WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FIFA v. Andy Muffy

Case No. DTV2001-0031

 

1. The Parties

The Complainant in this administrative proceeding is Fédération Internationale de Football Association ("FIFA") based at Hitzigweg 11, P.O. Box 85, 8030 Zürich, Switzerland represented by Allen & Overy, attorneys at Tervurenlaan 268A, 1150 Brussels, Belgium.

The Respondent is Andy Muffy, also acting as David Miller or Servcorp, based at 60 Marcus Clarke Street, Civic, Canberra, Australia.

 

2. The Domain Name and Registrar

The domain name at issue is <fifa.tv > ("the Domain Name").

The Domain Name is registered with The .tv Corporation International, 1100 Glendon Avenue, 8th floor, Los Angeles, CA 90024, USA.

 

3. Procedural History

Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on December 17, 2001, and by hard copy on December 19, 2001.

On December 20, 2001, the Center acknowledged receipt of the Complaint.

On December 28, 2001, the Center transmitted to The .tv Corporation a request for registrar verification in connection with this case so as to:

- Confirm that the Domain Name at issue is registered with registrar;

- Confirm that the person identified as the Respondent is the current registrant of the Domain Name;

- Provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address (es) available in the Registrar's Who is database for the registrant of the disputed Domain Name, the technical contact, the administrative contact, and the billing contact for the Domain Name.

On January 3, 2002, The .tv Corporation responded to provide the details requested by the Center, and to confirm that it was the concerned registrar.

On January 7, 2002, the Center verified that the Complaint met 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The panel has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the aforementioned Rules.

The administrative proceeding commenced on January 14, 2002. The same day, the Complaint was notified to Respondent.

On February 2, 2002, Respondent filed a Response by email and on February 7, 2002, by hardcopy, the receipt of which was acknowledged by the Center on February 4, 2002.

On February 11, 2002, via email and by hard copy Complainant filed a Reply to which Respondent objected on the same day.

Upon receipt of the necessary declaration of independence and impartiality of the present panel, the Center appointed on January 20, 2002, Prof. Charles Gielen as sole panelist.

 

4. Factual Background

Complainant, founded in 1904, is amongst others the originator and organiser of a number of world and European soccer championships and its name has a big reputation in the world. According to Complainant it owns several registrations of the trademark FIFA for goods and services in several classes. Complainant filed copies international Swiss and Australian registrations. Furthermore Complainant points at its domain name <www.fifa.com> that has been in operation since 1995.

Respondent says he is an Australian national, whose name is David Miller and who acts under the trade name Servcorp. The Domain Name was registered under a nic name, being Andy Muffy on April 15, 2000. Servcorp owns many domain names with descriptive words such as <plantlife.tv> and <orderly.tv> and other domain names with non descriptive words such as <waraths.tv>.

After the Complainant contacted Respondent by email on November 21, 2001, with a request to transfer the Domain Name against payment of out of pocket expenses, Respondent answered by email on December 4, 2001, that he would not transfer the Domain Name immediately, suggesting the text of a request to get the Domain name back and finally with the question whether, if Complainant was really interested in the Domain Name, it should let the Respondent know.

 

5. Parties' Contentions

(i) Complainant

Complainant alleges that the Domain Name is identical to the trademark registered and used by Complainant. It points out that Respondent does not carry any legitimate business under the name "fifa". Furthermore the Domain Name is registered and used in bad faith. In this context Complainant states that before the email of November 21, 2001, was sent and when using the Domain Name, one was redirected to <www.thescore.com.au>, a website showing scores on different sports such as soccer. After the email was sent the website under the Domain Name was changed and it then referred to "Forests Information Forum of Australia." Bad faith can be demonstrated because likelihood of confusion arises. The public might think that there was some relationship between the website of Respondent and Complainant, because the registration and use interferes with the business of Complainant and, finally, because Respondent wanted to assign the Domain Name for an amount higher than his out of pocket expenses.

