The Complainants are Around The Rings Inc. and World Football Insider Inc. of Atlanta, Georgia, United States of America (“US”) and Rotterdam, The Netherlands, represented by Davenport Lyons, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dunsar Media Company Limited, Duncan Mackay, Sarah Bowron / Contactprivacy.com of Birmingham, West Midlands, United Kingdom, Great Holm, Milton Keynes, United Kingdom, and Toronto, Ontario, Canada, represented by McEvedys Solicitors and Attorneys, United Kingdom (“UK”).
The disputed domain names <insideworldfootball.biz>, <insideworldfootball.com>, <insideworldfootball.info>, <insideworldfootball.mobi>, <insideworldfootball.net> and <insideworldfootball.org> are registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2010. On February 3, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On February 3, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the first-named Respondent (Dunsar Media Company Limited) is listed as the registrant and providing the contact details. The Complainants filed an amendment to the Complaint on February 5, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. On February 19, 2010, the Center received an email from the Respondent, asking for an extension in the due date to file a Response. The Center solicited comments from the parties, and the due date for Response was extended to March 11, 2010. The Response was filed with the Center on March 11, 2010.
The Center appointed John Swinson as the sole Panelist in this matter on March 22, 2010. 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.
The registrant of the disputed domain names has used a “contact privacy” facility to keep its identity private, and as such, the WhoIs records submitted by the Complainant do not indicate the identity of the registrant.
In the Response, the Respondent appears to represent that “Ms. Sarah Bowron” of “Dunsar Media Company Limited” is the registrant of all the disputed domain names, and therefore the proper Respondent to this Complaint. The Respondent did not submit any evidence to prove true ownership details of the disputed domain names.
Contrary to the Respondent's submission, the Panel has received confirmation from Tucows, Inc, the registrar for the disputed domain names, that the registrant is Dunsar Media Company Limited. Accordingly, the Panel is unable to accept the Respondent's submission and finds that Dunsar Media Company Limited is the true Respondent. References to “Respondent” below are references to Dunsar Media Company Limited.
The Complainants and the Respondent produce competing electronic sporting news publications.
In June 2009, the Complainants began publishing “World Football Insider”, at the website at “www.worldfootballinsider.com”. The publication contains news items about world football, also known as soccer. This is a sister publication to “Around the Rings”, which the Complainants have produced since 1992, and which has appeared online at “www.aroundtherings.com” from December 1996.
The Second Complainant applied for US trade (service) mark number 77722719, for WORLD FOOTBALL INSIDER, on April 27, 2009. The application disclaims any exclusive right to use the phrase “world football”, except as set out in the application. The mark proceeded to registration during the pendency of these proceedings on March 23, 2010.
The Respondent registered the disputed domain names on August 11, 2009 and since November 2009, has published news items relating to football under the name “Inside World Football” at some or all of the disputed domain names. The Respondent initially (from December 2008) planned to call “Inside World Football” “Inside the World Cup” but changed the name in July 2009 due to a dispute with its web designer.
The Respondent owns registered device trade mark number 2532124 for INSIDE WORLD FOOTBALL in the United Kingdom. The priority date of this trade mark is November 19, 2009. The Respondent owns registered word trade mark number 2532403 for INSIDE THE GAMES, with priority dated November 23, 2009, and has applied for other trade marks which include or consist of INSIDE.
The Respondent operates other sporting publication businesses under the overarching “Inside” brand, including Inside the Games (since December 2005) and Inside World Parasport (since December 2009). The Respondent owns domain names for other “inside” businesses, including Inside Parasport, Inside the Paralympics and Inside World Soccer, but no evidence was brought about whether those domains are active or the content of any websites.
The Complainants argue that:
The disputed domain names are identical or confusingly similar to WORLD FOOTBALL INSIDER, in which the Complainants have rights.
The Complainants have made a significant investment in “World Football Insider” and established trading goodwill in the name, particularly in the UK and US. The Complainants obtained independent third party estimates of the web traffic for the “World Football Insider” for the month of October 2009, which indicated approximately 18,500 unique visitors and a total of 435,000 hits.
The Respondent has simply reversed the two components of the Complainants' name and omitted an “r”, and therefore the disputed domain names are identical or confusingly similar to “World Football Insider”.
Members of the public have been confused about the association between the Complainants' “World Football Insider” publication and the Respondent's publications.
The Respondent has no rights or legitimate interest in the disputed domain names.
The Respondent was aware of the Complainants' domain name and publication prior to launching the disputed domain names and related publication. The Respondent registered the disputed domain names shortly after the Complainants launched its World Football Insider publication.
The disputed domain names were registered in order to “free-ride” off the Complainants' name and successful publications World Football Insider and Around the Rings, and to divert business from the Complainants.
The Respondent registered and is using the disputed domain names in bad faith.
The Respondent registered the disputed domain names primarily to disrupt the Complainants' business and create a likelihood of confusion.
