WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Panathinaikos Athlitikos Omilos - Football Socit Anonyme , Green Team S.A. v. Internet Pennsylvania Inc.

Case No. D2008-0044

 

1. The Parties

The Complainant is Panathinaikos Athlitikos Omilos - Football Socit Anonyme, Green Team S.A., Athens, Greece, represented by Karageorgiou & Associates, Greece.

The Respondent is Internet Pensylvania Inc., Harrisburg, Pensylvania, United States of America, represented by McNees Wallace & Nurick LLC, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <pao.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2008. On January 14, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 14, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Parties mutually agreed to extend the Response due date to February 28, 2008. The Response was filed with the Center on February 27, 2008.

The Center appointed James A. Barker as the sole panelist in this matter on March 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 18, 2008, the day before the due date for this decision, the Complainant filed a further communication with the Center, seeking to provide further evidence in connection with its case. The Center received several e-mail communications regarding the admission of the March 18, 2008 submission by the Complainant.

 

4. Factual Background

The following facts are not contested by the parties.

The Panathinaikos Football Club is a Greek football club. The Club was legislatively established on July 30, 1979 under the name “Panathinaikos Athlitikos Omilos – Podosfairiki Anonimi Etaireia”; the acronym “P.A.O. P.A.E.”. P.A.O. is the abbreviation of “Panathinaikos Athlitikos Omilos”, which is translated in English “Panathinaikos Athletic Club”, while P.A.E. is the abbreviation of “Podosfairiki Anomimi Etaireia”, which is translated as “Football Socit Anonyme”. On its official website, UEFA refers to the football team of PAO, the abbreviation of Panathinaikos Athlitikos Omilos (Panathinaikos Athletic Club).

The law under which the Complainant is established provides that (according to the Complainant) it has the right to use an unregistered trademark consisting of the name “Panathinaikos” (“Παναθηναϊκός” in Greek characters), a green shamrock and the number 1908 (the year the Amateurs Athletic Association of Panathinaikos was created).

Green Team S.A. is responsible for the licensing, commercial exploitation and distribution of Panathinaikos’ official products. Green Team is the owner of the trademark “1908 PANATHINAIKOS A.O. P.A.E.”, registered on July 19, 1995, used in relation to products such as videos, CDs, radios, watches, bijoux, photos, posters, notebooks, books, pens, bags, mugs etc.

The Complainant operates a website at “www.pao.gr”.

At the date of this decision, the disputed domain name reverts to a ‘parking’ or ‘landing’ website. The website provides a list of links under the heading “Internet Pennsylvania”. The disputed domain name is ‘parked’ at “www.sedo.com”.

The disputed domain name was first registered by the Respondent in August 1994. The Respondent is also the registrant of another domain name (not in dispute): <paonline.com>.

 

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complaint.

Identical or confusingly similar

The term “PAO” is an abbreviation for “Panathinaikos Athlitikos Omilos”, which stands for “Panathinaikos Athletic Club”, meaning the Athletic Club of Panathinaikos having the football team of PAE PAO. Internet users seeking the Complainants’ websites are likely to use the name “www.pao.com”, particularly after determining that the active web site of Panathinaikos FC is “www.pao.gr”. Given this, the disputed domain name is confusingly similar to the Complainant’s unregistered trademarks PANATHINAIKOS 1908 and 1908 PANATHINAIKOS A.O. P.A.E.”.

Moreover, the disputed domain name is identical to the Complainant’s trade name and distinctive title “PAO PAE”. Even though trade names and distinctive titles are not subject of the Policy they do enjoy protection under the Greek law. The Complainant also refers to the prior decisions under the Policy, to the effect that trade names may establish a relevant right where a complainant establishes trademark rights in those names: Express Manager Systems, Inc. v. Golden State Overnight, WIPO Case No. D2001-0507 and Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E Parts, WIPO Case No. D2000-0819.

The Complainant refers to other disputes relating to domain names transferred to it, including <pao.eu> (Decision no 04379/21.03.2007 issued by A.D.R., domain name disputes) and <paofc.eu> (Decision no 04451/04.05.2007) issued by the Prague based Arbitration Court for the Alternative Dispute Resolution for .eu Disputes. (Those decisions were rendered in Greek. The Complainant provided partial translations in English of those decisions.)

Rights or legitimate interests

The Respondent is commonly known by its name, Internet Pennsylvania, which has no connection or similarity with the disputed domain name. Moreover, the Respondent has never acquired a trademark or any service mark rights similar to the domain name in question.

