WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Union des associations européennes de football (UEFA) v. Mr. Parmjit Chokar

Case No. D2001-0688

 

1. The Parties

Complainant is Union des associations européennes de football (UEFA), Route de Genève 46, 1260 Nyon, Switzerland. Complainantīs authorised representatives are Mr. Yvan Merlotti and Mrs. Isabelle Hoang, Lawyers, Cabinet Juridique Merlotti, Boulevard Helvétique 15, P.O. Box 3447, 1211 Geneva 3, Switzerland.

Respondent is Mr. Parmjit Chokar, Parkfield Drive 19 Northolt, Middlesex UB5 5NR, United Kingdom.

 

2. Domain Name and Registrar

The domain name at issue is <uefaeuro2004.com>. The Registrar is Melbourne IT, Ltd, D/B/A Internet Names Worldwide, Level 2, 120 King Street, Melbourne, 3000, Australia.

 

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant by e-mail on May 23, 2001, and in hard-copy form on May 25, 2001. On this latter day, the Center issued an acknowledgement of Receipt.

Having verified that the Complaint complied with the formal requirements, the Center issued, on June 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN. The notification to Respondent was effected through Post/Courier (with enclosures) under Shipment Airwaybill DHL 4672738766, and by e-mail (without enclosures).

Having issued a Request for Registrar Verification, the Center received such a Verification Response on May 28, 2001.

According to that Response

a) a copy of the Complaint had been sent to the Registrar by Complainant.

b) the domain name at issue is registered with the Registrar.

c) Respondent is the current registrant.

d) The Uniform Dispute Resolution Policy applies to the domain name.

e) The current status of the name is active.

f) The domain name <uefaeuro2004.com> was registered 2000-06-13 with expiry date 2001-06-13.

g) Organisation name Parmjit Chokar with address "19 parkfield drive northolt, London Middx,ub55nr, UK, UNITED KINGDOM".

h) Administrative name is Parmjit Chokar with the same address as indicated under g), with e-mail singhsabha@hotmail.com and with telephone number +44020884234 23.

i) "Technical Name Registry Department Active ISP, PO Box 70, Bogerud, Olaf Helsetsvei 6, 0621 Oslo, Norway" with e-mail address hostmaster@activeisp.com .

Having received no Response from Respondent, the Center issued, on June 26, 2001, a Notification of Respondent Default which was communicated to the parties by e-mail.

The Center then invited Mr. Henry Olsson to serve as Sole Panelist and received, on July 4, 2001, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated to the Parties. The Projected Decision Date was July 17, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.

The Panel furthermore notes that, in view of the written evidence available, the Complaint and the Notification of Respondent Default have been duly communicated to Respondent.

 

4. Factual Background

Complainant in this case, UEFA is the governing body of European football. It is a non-profit association organised in accordance with Article 60 and following of the Swiss Civil Code. It has its registered seat and headquarters in Nyon, Switzerland. It consists of 51 European National Football Association and it organises a number of European football events, such as UEFA CHAMPIONS LEAGUE every year and UEFA EUROPEAN FOOTBALL CHAMPIONSHIP (EURO) every fourth year, for European national teams.

According to information available, Respondent is a private individual.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the Courts where the principal office of the concerned Registrar is located, i.e. Melbourne, Australia.

 

5. Parties Contentions

A. Complainant

General Background

Complainant explains as a general background that, as of 1984, the UEFA EUROPEAN FOOTBALL CHAMPIONSHIP, commonly known as the EURO, has been identified by trademarks comprised of the term "EURO" coupled with the year of the event. Thus, for instance, the competitions in England in 1996 were designated by the trademark "EURO 96" and the competitions in Benelux in 2000 by the trademark "EURO 2000" The next competitions in Portugal in 2004 will correspondingly be designated, inter alia, by the trademark "UEFA EURO 2004"

The EURO competitions have become extremely popular. They are widely broadcast and, for instance, the EURO 2000 had a total cumulative audience of over 7 billion individuals; the final tournament generated by itself a total of 329 million viewers worldwide. In addition, Complainant has a substantial presence on the World Wide Web through its official website www.uefa.com and the websites constructed especially for each EURO competition. For instance, the website<euro2000.org> had more than one billion hits. Complainant has submitted a comprehensive documentation in support of these contentions.

Complainant contends that, in view of the wide broadcast of the EURO 2000 in England Ė where Respondent actually lives Ė it seems impossible that Respondent was not aware of Complainantīs event at the time of the registration of the domain name at issue in June 2000, which occurred during the same competition. In the view of Complainant, Respondent could not have ignored the problems which Complainant had in relation to the registration of the domain name<euro2000.com by a third party; it is in fact probable that Respondent registered the domain name at issue in order to try to create similar problems for Complainant in view of the forthcoming competition in 2004. Also in respect of these contentions Complainant has submitted a number of documents, such as posters, copies of press releases, copies of TV ratings and printout of the<euro2000.org.com website.

