WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Arsenal Football Club Public Limited Company v. Official Tickets Ltd
Case No. D2008-0842
1. The Parties
The Complainant is The Arsenal Football Club Public Limited Company, of London, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Official Tickets Ltd, of South Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name <official-arsenal-tickets.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2008. The named Respondent was Domains by Proxy, Inc. On June 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On June 2, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, advising that the Respondent Official Tickets Limited is listed as the registrant, and providing the contact details. The Center sent an email communication to the Complainant on June 3, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 5, 2008, naming Official Tickets Limited as Respondent. The Center verified that the Complaint together with the amendment to 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 June 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on July 9, 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.
As no response was filed, the Panel has checked the record to ensure that the amendment to the Complaint was properly notified to the Respondent. The Panel is satisfied that the Center has discharged its responsibility in that regard.
4. Factual Background
The Complainant is the owner of the well known London-based football club, Arsenal. It holds numerous registrations for the mark ARSENAL in the United Kingdom of Great Britain and Northern Ireland, the European Union, and the United States of America. The Complainant also holds international registrations of the ARSENAL mark.
It is not necessary to refer to all of these trade mark registrations. It is enough for present purposes to refer to the two United States of America registrations relied upon by the Complainant. First, the Complainant registered the word mark ARSENAL, in various classes and covering a variety of goods and services, with effect from September 1997. Secondly, the Complainant holds an ARSENAL device mark, consisting of the word “Arsenal” on a shield device. Again, this registration covers numerous goods and services in various classes, including “arranging and conducting… football competitions… providing facilities for soccer and football matches… provision of sports information services… organisation of sporting events” in International Class 41. This registration has effect from February 2003.
In addition to its ARSENAL trade mark, the Complainant owns a number of domain names which incorporate the word “Arsenal”.
The Complainant’s principal website is at “www.arsenal.com” (“the Complainant’s Website”). The Complainant’s Website contains an area where Internet users can purchase authentic tickets and information on ticket retailers for football matches featuring the Arsenal Football Club.
The Respondent and the Domain Name
The Domain Name was registered on October 24, 2007. The original registrant appears to have been Domains by Proxy, Inc., and the WhoIs particulars produced by the Complainant show that that company was the registered holder of the Domain Name as recently as March 19, 2008. At some time between that date and the date of filing the Complaint, the registration of the Domain Name appears to have been transferred to the Respondent, Official Tickets Limited.
The Complainant has produced a screen shot taken from the website to which the Domain Name resolves (“The Respondent’s Website”), taken on March 19, 2008. On that date, the Respondent’s Website prominently featured the Complainant’s ARSENAL word and shield device marks, and contained the introductory words:
“Welcome to Official Arsenal Tickets. Book your official tickets online through our secure system. All tickets booked are confirmed and guaranteed.”
To the left of the screen, there appeared prominently the words:
Get it, Enjoy it!”
The Respondent’s Website then featured click-on icons, where the site browser could view tickets available for various Arsenal fixtures in the English premier football league. The Respondent’s website also provided click-on links to web pages offering “Top Official Tickets” for various other clubs in the English premier league, as well as for a number of named clubs in the Spanish and Italian football leagues. In addition, there were click-on links for websites or web pages offering tickets to various other sporting events and concerts. Contact phone numbers were listed in France, Italy, Germany, Spain, and the United Kingdom of Great Britain and Northern Ireland.
In addition to ticket sales for various events, the Respondent appears to have been running a hotel reservations service through the Respondent’s Website. There was also advertising for major courier and credit card companies.
The Complainant has also produced screen shots from the Respondent’s Website taken on May 20, 2008. These also featured the Complainant’s marks and the introductory text referred to above, but the “view tickets” links were to events which seemingly had nothing to do with the Complainant or its football operations (e.g. concerts and formula 1 motor racing events).