The Respondent has no connection or affiliation with the Complainant. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

On the contrary, following a quick review of the Respondent’s website, it is evident that the Respondent specializes in registering domain names that become available for registration through expiration or deletion, ‘parks’ them, and then offers them for sale to the public.

Bad faith

The Respondent had actual or constructive knowledge of the Complainant, since the Complainant is famous. However, even if the Respondent was not actually aware of the Complainant, it must have been willfully blind to the Complainant’s rights.

The Respondent’s primary business practice is to automatically register expired or free domain names and ‘park’ them in pay-per-click portal sites with sponsored links. This practice clearly indicates that the Respondent seeks opportunities for mass registration of domain names without specific considerations of third parties intellectual property rights.

B. Respondent

The following is summarized from the Response.

Identical or confusing similar

The disputed domain name is neither identical nor confusingly similar to the marks in which the Complainant claims rights. The Greek Government Gazette, which the Complainant relies on in this respect, indicates that its trade or distinctive name should be taken as “P.A.O. P. A.E.” and not “P.A.O.”. The Complainant has not offered sufficient proof of its rights.

Rights or legitimate interests

The Respondent has both rights and legitimate interests in the disputed domain name.

The Respondent has rights in PENNSYLVANIA ONLINE and PA ONLINE as unregistered trademarks. Pennsylvania Online Ltd is a corporation registered in Pennsylvania, since 1995. It operates under two business names, “PA Online” and “Pennsylvania Online”, both of which were registered with the Commonwealth of Pennsylvania on September 9, 1999. (The Complainant provided copies of those registrations.) In addition, the Respondent registered another domain name, <paonline.com>, on October 5, 1993.

The Respondent began using its marks in connection with ISP goods and services at least as early as 1985 and has continuously used those marks since that date. The Respondent attached a declaration to this effect of Mr. George F. Peace, the former President of PA Online and current President of Internet Pennsylvania. Mr. Peace deposes that he served as President of Pennsylvania Online Ltd until he sold all his stock in the company on January 1, 2003. He deposes to have been continuously and directly in control of the disputed domain name since its registration in August 1994.

For a short period after his sale of stock in PA Online, he deposes that the disputed domain name was used as a secondary website for Internet Pennsylvania. At that time, Internet traffic was diverted from the disputed domain name to Internet Pennsylvania’s main website at “www.internetpa.com”. The primary use of the disputed domain name is to provide email services to customers of both Internet Pennsylvania and PA Online with email accounts at “webmail.pao.com”. The disputed domain name is used as a ‘parked’ website to cover its annual registration fee, and so that customers can continue to use email accounts at “webmail.pao.com”.

The Respondent also provided evidence from “www.archive.org”, indicating that the disputed domain name, from its initial registration, reverted to the website of Pennsylvania Online. The Respondent claims that this was a legitimate commercial use.

Bad faith

The Respondent has not registered or used the disputed domain name in bad faith.

The Complainant did not own any relevant rights when the disputed domain name was first registered. The Respondent has continuously and legitimately used it.

The Complainant’s marks were not and are not famous in the United States of America. European soccer is not a popular sport in the United States of America, and it is unlikely that more than a handful of avid fans there have every heard of the Complainant’s club. Mr. Peace also deposes that he had no knowledge of the Complainant until he was served with a copy of the Complaint.

At the time of the Respondent’s registration of the disputed domain name, the Complainant did not own any United States or international trademark registrations, nor any domain names. It is difficult to conceive, as the Complainant argues, that the Respondent registered the disputed domain name to prevent the Complainant from using a domain name corresponding to its mark or to create confusion.

Although a laches defense is generally not recognized under the Policy, it should be considered given the length of the Complainant’s delay in asserting its rights.

Reverse domain name hijacking

The Respondent requests that a finding of reverse domain name hijacking be made against the Complainant.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed as follows, immediately after consideration of a late filing by the Complainant.

A. Further filing by Complainant

On March 18, 2008, one day before the date of this decision, the Complainant sought to file further information in connection with this case.

Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has a discretion to admit or invite further filings under the paragraph 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel considers that such filings should usually only be admitted if it is both necessary to the Complainant’s case, and could not reasonably have been addressed in the Complaint as first filed (for example, because a respondent produces new facts which a complainant could not have anticipated).

These circumstances are not present in relation to the Complainant’s further evidence. The Complainant nevertheless requested that it be considered since the information “is not included in the Whois database”. The Panel notes that this information is not such that would ordinarily be found in the Whois database. That database is simply one source of evidence, potentially among many others. Despite this, the Panel considered the further evidence, because it was relatively insubstantial.

