Complainant is Manchester City Football Club Limited, Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom.
Respondent is Vincent Peeris, Renown SC, Colombo, Sri Lanka.
The disputed domain name <manchestercityfc.com> is registered with eNom and the disputed domain name <mcfc.com> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2009. On May 26, 2009, the Center transmitted by email to eNom and Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On May 26, 2009, and May 27, 2009, eNom and Dotster, Inc. respectively transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center concerning the registrant information, Complainant filed an amendment to the Complaint on May 29, 2009. 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. Respondent sent several emails to the Center on June 25, 2009.
The Center appointed Mark Partridge as the sole panelist in this matter on July 9, 2009. 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.
In July the Panel received correspondence from the parties regarding additional submissions. On July 22, 2009, the Panel issued an order permitting additional submissions by the parties. The Panel granted an extension for those submissions on August 5, 2009. Respondent filed additional submissions on August 13, 2009. Complainant filed a reply on August 20, 2009.
On August 26, 2009, the Panel issued an order for Respondent to submit additional evidence in support of certain factual claims. Respondent filed additional documentation in support of its claims on September 10, 2009.
Some of the submissions of Respondent have been untimely or unsolicited. Complainant has requested that no consideration be given to the untimely or unsolicited submissions. The Panel has decided to exercise its discretion under the Rules to obtain a more complete record.
Complainant has used the name MANCHESTER CITY FOOTBALL CLUB to identify its football club since 1894. Complainant owns twelve United Kingdom registrations, the most relevant registrations being the device and word mark MANCHESTER CITY F.C., filed on January 18, 1972, and the word mark MCFC, filed on May 11, 1996. Complainant also owns the domain names <mcfc.co.uk> and <manchestercity.sohu.com>.
The disputed domain name <manchestercityfc.com> was registered on April 22, 2002, and transferred to Respondent on July 29, 2007. The disputed domain name consists merely of a parking page with pay per click advertising. Listed links include “Manchester City FC,” “Manchester City Team,” “Manchester City Football Club,” “Manchester Arena,” and other Manchester or sports related phrases.
The disputed domain name <mcfc.com> was registered on November 13, 2000, and transferred to Respondent in September or October of 2007. The disputed domain name hosts a website utilizing the Sedo parking service. Pay per click links include “Man City | Soccer Fans,” “Soccer 2010,” and “Manchester City Tickets,” among other Manchester or sports related phrases. The site also contains a link labeled “This domain may be for sale by its owner!” which directs visitors to a page declaring that the domain is for sale and soliciting a bid.
Respondent approached Complainant via email with an offer to sell the disputed domain names on April 23, 2008. Respondent initially offered to sell both domain names for the cost of £175,000. Respondent followed up with claims that it was fielding offers of £3 million from third parties and ultimately offered to sell the domain names to Complainant for £2 million.
Respondent appears to have made a business model out of buying domain names and selling them to interested parties. Complainant points out several past UDRP disputes brought by third parties against Respondent. See Online Orders Network LLC v. Renown SC, NAF Claim No. FA98242 (finding for respondent on the grounds that complainant did not have adequate interest in the disputed domain name); Industrias Romi S.A. v. Renown SC, WIPO Case No. D2001-1217 (finding for complainant and transferring the domain name <romi.com>); Homer TLC Inc. v. Renown, NAF Claim No. FA112457 (finding for complainant and transferring the domain name <homedepot.biz>); National Association of Realtors v. Renown, NAF Claim No. FA137212 (finding for complainant and transferring the domain name <realtor.biz>); DHL Operations B.V. v. Renown SC, Vincent Peeris, WIPO Case No. D2008-0953 (finding for complainant and transferring the domain name <dhl.info>).
Complainant contends that the disputed domain names are confusingly similar to marks in which it owns rights; that Respondent has no legitimate right or interest in the disputed domain names; and that the disputed domain names were registered and are used in bad faith.
Respondent, allegedly waiting for settlement, did not submit any formal response to the Complaint before the due date. In subsequent submissions by Respondent, which have been accepted for consideration, Respondent asserts that it has a legitimate interest in the disputed domain name <mcfc.com> because it has used the name for a local football club in Sri Lanka known as the Mutwal Community Football Club. Because “mcfc” are the initials of that club, Respondent asserts that its registration of <mcfc.com> and offer to sell the name to Complainant was not bad faith registration and use of the name.