The Respondent has copied a photograph belonging to the Complainant from the Complainants' website onto the websites attached to the disputed domain names.
The Respondent has copied 2 stories from the Complainants' website, “backdated” to the date of publication on the Complainants' website and published them as the Respondent's own.
The Respondent contends that:
The disputed domain names are not identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainants do not have any registered trade marks identical with or similar to the disputed domain names, as the Complainant's US trade mark application was not yet registered at the time the Response was filed.
The disputed domain names and “World Football Insider” consist of generic terms. The Complainant must show acquired distinctiveness or secondary meaning in order to establish a right to exclusivity in the term. The Respondent points to four other domain names using similar terms, employed by other entities providing online services, namely “www.insidefootball.com”, “www.insidefutbol.com”, “www.insidefootballonline.com”, and “www.insideworldsoccer.com”.
The Complainant has not established unregistered rights in “World Football Insider” as it has only been operating since June 22, 2009, and has not brought any evidence of website traffic to the Second Complainant's website. The traffic evidence brought by the Complainants may relate to the First Complainant's website.
The reversal of the components “world football” and “inside” sufficiently differentiates the disputed domain names visually, phonetically and conceptually, from the Complainant's name “World Football Insider”.
The Respondent has rights or legitimate interests in respect of the disputed domain names.
The Respondent made demonstrable preparations to use and used the disputed domain names in connection with a bona fide service offering, before receiving notice of the dispute.
The Respondent also operates Inside the Games and Inside World Parasport under its overarching “inside” brand.
The Respondent chose the name “Inside World Football” as a consequence of a dispute with its web designer, after which the name “Inside the World Cup” became unavailable.
The Respondent owns a device mark which includes the words INSIDE WORLD FOOTBALL and logo, and a word mark for INSIDE THE GAMES. The Respondent has applied for other trade marks in the UK which consist of or begin with INSIDE.
The Respondent did not register and is not using the disputed domain names in bad faith.
The Respondent did not know of the Complainants' name “World Football Insider” until after it registered the disputed domain names, despite instructing its web design agency to conduct trade mark and domain name searches, and itself conducting Google searches for “Inside World Football”.
The Respondent selected the phrase “Inside World Football” for consistency with its other “Inside” brands.
The photograph which the Complainant referred to in its complaint is an official photograph commissioned and used by Russia as part of its bid to host the 2018/2022 FIFA World Cup and does not belong to the Complainants.
The Respondent has not copied stories from the Complainants' website. It relied on information from wire and syndication services and press releases in creating the relevant stories.
The Respondent asks the Panel to make a finding of reverse domain name hijacking by the Complainants, who it says are attempting to piggyback off its “Inside” brand.
To succeed, the Complainants must demonstrate that all of the elements set out in paragraph 4(a) of the Policy are satisfied, namely:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The Complainant bears the onus of establishing these elements.
Does the Complainant have rights to “World Football Insider”?
The Complainants must establish that they have rights in the name “World Football Insider”.
As set out above, the Complainants have filed a US trade (service) mark application, which matured into a registration only during the pendency of these proceedings (WORLD FOOTBALL INSIDER, registered on March 23, 2010 under US Registration no. 3765290). Therefore, the Complainants have established this element of the Policy and strictly speaking, the Panel need not make a finding as to whether the Complainant has unregistered trademark rights in the mark. However, as the Complaint and Response made arguments about whether the Complainants had unregistered rights, the Panel will consider the Complainant's claim to such unregistered rights.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in order to establish common law or unregistered trade mark rights, a complaint “must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning' includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
The Complainants have only been using the name “World Football Insider” since June 2009. This tells against common law trade mark rights.
However, the Panel accepts that the Complainants have made a significant investment in the “World Football Insider” website and have undertaken substantial marketing activities since then. These activities have been targeted to key players involved in world football, including FIFA, bid leaders, confederation chiefs and football executives.
Thus, the Panel accepts that the Complainants have a reputation in “World Football Insider”, at least amongst the football community. On that basis, the Panel would have been inclined to find that the Complainants had unregistered rights in “World Football Insider”, despite the short period of use of that name. However, as the Complainants' trade mark has now been registered, it is not necessary for the Panel to come to any decision as to unregistered rights.
Are the disputed domain names identical or confusingly similar to WORLD FOOTBALL INSIDER?
The disputed domain names and the Complainants' WORLD FOOTBALL INSIDER mark share two common elements, namely “inside” and “world football”. These are the major components of the Complainants' name, and indeed are the only components of the disputed domain names (other than the top level domains which the Panel may ignore for the purpose of determining whether there is identity or confusing similarity).
The order in which these two elements appear is reversed, as between the Complainants' name and the disputed domain names. This is sufficient, in the Panel's view, to dismiss the Complainants' argument that the names are substantially identical. It also, as the Respondent submits, reduces the similarity between the names, as does the omission of an “r” in the disputed domain names.