The Complainant says that the Respondent is not an authorized distributor and retailer of Arsenal tickets, and had no authority to use the Complainant’s ARSENAL mark in the registration of the Domain Name. Moreover, there has been no reference on the Respondent’s Website to the Complainant’s Website, nor any disclaimer stating that the Respondent’s Website is not affiliated with or endorsed by the Complainant.
The Complainant produced screen shots, taken on May 29, 2008, from the websites at the domain names:
As at June 3, 2008, the registered owner of all of these domain names was Domains by Proxy, Inc.
The websites to which these domain names resolved, appeared to be identical in style to the Respondent’s Website, except that each featured the particular football club whose name formed part of the particular domain name. Arsenal only featured as a click-through link on a side-bar on the websites at these domain names.
The Complainant says that the websites at each of these domain names contained similar colours, fonts, images, and logos to those employed by the owners of the trade marks under which the corresponding football clubs carry on business. None contained any disclaimer or reference to the legitimate website operated by the corresponding football club. All contained the word “official” throughout.
The Complainant says that it has run a trade mark search on “Official Tickets Limited” at the United States Patents & Trade Marks Office, and that the Respondent possesses no trade marks, under its business name, registered with that office. The Complainant also says that it has searched for registered United States companies in the South Carolina region which contain the word “Tickets” in their title. The search yielded no results. A search run by the Complainant on the Dun & Bradstreet Inc. website at “www.smallbusiness.bnb.com” did not yield any hits either.
The Complainant’s representative sent emails to the Respondent at the email address email@example.com, on March 31 and April 24, 2008. The emails both referred to the Complainant’s rights in the mark ARSENAL, and the Respondent’s lack of authority to register and use the Domain Name. The emails requested the immediate transfer of the Domain Name to the Complainant.
The Respondent did not reply to those emails.
5. Parties’ Contentions
The Complainant contends:
1. The Complainant has rights in the ARSENAL word and device marks, and the Domain Name is confusingly similar to those marks. The addition of the generic words “official” and “tickets” is insufficient to avoid the confusing similarity, as the Domain Name incorporates the Complainant’s mark in its entirety.
2. The Respondent has no rights or legitimate interest in respect of the Domain Name:
(a) the Respondent is not known as “Arsenal”.
(b) the Respondent possesses no trade marks under that name registered in the United States Patents & Trade mark Office;
(c) the Complainant has not authorised the Respondent to use its ARSENAL mark, whether by incorporating that mark into a domain name or otherwise;
(d) the Respondent is using the Complainant’s mark as an attention-getting device to attract more traffic to the Respondent’s website and generate additional revenue;
(e) a use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services (citing Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847). In this case, the Respondent is using the Complainant’s ARSENAL mark to sell not only tickets to Arsenal football fixtures, but also tickets to other sporting events and concerts.
(f) the Respondent has used the Complainant’s logo and shield device mark throughout the Respondent’s Website. Also, there are frequent references to the term “official” on the Respondent’s Website. Those usages demonstrate that the Respondent is purposefully misleading Internet users, and tarnishing the Complainant’s reputation. Therefore, the Respondent is not making a fair use of the Domain Name.
(g) The Respondent has no conceivable legitimate reason to use the Complainant’s trade marks in the way that it has.
3. The Domain Name was registered and is being used in bad faith:
(a) the Respondent is selling football tickets for the Complainant’s matches in competition with the Complainant, in circumstances where the Respondent was fully aware of the Complainant and registered the Domain Name with the intention of disrupting the Complainant’s business, and promoting its own business. Those activities constitute bad faith registration and use under paragraph 4(b)(iii) of the Policy.
(b) The Respondent’s use of the Complainant’s registered mark (not only in the Domain Name but also throughout the Respondent’s Website), its deliberate use of colors, fonts, images and logos which are similar to those used by the Complainant, and its consistent use of the term “official”, show that the Respondent has been intentionally attempting to attract Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website (Policy paragraph 4(b)(iv)).