(ii) Respondent

Respondent does not dispute that the trademark "Fifa" is identical to the Domain Name, but states that he has a legitimate business in the name "Fifa" which was commonly known as "Forrestry Information Forum of Australia" since April 2000, and furthermore he denies having registered and used the Domain Name in bad faith. He states that there was no redirection via <fifa.tv> to <thescore.com.au> which he states was owned by "the score scoreboard pty. ltd." and not by Servcorp. He denies to have registered and used the Domain Name in bad faith, which follows from the fact that he paid the registration in advance for 16 years. Furthermore there is and has been no confusion, and the registration and use of the Domain Name does not interfere with the business of Complainant.

 

6. Discussion and Findings

The panel first has to deal with a procedural issue. Complainant filed a Reply to the Response of the Respondent to which Respondent objected. Indeed, the Rules do not provide for further submissions unless the panel so requests (paragraph 12). The panel therefore will not take into account the further submissions in the Reply.

To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

2. the Respondent has no rights or legitimate interests in the Domain Name; and

3. the Domain Name has been registered and used in bad faith.

These three elements will be considered below.

6.1 Identity or confusing similarity

Respondent does not dispute that the Domain Name is identical with Complainants trademark. The panel finds that the Domain Name and the trademark of Complainant are identical.

6.2 Rights or legitimate interests

The panel is of the opinion that Respondent did not give any proof of use of the name "Fifa" as an abbreviation of "Forests (or Forrestry) Information Forum of Australia" before registration of the trademarks of Complainant. In fact, with the exception of the <fifa.tv> website, no proof of any use is given which leads the panel to the conclusion that there were no existing user rights, that Respondent has not been commonly known under the Domain Name and finally that there is no legitimate or fair use of the Domain Name. This is demonstrated not only by the fact that, in his response to the first email from Complainant, no reference whatsoever was made by the Respondent to the Forests Information Forum of Australia, but also since there are clear indications that the name <fifa.tv> was originally used to redirect consumers to a website showing sport scores. Although Respondent is right in saying that there is no actual proof by Complainant that the redirection did take place (Exhibit 12 of the Complaint indeed does not show the Domain Name), it is also clear that Respondent does not give any proof that the Information Forum website was already in existence under the Domain Name before the first email from Complainant. Finally it is clear that the website under the domain name <thescore.com.au> as well as <fifa.tv> all belong to one and the same group of persons, namely Servcorp or Andy Muffy who in turn is Respondent. This all leads the panel to the conclusion that the website on the Information Forum was constructed on purpose, after the first email from Complainant, and therefore no legitimate interests by Respondent existed. The panel therefore concludes that condition 2 is fulfilled.

6.3 Bad Faith

According to paragraph 4(a)(iii) of the ICANN Policy, it is incumbent on the Complainant to prove that the Respondent has registered and is using the domain name in bad faith. The panel is of the opinion that such proof is given. Respondent does not deny that he knew the name "Fifa" and that this name is well known in a large part of the world. It is clear that Respondent owns a very large number of .tv domain names which are clearly not meant for actual use. The panel refers to article 4(b)(i) of the Policy and is of the opinion that bad faith can be deduced from circumstances indicating that the Domain Name is registered primarily for the purpose of transferring the Domain Name to Complainant for valuable consideration. The Respondent clearly refused an assignment in return for out of pocket expenses only, and indicated that he was willing to negotiate further. It is also clear to the panel that the defence based on "fifa" meaning "Forests (or Forestry) International Forum of Australia" was a construction to give the false impression that within the context of this "Forum" serious activities were carried out or planned which was not the case. There are strong indications that originally the Domain Name directed users to a site containing sport scores including soccer scores, which was or could have been confusing in view of the activities of Complainant. All these circumstances lead to the conclusion that the Domain Name was registered and used in bad faith.

 

7. Decision

For the foregoing reasons, the panel concludes and decides that the Domain Name <fifa.tv> is identical to the trademarks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.

Accordingly and pursuant to Paragraph 4(i) of the Policy and in accordance with the request by Complainant the panel requires that the Domain Name be transferred to Complainant.

 


 

Prof. Dr. Charles Gielen
Sole Panelist

Dated: February 27, 2002