Respondent acknowledges that it does not have a legitimate right or interest in the domain name <manchestercityfc.com> and agrees to transfer that name to Complainant.
Under the Policy, Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Panel finds and it is not disputed that the disputed domain names are identical to Complainant's marks. The disputed domain names fully incorporate Complainant's MANCHESTER CITY F.C. and MCFC marks with the mere addition of the “.com” gTLD. Panelists have continually held that the gTLD is not a distinguishing feature and is insufficient to dispute identity or confusing similarity. L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; Société des Hôtels Méridien v. Richard English, WIPO Case No. D2005-0646.
Complainant has made a prima facie showing that Respondent does not have any right or legitimate interest in the disputed domain names. Respondent's websites do not offer any goods or services actually provided by Respondent. Instead, both websites provide links to third party services related either to sports, to the Manchester area, or a combination of the two interests. Such use is not bona fide as contemplated by paragraph 4(c)(i) of the Policy. Respondent does not contest this conclusion with respect to the domain name <manchestercityfc.com>.
Respondent does content, however, that it has a legitimate interest in <mcfc.com>. The record on this point is complicated and analysis benefits from a careful review of the evidence and corresponding claims of Respondent.
Respondent has presented evidence showing that it created the Mutwal Community Football Club, or MCFC on January 22, 2005 (Annex 8). The Mutwal community was badly damaged by the tsunami of December 26, 2004. MCFC has been a member of the Football Federation of Sri Lanka for the past four years. Respondent says the club was created as part of its Community Project program to help youth and children recover from the shock of the disaster. The evidence showing use of MCFC for this purpose includes photographs of events, translations of reservations for the use of sports fields, and information about the Anura De Silva Memorial Trophy tournament in 2006. For the purpose of this decision, we accept as true that the club existed and has used the initials MCFC.
The Policy states in relevant part that legitimate interests or rights in a name may be shown by (a) bona fide use of the domain name prior to objection, or (b) by the fact that Respondent was known by that name before registration. Here, the record shows that the domain name <mcfc.com> was not in use prior to the advent of this dispute. Respondent's claim of legitimate interest or rights in the domain name instead arise from its use of the name for the MCFC sports team in Sri Lanka before it purchased the domain name. Accepting that validity of that use, which we do for the purpose of this decision, the question becomes: is that use sufficient to defeat Complainant's claim?
Respondent vigorously contends that the actual existence of the MCFC sports team in itself establishes that it has a legitimate interest in the name. Actual use of a name, however, is not always conclusive.
For example, in Sporty's Farm LLC v. Sportsman's Market, Inc., 202 F.2d 489 (2d Cir. 2000), the Second Circuit considered a domain name dispute involving <sportys.com>. Sportsman's, a mail order catalog business selling products for pilots and aviation enthusiasts, used the mark SPORTY'S in connection with its business. Omega, the owner of a competing mail order business, registered the disputed domain name. Nine months later the owner created a new business under the name Sporty's Farm to grow and sell Christmas trees, using the disputed domain name for a web site to advertise the new business. The Court of Appeal concluded that such use was cybersquatting, stating:
The most important grounds for our holding that Sporty's Farm acted with a bad faith intent, however, are the unique circumstances of this case [ . . .] Omega created another company in an unrelated business that received the name Sporty's Farm so that it could (1) use the <sportys.com> domain name in some commercial fashion, (2) keep the name away from Sportsman's, and (3) protect itself in the event that Sportsman's brought an infringement claim alleging that a “likelihood of confusion” had been created by Omega's version of cybersquatting.
Among other things, that case shows that mere use of a domain name in connection with an actual business or organization, in itself, is not sufficient to avoid a finding of cybersquatting.
Similarly, in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, a three member panel considered the Registrant's claim that it had not violated the Policy because it was making actual commercial use of the domain name <madonna.com> for an unrelated business. In a unanimous decision, the panel rejected that contention, stating:
“The record supports Respondent's claim that it used the domain name in connection with commercial services prior to notice of the dispute. However . . . [we find] that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent's web site by trading on the fame of Complainant's mark. We . . . conclude that use which intentionally trades on the fame of another can not constitute a ‘bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
Again, as with the Sportsman case, the Madonna case demonstrates that actual use of a name, in itself, may not be sufficient to avoid a violation of the Policy. The unique circumstances of the dispute need to be examined more deeply to avoid allowing intentional infringement or other deliberate bad faith undermine the intent of the Policy.
