WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Sportsworld Communicators Limited v. Bo Cook

Case No. DBIZ2002-00072

 

1. The Parties

The Complainant in this administrative proceeding is International Sportsworld Communicators Limited, a company incorporated in England and Wales. The Respondent in this administrative proceeding is Bo Cook of Apex, NC, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <wrc.biz>. The Registrar of the domain name is 007 NAMES, INC. of Bridgewater, NJ, United States of America.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the Policy"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> ("the WIPO Supplemental STOP Rules").

The Administrative Panel consisting of one member was appointed on June 20, 2002, by the World Intellectual Property Organization ("WIPO").

The Complainant filed its STOP Complaint with the WIPO Arbitration and Mediation Center ("the Center") on April 25, 2002. On May 14, 2002, having verified that the STOP Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. The Respondent filed his Response with the Center on June 3, 2002.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.

 

4. Factual Background

The following information is derived from the Complainant.

The Complainant is a sports rights management company which is committed to the development of the World Rally Championship.

The Federation Internationale de líAutomobile ("FIA") is the international governing body for motor sport and has overall authority over sporting and technical matters concerning motor sports, including rallying. On August 27, 1996, the FIA entered into an agreement with the Complainant granting the Complainant exclusive rights to run the commercial aspects of the World Rally Championship including the right to own and exploit all intellectual property rights and the right to exploit all audio and audio-visual images relating to the World Rally Championship ("the Agreement" and "the Amended Agreement").

The Agreement gave the Complainant exclusive rights for 10 years. The Amendment Agreement provided that the rights granted under the Agreement in respect of the World Rally Championship may not be terminated before the end of the term. Negotiations recently have been concluded extending those rights for 100 years. The new agreement will be based largely on the existing Agreement save for the term.

The World Rally Championship began in 1973. In the 2001 and 2002 Championships there were 14 rallies across 4 continents, starting with the Monte Carlo Rally in January and finishing with the Rally of Great Britain in November. The rallies cover France, Sweden, Spain, Greece, Argentina, Kenya, Finland, Germany, Italy, New Zealand, Australia and Great Britain.

Each individual rally lasts three days (Friday, Saturday and Sunday) and participants include teams from seven of the worldís leading manufacturers: Citroën; Ford; Hyundai; Mitsubishi; Peugeot; Skoda and Subaru.

Remote and virtual spectating of the sport is widespread. Over the last six years, the World Rally Championship has been broadcast globally and is currently accessible in 186 countries including the United States.

The Complainantís recently audited figures reported that during the year 2000, 4.8 billion viewers worldwide watched the various rallies.

The Complainant licenses the publication of a magazine entitled "rallyXS" which is the official magazine of the World Rally Championship under a publishing agreement with Haymarket Autosport Publications Limited. The magazine is based in Great Britain and is available in a number of countries including the United States. Advertisements in the magazine for the World Rally Championship refer readers to <wrc.com> and display the WRC logo.

The Sony Playstation2 computer game WRC World Rally Championship has been developed and distributed by Sony under licence from the Complainant. The arrangement provides for worldwide distribution of the game and the United States is among the territories in which the game is exploited.

In marketing and commercial terms, the Complainant is pushing boundaries forward to develop the World Rally Championship further. The Complainant is successfully promoting rallying and the World Rally Championship to a mass-market audience and broadening its appeal. In particular, the various rallies are now recognised as part of one overall brand under the WRC World Rally Championship banner. The WRC acronym has become synonymous with the World Rally Championship.

In accordance with the Agreement with the FIA, the Complainant has trade and service mark applications and registrations for the WRC WORLD RALLY CHAMPIONSHIP and WRC trademark and logos in 22 countries including the United States.

A stylised form of the WRC WORLD RALLY CHAMPIONSHIP trademark and of the WRC trademark have been in widespread use by the Complainant as logos in connection with the World Rally Championship since 2000.

The Complainant is the owner of 16 domain names in connection with the World Rally Championship of which 5 use the acronym WRC. There are various other domain name registrations pending in several countries worldwide.

The Complainant uses the domain name <wrc.com> as its primary website address. It achieves over 4 million page impressions per month and the Complainant calculates that the website has 650,000 unique users. During the four days alone over which the 2002 Cyprus Rally was held, there were 2,099,222 page impressions and 108,013 daily unique visitors.

The subject domain name was registered on March 27, 2002.

The Complainant first heard of the Respondent on April 3, 2002, when it was notified by the Registry Operator that the Respondent had registered the subject domain name.

Neither the Complainant nor the FIA has given any licence, implied or express, to the Respondent for the use of the WRC or WRC WORLD RALLY CHAMPIONSHIP marks.

The Complainantís authorised representatives carried out various searches, none of which revealed the Respondent to have any legitimate right to the subject domain name. Web searching across a variety of different search engines returned no relevant results.