(c) The Respondent has failed to post any disclaimer on the Respondent’s Website, which would serve to distinguish it from the Complainant and its activities. The Respondent is effectively misleading Internet users into believing that the Respondent’s Website is an “official site” sponsored, endorsed, or supported by the Complainant.
(d) The Respondent failed to respond to the Complainant’s cease and desist emails.
(e) The Respondent has used a WhoIs privacy service to evade detection and ensure that it could continue to generate revenue without being identified.
(f) The Respondent is not a registered company in either the United States of America or the United Kingdom of Great Britain and Northern Ireland. The Respondent has used false and inaccurate registration particulars, contrary to paragraph 2(a) of the Policy.
(g) The Respondent registered the Domain Name to prevent the Complainant from reflecting its ARSENAL trade mark in a corresponding domain name. The Respondent has engaged in a pattern of such conduct, registering a series of domain names that wholly incorporate registered trade marks of which the Respondent is not the proprietor or licensee, and using the corresponding websites to sell tickets to sporting events and concerts which cannot be verified as authentic or genuine. The domain names featuring the names of the other football clubs are all linked to each other, and are part of a scheme to promote the Respondent’s online ticket store. All of them have active websites that contain similar colours, fonts, images, and logos to those used by the trade mark owners whose marks have been used by the Respondent in these domain names. None of these websites contain disclaimers or references to the legitimate websites operated by the relevant football clubs or other trade mark owners. All contain the use of the word “official” throughout. Together, these registrations are sufficient to demonstrate that the Respondent has been involved in a pattern of bad faith conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant Must Prove
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the mark ARSENAL. The question is whether the Domain Name is confusingly similar to that mark.
The Panel is satisfied that it is. First, the Domain Name incorporates the Complainant’s ARSENAL mark in its entirety. Numerous WIPO UDRP panels have regarded the fact that a disputed domain name wholly incorporates the complainant’s mark, as sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pages 4 to 5 of the decision in that case.
While there may be some cases where a disputed domain name which incorporates in full a complainant’s trade mark will not be confusingly similar to that trade mark (because sufficient additional letters or numbers have been added to the mark to remove any confusion), that is not the position here. The distinctive part of the Domain Name is the word “Arsenal”. The words “official”, and “tickets” are generic, and do not reduce the confusing similarity between the Domain Name and the Complainant’s mark. If anything, the use of those words increases the likelihood of confusion, because both words are suggestive of one of the Complainant’s main business activities (selling “official tickets” to Arsenal matches). The word “official” in particular, strongly suggests that the Domain Name is owned by or connected with a genuine entity known as “Arsenal”. On the evidence which has been produced, it is clear that a very large number of Internet users would connect the word “Arsenal” where it occurs in the Domain Name, with the Complainant.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has clearly made out a prima facie case of “no rights or legitimate interests”. The Domain Name is confusingly similar to the Complainant’s mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing to suggest that the Respondent might be commonly known by the Domain Name (a circumstance which might have formed the basis for a right or legitimate interest defense under paragraph 4(c)(ii) of the Policy), and nor is there any evidence that the Respondent has been making a non-commercial or fair use of the Domain Name, without intent for commercial gain – the Domain Name has quite clearly been used for commercial purposes. Paragraph 4(c)(iii) of the Policy therefore could not apply.
Nor is there anything to suggest that the Respondent might have been able to claim a right or legitimate interest under paragraph 4(c)(i) of the Policy. For the reasons which are set out in the next section of this decision, the Panel finds that the Respondent has registered and used the Domain Name in bad faith. Bad faith registration and use of a disputed domain name can never form the basis for a right or legitimate interest claim. The same factors which point to the conclusion of bad faith registration and use, necessarily preclude a finding that the Respondent’s use of the Domain Name has been in connection with a bona fide offering of goods or services.