In this case, the parties have provided extensive submissions, and Respondent has responded to the Panel's request for further information. Based on that record we find a critical sequence of events.
1. Complainant has long been established under the mark MCFC and was well-known to Respondent prior to the events of this dispute.
2. The disputed domain name <mcfc.com> was first registered on November 13, 2000, and apparently acquired by Web Development Group on July 26, 2004 (Complaint, Annex 17). Respondent states: “The domain mcfc.com was owned with our partner Web Development Group for several years. They had no objection for us to use the domain for our project but as Mr. Thaksin Shinawatra [Former Thai Prime Minister] made an investment in Manchester City there was lot of interest in the domain.” (August 10, 2009 Response, p. 5, emphasis added). There is no basis for claiming any legitimate right or interest in the name MCFC by Respondent or its affiliates at the time the name was acquired by Respondent's partner in 2004.
3. On January 22, 2005, after Respondent's partner had acquired the disputed domain name, Respondent's president proposed the creation of the Mutwal Community Sports Club. (Respondent's Annex 8). MCFC was subsequently used as an acronym for the club.
4. The domain name <manchsetercityfc.com> was registered on April 22, 2002, and acquired by Respondent on July 29, 2007. Respondent states: “We acknowledge that <manchestercityfc.com> was acquired for US$2200 as a goodwill gesture and help in order to give it for free when doing a deal with the Complainant. We aren't contesting <manchestercityfc.com> in our Response because as it was indicated above we had acquired it solely to give for free in a possible deal for mcfc.com with the Complainant.” It is significant to note that Respondent here admits that its intent at this time was to do a possible deal with Complainant, although it did not yet own the <mcfc.com> domain name (its partner did). This is consistent with the statement quoted above that the domain name was “owned with” its partner.
5. The domain name <mcfc.com> was transferred to Respondent Vincent Peeris on September 19, 2007, and to Respondent Renown SC on October 5, 2007. Respondent explains: “after much negotiation we were forced to acquire the domain for US$20,000 as we had taken several steps to setup the website [ . . .] When it comes to Sri Lanka it's a substantial investment for our Club. We made that investment as we were hopeful we could raise funds and generate revenue from the handicraft sales through the website [. . .]”
6. The use <mcfc.com> for a website to sell handicrafts to raise money for the community sports team never took place. Instead, Respondent pursued the “possible deal” with Complainant. On April 23, 2008, Vincent Peeris contacted Complainant with an offer to sell <mcfc.com> and <manchestercityfc.com> for £175,000. On March 3, 2009, Mr. Peeris writes again, saying he is expecting offers of £3,000,000 for <mcfc.com>. He writes again on May 15, 2009, stating that he has received another offer of £1,500,000, but would like an offer from Complainant “around that region” of £2,000,000.
There is much that is suspicious in this sequence of events. Why would a local community sports club pay $20,000 for a domain name to use for a website to sell handicrafts to make money for the club? Why would the club buy the domain name <manchestercityfc.com> with the intent of giving it to Complainant in a possible deal for a domain name it did not yet own? Are these the actions of a local community club acting in good faith?
Or are these the actions of a cybersquatter? In weighing this issue, the Panel is unable to ignore the fact that Mr. Peeris and Renown SC have previously registered a variety of domain names that incorporate the well-known marks of others and have been found to be in violation of the Policy in repeated occasions, despite clever excuses. See for example Industrias Romi S.A. v. Renown SC, WIPO Case No. D2001-1217 (finding for complainant and transferring the domain name <romi.com>); and Homer TLC Inc. v. Renown, NAF Claim No. FA112457 (finding for complainant and transferring the domain name <homedepot.biz>). In the <romi.com> case, Respondent provided added insight in how it uses its sport club operations to speculate in domain names. According to the decision, Respondent claimed as follows:
“Respondent is a prominent soccer club. In Sri Lanka, soccer clubs are community-based organizations that often have roles in their community far beyond merely playing soccer matches. Renown has expanded into Internet projects and its goal in this enterprise is to establish Cyber Cafes around Sri Lanka that provide free email services in order to increase Internet awareness in it's local community. Renown's role in this is as a not-for-profit community organization.
Respondent registered the disputed domain name only a few months prior to the commencement of this proceeding. It was purchased with the sole intention of providing free email services to all those with the first name or surname, ROMI. This kind of venture, often referred to as ‘vanity email', has been held to constitute a ‘legitimate interest' pursuant to the Policy: Bosco Products, Inc. v. Bosco E-Mail Service, NAF Case No. FA0005000094828.