The URL www.wrc.biz does not point to a website. The Complainant acknowledges that this may be due to the fact that the Registry Operator has placed the domain name on hold.

The Respondent is not commonly known by the subject domain name.

The following information is derived from the Response.

The Respondentís legal name from birth is William Robert Cook, Jr. His initials are W.R.C.

The Respondent intends to use the subject domain name for a future construction and real estate development business. He intends to use the subject domain name as a master web page for the businesses; i.e. WRC Construction Co., WRC Development Co., WRC Property Management Co. etc.

The Respondent developed this naming structure based on an investment partnership in which he became involved during the mid 1980ís whose general partner is a company named WCS Oil & Gas Corporation.

According to a U.S. Federal Trademark search, the Complainant does not appear to have a specific trademark for the letters WRC. It appears that the trademark that is being referred to in the Complaint contains the letters WRC in addition to a title of a racing series.

Before the Respondent pursued the subject domain name he performed a U.S. Federal Trademark search and analyzed each WRC listed. He did not find the Complainant listed as the owner of any of them. The respondent did not look at any other trademark owner other than those listed as WRC trademark holders and performed only a U.S. Trademark search.

Until April 26, 2002, the date the Respondent was notified by the Complainant, he had no knowledge that the World Rally Championship existed.

On the same day he received the notification, for the first time the Respondent viewed the <wrc.com> web page that showed the World Rally Championship. He did not spend any time looking at it and still does not understand the structure of the organization. The Respondent does not want to become knowledgeable about the Complainant.

The Respondent has never seen any type of sports coverage for the Complainantís activity. His househol has not had cable TV for over 10 years and he does not watch TV. The Respondent could not have seen any of the televised races to which the Complainant refers. The only type of racing with which the Respondent is familiar is the American racing series, NASCAR. He has very limited knowledge of the Indy Racing League (Indianapolis 500) and the CART racing series. The Respondent has never seen any newspaper articles on the World Rally Championship.

The Complainant referred to the telephone number that is listed in the domain registration as being registered to a FA Pedrigi. Francis Anne Pedrigi is the Respondentís wife who chose to keep her maiden name.

The Respondent has no interest in selling the subject domain name.

The Respondent does not compete with the Complainant and does not envision doing so.

5. Partiesí Contentions

A. Complainant

The Complainant relies on its use and registration of WRC and states that the subject domain name is identical. It points to the usual indicia of the absence of a legitimate interest by the Respondent: not known by the subject domain name; no permission to use the Complainantís mark; no commercial activity at the site to which the subject domain name resolves; etcetera.

Bad faith is said to be established by the notoriety of the Complainantís mark and activities and by "blocking" use, that is, a registration and passive use that prevents the Complainant from acquiring the subject domain name.

B. Respondent

The Respondent does not dispute the contention that the subject domain name is identical to the mark WRC, but found no such registration in the United States.

The Respondent contends that he does have a legitimate interest in the subject domain name because it uses his initials. He also asserts that he intends to use the subject domain name in a business unrelated to the activities of the Complainant and that he had never heard of the Complainant or its activities prior to the present dispute.

The Respondent denies bad faith. He does not intend to sell the subject domain and does intend to use for his own business purposes.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered or is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant refers to a number of previous domain name dispute and domestic court decisions. Although these are neither controlling nor binding on this Administrative Panel, consideration of them often is of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

A. Identical

It is clear that the Complainant has rights to the letters WRC either through registration or at common-law. The subject domain name differs only by the addition of .biz, which is not relevant.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondents Legitimate Interest

The Complainantís prima facie case concerning the Respondentís lack of a legitimate interest in the subject domain name is challenged by information supplied by the Respondent.

The Respondent relies on the fact that the letters W.R.C. are his initials. Standing alone this would not establish a legitimate interest in the subject domain name in light of the Complainantís rights.

Of importance is the Respondentís intended use of the subject domain name in a business that is unrelated to the Complainantís activities. At the time he registered the subject domain name, he knew nothing of the Complainant. He had no intention of capitalizing on the Complainantís mark and reputation.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

The Complainant relies on presumptive concepts to establish bad faith: notoriety; blocking use. Although these should be used with caution, in appropriate circumstances they can support a finding of bad faith.

In this case, the Complainant considers its mark and activities to be notorious. Often parties who dominate an area of activity presume that the world knows of them and their position. That is not always the case.

Here, the Respondent denies knowledge of the Complainant and its activities. He also states why he registered the subject domain name and the Administrative Panel concludes that he had a legitimate interest doing so.

The facts in this case do not lead to a finding of bad faith. They do not support a blocking use. The Complainantís notoriety is apparent to those who follow the sport in which it is active, but not necessarily to the world at large.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has not established its case. The Complainant is dismissed.

The Administrative Panel also concludes that no other challenges are allowed.

 


 

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: July 10, 2002