As a basis for the Complaint Complainant invokes that, in accordance with Paragraph 3(b)(viii) of the Rules, it is the owner of all intellectual property rights in and to the trademark "UEFA EUROPEAN FOOTBALL CHAMPIONSHIP" which is the complete name of its prestigious competition commonly known as the EURO. It is registered under the Madrid Agreement and Protocol for a number of countries, including the United Kingdom, in international classes 1, 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 35, 36, 38, 39, 41 and 42. Complainant has used the trademark in connection with entertainment services, that is, the organisation of sporting events, such as football competitions. Complainant has submitted a copy of the international registration in question.

In addition, Complainant has licensed the trademark to the Local Organising Committee as well as to official sponsors and partners and also to suppliers for use on a wide variety of products and services.

Furthermore, according to Complainant, the trademark is also and has been used on Complainantís official web site <uefa.com> in connection with information on and promotion for the competition, as well as on the specific competitionīs websites.

Complainant is also the owner of numerous other trademarks mainly related to the notion "EURO", which are registered in the United Kingdom, Switzerland and Benelux. Also, for instance, the mark EURO 2000 as an emblem is subject to an international registration covering also the United Kingdom.

In accordance with past practice also the trademark "UEFA EURO 2001" as a word mark has been registered under the Madrid Agreement and Protocol in a great number of classes, with a view of the forthcoming competition in Portugal in 2004. In addition, the mark "PORTUGAL EURO 2004" as a word mark and as a device mark has been registered internationally in class 41. The marks will be used in connection with entertainment events and could be licensed to the Local Organising Committee, official sponsors and partners as well as suppliers. Complainant has submitted a number of registration certificates relating to those registrations.

Complainant adds that its trademarks are among the most famous ones in professional sport worldwide and among its most valuable assets, something that has been achieved through many years of work and considerable financial investments as well as through extensive promotion in various media. In particular, Complainantís use if its trademarks on the Internet has increased considerably during the last years; the trademarks are now widely present on the Internet and have become very important. It should be underlined that Complainant has registered its marks worldwide in class 38 exactly to protect them against unauthorised use thereof by third parties on websites and for domain name registrations.

Identity or Confusing Similarity

According to Complainant, the domain name at issue incorporates Complainantís above-mentioned valuable registered trademark. Thus that domain name is identical or confusingly similar to Complainantís trademark "UEFA EURO 2004" which is protected internationally, including in the United Kingdom. It is also similar to Complainantís other registered trademarks, protected internationally and in the United Kingdom. The fact that the terms "UEFA," "EURO" and "2004"are written together in the domain name must, in the opinion of Complainant, be considered as an unsubstantial change of Complainantís trademarks. In fact, the domain name and Complainantís trademark will be pronounced in exactly the same way. Also, it is common that Internet users usually enter domain names as a whole in one name when searching for a website relating to a trademark or a company having in its normal business life a name composed with separate terms, for instance Coca Cola.

Complainant has never licensed Respondent for the use of the "UEFA EURO 2001" trademark or any of its other trademarks, nor has it authorised or approved the Respondent to use that trademark or domain name in any manner.

Rights or Legitimate Interests

Complainant contends that Respondent has not developed any website under the domain name at issue and has not used that name in any bona fide manner. The domain name at issue is merely pointing to the hosting webpage of the Company ACTIVE ISP. Therefore, in the view of Complainant, no relation exists between Respondentīs website and the domain name at issue. Complainant has submitted a printout of the hosting webpage in question, dated May 18, 2001.

In addition, correspondence of which copies have been submitted by Complainant, shows, according to Complainant, that Respondent has never mentioned any intention or shown any interest to develop a website under the domain name at issue in the future.

Complainant adds that the domain name at issue is not and could not be contended to be a name or nickname of Respondent or other member of his family or in any other way identified with or related to a legitimate interest of Respondent. It has not been shown that Respondent is making a legitimate non-commercial or fair use of the disputed domain name without any intent for commercial gain misleadingly to divert consumers or to tarnish the trademark of Complainant. Also there is no evidence of Respondentīs use of, or demonstrable preparations to use, the domain name at issue in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the domain name at issue.

Complainant contends that Respondentís registration of the domain name of issue is preventing Complainant from registering and using the said domain name for providing information on and promoting the upcoming EURO 2004 competition. It is in the view of Complainant obviously a potential platform for "ambush" as a website constructed under the domain name and operated by Respondent will probably contain information on Complainantís events and would easily infringe Complainantís rights. This could mislead the public as to a connection between Respondentís website and Complainant as well as with the competition.

In summary, according to Complainant, it has been shown that Respondent has no rights or legitimate interests in respect of the domain name and that Respondent has not made and has not shown any evidence as to any use of the domain name.

Registration and use in bad faith

First, Complainant contends that Ė in view of what has been mentioned above, in particular the correspondence between Respondent and Complainantís counsel Ė no bona fide registration and use of the domain name has been made by Respondent and that no intent to use the domain name has been mentioned. Respondent, who is living in England, cannot have ignored Complainantís event at the time of the registration of the domain name as the EURO 2000 competition was massively broadcast by the British TV channels. In fact, the domain name was registered precisely during those competitions. Furthermore, Respondent could not have been unaware of Complainantís website<euro2000.com> and the problems in connection with that website.