Likewise, the fact that the Complainants' name and the disputed domain names consist solely of generic terms serves to decrease the likelihood that people will be confused about whether or not there is an association of some kind between the disputed domain names and the Complainants. However, the combination of the word “inside” (or “insider”) with the phrase “world football” is less common, which serves to increase the likelihood of confusion.
The Panel does not accept the Respondent's contention that the reversal of the two elements materially changes the meaning of the phrase. In the Panel's view, the concept conveyed by “World Football Insider” and that conveyed by “Inside World Football” is relevantly identical.
The Panel accepts the Complainants' evidence that certain individuals have in fact been confused about whether the disputed domain names are associated with the Complainants.
The parties' cases on this element are finely balanced. However, taking all the circumstances into consideration, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark WORLD FOOTBALL INSIDER. The Complainants have met the first requirement of the Policy.
The Complainants attempted to demonstrate that the Respondent had engaged in a pattern of copying ideas for publications from the Complainants, involving the Around the Rings publication as well as World Football Insider.
The Complainants have made no substantive argument in relation to their assertion that the Respondents have no legitimate interest to the disputed domain names. The Complainants' case on this point essentially equates to an argument that the Respondent was aware of the World Football Insider publication and that therefore the Respondent had no legitimate interest in using a similar phrase to operate a website performing a similar function. However, the argument as to awareness primarily goes to the issue of bad faith, not to whether the Respondents have a legitimate interest in the disputed domain names. The Complainants have not produced sufficient evidence that the Respondent selected the disputed domain names to trade off the Complainants' reputation, and therefore have not proved that the Respondent's use is illegitimate.
The Panel is of the view that the Complainants have failed to demonstrate a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
In any event, the Respondent brought considerable evidence which demonstrates rights or legitimate interests in the disputed domain names.
The Respondent registered and used the disputed domain names prior to obtaining notice of the dispute. The Respondent began preparations to create its football website in December 2008, approximately 6 months prior to the Complainants' launch of its website for use in conjunction with their World Football Insider publication, and began preparations in relation to use of the disputed domain names in July 2009.
The Respondent has a registered logo trade (service) mark for INSIDE WORLD FOOTBALL, and has operated a business under the “Inside” brand since 2005. The Panel accepts the Respondent's evidence that the choice of “Inside World Football” as a publication name was an extension of this “Inside” brand.
The Respondent clearly has rights or legitimate interests in respect of the disputed domain names. The Complainants have failed to discharge their onus in respect of this element of the Policy.
The Complainants argue that the Respondent was aware of WORLD FOOTBALL INSIDER and registered the disputed domain names to piggyback off the World Football Insider brand and the Complainants' goodwill.
The Panel accepts the Respondent's evidence that it was not aware of WORLD FOOTBALL INSIDER prior to registering the disputed domain names. In any event, as set out above, the Panel accepts that the Respondent's choice of domain names was intended as an expansion of its “Inside” brand, with the addition of a description of the sport to which the Respondent intended its website to relate, and was not made in order to ride off the Complainants' reputation.
The Complainants brought evidence that, on two occasions, the Complainants published a news item on a particular topic on one day on its “World Football Insider” website, and the following day the Respondent published a news item on the same topic which was “backdated” to indicate the date of the relevant event. The Complainants argued that the Respondents had copied their website, and that this “backdating” demonstrated use of the domain names in bad faith.
Both news items relate to events in the football community. It is to be expected that the Complainants and Respondent will sometimes (and indeed often) publish articles on the same topic. The Complainants did not bring any evidence that the Respondent had seen the corresponding stories on the Complainants' website. The Panel accepts the Respondent's evidence that it obtained the information for its articles from press releases and syndication services which reported the stories. The Panel does not find that the Respondent copied the stories from the Complainants' website. The Panel does not accept that the Respondent's publication of news articles similar to those which appeared on the Complainants' website indicates bad faith use of the disputed domain names.
In both instances, the “backdated” date is the date on which the relevant event occurred. The Panel concludes that the backdating could have occurred due to the Respondent's delay in distributing the relevant article, in order to indicate the date of the event. The Panel does not consider that it can draw any finding of bad faith based on the “backdating”.
The Complainants have failed to discharge their onus under this element of the Policy.
The Respondent asked the Panel to make a finding of reverse domain name hijacking against the Complainants. The Respondent bears the onus of proving bad faith by the Complainants.
The Respondent argued that the Complainants chose the World Football Insider name in order to ride off the Respondent's “Inside” brand, and that the Complainants timed the Complaint to coincide with the Winter Olympics in order to disrupt the Respondent's business during a busy time.
The Panel does not consider that these circumstances demonstrate bad faith by the Complainants sufficient to support a finding of reverse domain name hijacking. The Respondent did not bring any evidence regarding the reasons why the Complainants chose the name World Football Insider, and the Complainants denied that they deliberately timed the complaint to coincide with the Winter Olympics.
In the absence of such evidence, the Panel does not find bad faith on the part of the Complainants.
For all the foregoing reasons, the Complaint is denied.
Dated: April 7, 2010