon";
- the Respondent has no right or legitimate interest in respect of that domain name; and
- it has been registered and is being used in bad faith.
The Panel according requires that the domain name, <thelondonmarathon.com>, be transferred forthwith to the Complainant.
William R Cornish
Dated: April 5, 2001