According to Complainant it can be deducted from a letter of February 26, 2001, from Respondent to Complainantís counsel that the domain name at issue has been registered and is being held only for the purpose of offering it for sale to Complainant "for a substantial amount of monies, taking into consideration future losses of monies." In view of those circumstances, the domain name at issue was registered and has been acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name.

Furthermore, Complainant adds that Respondent has shown no interest in providing contents on the website <uefaeuro.2004.com> and has never shown any intention to do so. In the view of Complainant and for the reasons mentioned above, the registration is presumably made in order to create am obvious platform for "ambush" Finally, the registration of the domain name at issue is preventing Complainant from reflecting its identical or confusingly similar trademarks in a corresponding domain name and using that in connection with its competition. As has been decided in other cases the passive holding of the registration of a domain name may constitute bad faith use.

Remedies requested

In accordance with Paragraph 4(b)(i) (should be 4.i) of the Policy and for the reasons mentioned, Complainant requests that the Administrative Panel issue a decision to the effect that the domain name be transferred to Complainant.

B. Respondent

Respondent has not submitted any Response and is thus in Default

 

6. Discussions and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In the case of a Default by a Party, Rule 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as its considers appropriate. In this case the Panel notes that both the Complaint and the Notification of Respondent Default have been duly notified to Respondent. Respondent has, however, not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

According to the Registrar, the Uniform Dispute Settlement Policy applies to the registration of the domain name at issue.

Paragraph 4.a. of the Policy directs that Complainant must prove each of the following:

- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,

- that Respondent has no rights or legitimate interests in the domain name, and

- that the domain name has been registered and is being used in bad faith.

In the following parts of this decision the Panel discusses each of those elements.

Identity or Confusing Similarity

In this respect Complainant has, according to Paragraph 4.a.(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.

Complainant is, as established through a number of registration certificates submitted by it, the owner of, among a number of other similar trademarks, also the word mark "UEFA EURO 2004" which is protected in the United Kingdom. The Panel agrees with Complainant to the effect that the domain name at issue incorporates Complainantís trademark. The Panel considers that the fact that the three words in the trademark are written together in the domain name does not change the likelihood of confusion, in particular because of the specific character of the words used. The same applies to the fact that ".com" forms part of the domain name but not of the trademark. In the view of this Panel there exists a clear confusing similarity between the trademark and the domain name at issue.

Rights or Legitimate Interests

In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy to prove that Respondent has no rights or legitimate interests in the domain name.

Respondent has not contested Complainantís various allegations relating to the absence of any intention to develop or use any website linked to the domain name or to make otherwise a legitimate non-commercial or fair use of the domain name.

Complainant has also invoked several other circumstances in this context, such as that the domain name could not be contended to be the name or nickname of Respondent or in any other way be identified with or related to a legitimate interest of Respondent.

As mentioned, Respondent has not objected to any of the contentions by Complainant. The Panel considers that those contentions, which are supported by written evidence, prove that Respondent has in fact no rights or legitimate interests in the domain name at issue.

Registration and Use in Bad Faith

In this respect, Complainant has, according to Paragraph 4.a.(iii) of the Policy to prove that the domain name at issue has been registered and is being used in bad faith.

Complainant has in this respect made essentially two contentions. The first is that Respondent is living in the United Kingdom and could not have been unaware of Complainantís event EURO 2000 which was widely broadcast in that country and that the registration of the domain name occurred in the course of that event. The second is that Respondent in a letter of February 26, 2001 has indicated that it was "more than willing to negotiate the sale of rights of the domain name <uefaeuro2004.com> to you for a substantial amount of monies, taking into consideration future losses of monies." In this context Complainant also makes several other contentions, such as that Respondent has not declared any interest in providing any contents on the website associated to the domain name at issue.

Respondent has had every opportunity to contest Complainantís contentions but has not done so, nor has it commented on the documentation submitted by Complainant to support its contentions.

On the basis of the circumstances now referred to, the Panel concludes that Respondent must have been aware of Complainantís rights in relation to the UEFA EURO events at the time of the registration of the domain name at issue. In combination with Respondentís later failure to make active use of the domain name, this leads the Panel to the conclusion that the domain name was in fact registered in bad faith. The Panel furthermore considers, in line with findings in other cases, that Respondentís lack of action in relation to the domain name for a not unsubstantial period of time amounts to use in bad faith.

On the basis of these considerations and taking into account also the contents of the correspondence between Respondent and Complainantīs counsel the Panel concludes that it has been established that Respondent has registered the domain name at issue primarily for the purpose of selling, renting or otherwise transferring it to Complainant for a valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name.

Conclusions

On the basis of the foregoing, the Panel finds that Respondentís domain name is confusingly similar to Complainantís trademark, that Respondent has no rights or legitimate interests in the domain name and that the domain name at issue has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy and in accordance with the request by Complainant, the domain name at issue shall be transferred to Complainant.

 

7. Decision

The Administrative Panel directs that the domain name <uefaeuro.2004.com> registered with Melbourne IT, Ltd, be transferred to Complainant.

 


 

Henry Olsson
Sole Panelist

Dated: July 10, 2001