ROMI is in fact one of the most popular names in South East Asia, with millions of Indians and Sri Lankans all sharing the name ROMI. Do a search on <google.com> and you will see thousands of references to south-east Asians with the name Romi.
Furthermore, ROMI is the first name of Vincent Peeris' mother.
The only reason that Respondent did not pursue the email service venture was because Respondent's members voted to make the establishment of the Internet Cafes themselves a priority over vanity email services, as a result of limited financial resources.”
The panel in that case found no substantiation for Respondent's claim of legitimacy (except for the submission of a birth certificate using the name “Romi”) and ordered transfer. A clever narrative was not there, and should not be here, a substitute for credible good faith adoption and use of a domain name.
As with the Sporty's Farm case, supra, it seems here that Respondent's conduct, including the creation of the MCFC football club and the purchase of the disputed domain names, was done for the purpose of cybersquatting, and not as a bona fide use of the domain names.
Based on the submissions of Respondent, it appears that the MCFC sports club was created after Respondent's partner acquired the <mcfc.com> domain name. This sequence is too convenient to be dismissed as mere coincidence, and suggests that Respondent chose the MCFC name for the purpose of avoiding relief under the Policy so it could profit from bad faith sale of the domain name to Complainant.
Even assuming that the selection of the MCFC name for the sports club was made in good faith in the first instance, that does not automatically lead to a conclusion that Respondent has a right or legitimate interest in the domain names. Respondent admits that it acquired <manchestercityfc.com> for the purpose of doing a possible deal on <mcfc.com> with Complainant. Thus, Respondent's admissions and actions show that the domain names were not acquired for legitimate use for a website relating to the community football club, but for the purpose of selling them to Complainant at substantial profit. Moreover, in attempting to make that sale, Respondent apparently used deceptive techniques in claiming that it had substantial offers from third parties. Respondent has provided no evidence of any such offers, despite the submissions of numerous documents.
Respondent's actions are consistent with those of a cybersquatter, using or creating a sports club as cover, and are inconsistent with the actions of a bona fide sports club. This is not an instance where a party who owns a domain name to which it is entitled later offers to sell the domain name for profit. Instead, this is an instance where a party buys a domain name for the purpose of selling it to a rightful user of the name for profit and engages in deceptive negotiations, having never used the domain name in connection with a legitimate business. The mere fact that it created and ran a sports club under the same name is not in itself enough to avoid the Policy, just as the creation of a commercial business in the Sporty's Farm case, supra, was not sufficient to avoid liability for cybersquatting. We conclude that a party lacks rights or legitimate interest in a domain name, even if it operates a sprots club under the same name, when it acquires the domain name with the declared intent of selling it to a rightful user of the name, and not for the purpose of using it on its own account, especially when the facts suggest that the naming of the club seems to have been an afterthought, at best.
Accordingly, the Panel finds that Respondent lacks any right or legitimate interest in the disputed domain names.
In reaching our decision, we do not diminish the contributions of the community members and organizations who were involved in the actual operation of the sports club. Based on the declarations and documents submitted, it appears that the club itself performed useful and beneficial functions in the local community. Those responsible for such actions have a right to be proud. Nothing here is intended to take away from that commendable service or hinder the true operations of the club in anyway. Here, we only deal with Respondent's acquisition and use of the disputed domain names, which were never used for the operations of the club, and were only acquired and used in a sophisticated, bad faith scheme in an attempt to profit from sale to Complainant.
The reasons stated above also lead to a finding of bad faith registration and use of the domain names.
Respondent admits that it acquired the <manchestercityfc.com> domain name “ solely to give for free in a possible deal for mcfc.com with the Complainant.” It follows that the <mcfc.com> name was acquired for the purpose of selling it to Complainant for profit. Over the course of several months, Respondent tried to induce Complainant to pay up to £3,000,000 for the domain names, suggesting that third parties were bidding on the names.
It also appears from the record in this case, and from decisions in other cases involving Respondent, that Respondent is a sophisticated speculator in domain names who engages in a pattern of conduct involving cybersquatting on the names of others.
Accordingly, we find that the disputed domain names were registered and used in bad faith in violation of the Policy.
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 names <manchestercityfc.com> and <mcfc.com> be transferred to Complainant.
Dated: October 2, 2009