As the Complainant has made out a prima facie case which has not been answered by the Respondent, the Complainant must succeed on this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a disputed domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complainant has also sufficiently proved this part of the Complaint. The Panel has come to that view for the following reasons.
1. The Domain Name is confusingly similar to the Complainant’s ARSENAL mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. The Respondent has no rights or legitimate interests in respect of the Domain Name.
2. The Complainant and its ARSENAL mark are well known around the world. The incorporation of the word “Arsenal” in the Domain Name, and the content of the Respondent’s Website, together leave no room for doubt that the Respondent was well aware of the Complainant and its marks when the Domain Name was registered in October 2007.
3. The Respondent is clearly not some innocent reseller of tickets to Arsenal Football Club fixtures. Through the Respondent’s website it offers tickets to matches organized by other clubs, tickets to various concerts or other events, and a hotel reservation service, none of which has anything to do with the Arsenal Football Club. The consensus view of WIPO UDRP panels deciding cases under the Policy, is that the use of a third party trade mark owner’s mark in a domain name by an authorized reseller of that third party’s products, will only be regarded as a use in connection with a bona fide offering of the third party’s products, if certain conditions are satisfied. One of those conditions is that the respondent reseller must use the relevant website to sell only the trade marked products; otherwise, the reseller could be using the trade mark to bait Internet users and then switch them to other goods (see Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903). Another “bona fide use” requirement for such a reseller, is that the website must accurately disclose the reseller’s relationship with the trade mark owner. In this case, the Respondent’s Website offers (directly or indirectly) tickets to events run by numerous parties who have no connection with the Complainant – even if it is offering genuine tickets to Arsenal fixtures, it does not meet the “only the trade mark owners products” aspect of the “authorized reseller” test articulated by the panel in Oki Data Americas Inc. v ASD Inc. Nor does the Respondent meet the other “limb” of the Oki Data Americas Inc. “bona fide reseller” test referred to above: the Respondent’s Website does not contain anything to advise visitors to the Respondent’s Website that the site is not owned by or connected with the Complainant.
4. Not only does the Respondent duplicate the Complainant’s ARSENAL word mark on the Respondent’s Website, it also reproduces the Complainant’s Arsenal shield device mark. The unauthorized use of the Complainant’s marks, and the frequent use of the word “official”, all point clearly to an intention to mislead Internet users into believing that the Respondent’s Website is somehow associated with or authorized by the Complainant.
5. The Panel is also satisfied on the evidence produced, that the Respondent is responsible for the registration of the domain names containing the names of other well known football clubs which were referred to by the Complainant. While each of these domain names appears to have been registered by Domains by Proxy Inc. (also the registered holder of the Domain Name until shortly before the Complaint was filed), all of them appear to be similar in style, and each lists the same contact telephone numbers in France, Italy, Germany, Spain, and the United Kingdom of Great Britain and Northern Ireland, as are listed on the Respondent’s Website. Each of these other domain names incorporates the word “official”, and each appears to be designed to mislead Internet browsers into believing that the linked websites are operated or authorized by the owners of the relevant football clubs. The Panel accepts the Complainant’s submission that these other domain names have been registered and used by the Respondent as part of a scheme designed to promote the Respondent’s online ticket store, by attracting browsers looking for ticket sites operated or authorized by the relevant football clubs.
6. In the foregoing circumstances, the Panel is satisfied that the Respondent registered and has been using the Domain Name, for the bad faith purpose described in paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s ARSENAL mark as to the source, sponsorship affiliation or endorsement of the Respondent’s Website (and of the tickets being offered for sale on the Respondent’s Website).
7 The use of the WhoIs privacy shield in this case, the apparently late change of the Domain Name registration into the name of the Respondent, and the Complainant’s difficulty in locating any registration information for a company called “Official Tickets Limited”, are all, in the absence of any Response, factors adding to the Panel’s overall impression that the Domain Name was registered and has been used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <official-arsenal-tickets.com> be transferred to the Complainant.
Dated: July 22, 2008