The Complainant’s further evidence was that the disputed domain name is offered for sale at “www.sedo.com”. The Complainant said that it found this out “accidentally”. The Complainant made no argument as to what conclusion should be drawn from this evidence. The Panel also took into account that this is information that might have easily been addressed in the original Complaint, and which the Respondent has not had the opportunity to rebut.

Further, it is not self-evident that the mere advertisement of the disputed domain name for sale otherwise affects the findings set out below. For example, it may be that the advertisement of the domain name for sale is merely an incident of it being parked at “www.sedo.com”.

For these reasons, the Panel did not draw any dispositive conclusion from the Complainant’s further evidence.

B. Identical or Confusingly Similar

The first thing which the Complainant must prove if it is to succeed, is that it relevantly “has rights” in a mark, for the purpose of paragraph 4(a)(i) of the Policy. In this case, the Complainant has referred to a number of marks in which it claims rights:

- the acronym of its name “Panathinaikos Athlitikos Omilos” (PAO), by which the Complainant says it is commonly referred. The Complainant argues that this is the term by Internet users would expect to find it.

- unregistered trademarks PANATHINAIKOS 1908 and 1908 PANATHINAIKOS A.O. P.A.E. Although unregistered as such, the Complainant provides evidence that it has rights in these marks under Greek law.

- its trade name and title “PAO PAE”, which is the acronym of its legislatively recognized marks. The Complainant also provides evidence that this is its “distinctive name” for the purpose of Greek law.

The acronym of the Complainant’s name - PAO

The Complainant claims that the disputed domain name is identical to the acronym of its name: PAO. This is self-evidently so. But more is needed for it to make its case under the Policy. In particular, the Complainant must establish that PAO is a “trademark or service mark” for the purpose of paragraph 4(a)(i) of the Policy. There are a number of cases decided under the Policy, in which sporting associations have succeeded in claims relating to acronyms of their names. In those cases however, the associations have all established that the acronym is a trademark or service mark.

Establishing rights in a mark that is also an acronym is simple enough, where the mark is registered as such. (See for example, FIFA v. Andy Muffy, WIPO Case No. DTV2001-0031; The Professional Golfers Association of America v. Mr. Michael Suggs, WIPO Case No. DTV2007-0012; Sporting Goods Manufacturers Association v. InterAD Group, Inc., WIPO Case No. D2000-0202; National Collegiate Athletic Association v. Rodd Garner and IntheZone.ws, WIPO Case No. D2000-0940.)

However, the Complainant does not argue or provide evidence of having registered rights in PAO as a mark. Neither does it provide evidence that its rights in its name, granted under Greek law, provide it rights in the acronym PAO, standing on its own.

As such, the Complainant must prove that it has unregistered trademark rights in PAO. Whether the Complainant has established such rights for the purpose of these proceedings is, essentially, a question of fact. In other words, has the Complainant provided sufficient evidence that the acronym has achieved notoriety as a mark? In the context of a sporting association, see for example, National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a Trademark, WIPO Case No. D2005-0234. In that case, the Panel found “extensive and continuous use of the acronym ‘NFLPA’ by the Complainant sufficient to identify and distinguish its particular services from those of any competitor.” As noted by the then panel, among other evidence, the then-complainant submitted a considerable sampling of Internet, magazine, and newspaper articles which uniformly referred to complainant interchangeably as the National Football League Players Association, National Football League Players, and by the acronym, the NFLPA.

In this case, it is also significant that the Complainant seeks to establish common law rights in a relatively small combination of letters. Relevantly, “[i]n many trademark systems, such marks have been treated in the first instance as signs which are ‘generic’ in the sense that different traders may have a legitimate interest in adopting them. It thus requires proof of considerable use before the sign will acquire sufficient distinctiveness to justify its registration as a mark for even a narrow class of goods or services.” Formula One Licensing BV v. Formula One Internet, WIPO Case No. D2000-0193.

The evidence that the Complainant provides in this connection is not strong. The Complainant states that Internet users are likely to search for it at the disputed domain name. However, the Complainant does not say why. It is not self-evident that Internet users would look for the Complainant by the acronym PAO, particularly where the Complainant appears to be known under a number of marks (as evidenced by the Complainant itself), and a three letter combination might have a number of other associations. Internet users might look for the Complainant under that term if the Complainant was commonly known by it. But the Complainant provided little evidence of this.

For these reasons, the Panel finds that the Complainant has not provided sufficient evidence to establish common law rights in PAO.

The marks PANATHINAIKOS 1908 and 1908 PANATHINAIKOS A.O. P.A.E.

The Complainant provides evidence of having rights in the marks PANATHINAIKOS 1908 and 1908 PANATHINAIKOS A.O. P.A.E. On an objective comparison, the Panel does not find that the disputed domain name is identical or confusingly similar to those marks.

The Complainant’s trade name and title “PAO PAE

The Complainant also provides evidence that it has rights in the mark P.A.O. P.A.E., as recognized under Greek law. Such rights appear sufficient to establish that the Complainant “has rights” for the purpose of paragraph 4(a)(i) of the Policy. The Complainant claims that it is relevantly conferred with unregistered trademark rights on this basis. The Respondent itself does not appear to dispute this point.

The question is then whether the disputed domain name is confusingly similar to that mark (it is, self-evidently, not identical to it).

Although it is not dominant, the acronym PAO does appear to be a significant part of that mark, to the simple extent that it comprises 50% of it, and comprises the first three letters.

Further, the Complainant refers to two cases decided in its favor under the .eu Dispute Resolution Rules (R 874/2004/EC), in relation to its name “P.A.O. P. A.E.”, and involving the domain names <pao.eu> and <paofc.eu>. Relevantly, for a complainant to succeed under those rules, it must establish that a domain name is identical or confusingly similar to a name in respect of which a right is established under a law of a member State or Community law. That is, to the extent that it has rights in “P.A.O P.A.E” as a mark (which appears to have also been treated as a “name” for the purpose of prior .eu disputes), a prior panel has found that that mark is confusingly similar to the term “pao”. The extracts of those decisions provided by the Complainant do not set out any substantive discussion by the then panels as to why that conclusion was reached. Those prior decisions, under a different policy, are also not binding on this Panel in these proceedings. However, as noted in item 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, it is desirable that decisions are consistent with prior decisions dealing with similar fact situations. Although that Overview relates to the UDRP system, this Panel considers it similarly desirable for there to be consistency with the way similar issues have been resolved under other relevantly similar domain name dispute resolution policies.

For all these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PAO PAE mark. The Complainant has therefore established this first element.

C. Rights or Legitimate Interests

The Respondent has provided substantial evidence that it had a legitimate commercial purpose when it registered the disputed domain name. In addition, the disputed domain name has been registered for a significant period prior to these proceedings – in 1994.

The Respondent also provided various evidence that it had, at that time and subsequently, used the disputed domain name in connection with the business of an ISP goods and services provider, known as Pennsylvania Online. The Respondent provided evidence of the disputed domain name being used for this purpose between 1998 and 2006. The ongoing corporate relationship between the Respondent (Internet Pennsylvania) and Pennsylvania Online, beyond sharing Mr. George Peace as their President, is not explained in detail by the Respondent. Nevertheless, Mr. Peace credibly deposes that the Respondent’s interest in the disputed domain name now lies in its continued use of email accounts available at “webmail.pao.com”. As such, the Panel finds that the Respondent has, at least, demonstrated a right or legitimate interest in the domain name by showing that, “before any notice to [the Respondent] of the dispute, [the Respondent made] use of…the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.

For these reasons, the Panel finds that the Complainant has not established this second element.

D. Registered and Used in Bad Faith

Because of the Panel’s findings above, it is strictly unnecessary for the Panel to make a finding on this element. However, for completeness, the Panel notes that it would find against the Complainant on this third ground also.

A finding of bad faith fundamentally requires that the Respondent intentionally knew of the Complainant, or in appropriate circumstances was ‘willfully blind’, and sought to trade on the reputation of the Complainant’s mark.

There is little evidence in this case from which such an intention could be inferred. There is no evidence that the Complainant has trademark rights in the three letter combination PAO on its own. Further, and importantly, there seems no good reason why the Respondent, based in the United States of America, should have known of the Complainant’s rights in the PAO PAE mark when it obtained registration of the disputed domain name. The Complainant provided little evidence to support such a finding. Rather, as noted above, the evidence more strongly indicates that the Respondent has a legitimate commercial purpose for maintaining the registration of the disputed domain name.

For these reasons, the Panel finds that the Complainant has not established this third element.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

While the Complaint has not succeeded, the Panel stops short of making a finding that it was brought in bad faith. Some of the Complainant’s own argument (e.g. referring to evidence based on a “quick review” of the Respondent’s website) suggests that it did not undertake a detailed investigation of the Respondent’s prior use of the disputed domain name. Such an investigation by the Complainant should have disclosed to the Complainant the weakness of its case. However, there is little evidence that the Complainant deliberately initiated these proceedings with knowledge that the Complaint was not well-founded.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


James A. Barker
Sole Panelist

Dated: March 19, 2008