WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Football Association Premier League Limited v. Billettkontoret AS
Case No. D2012-0916
1. The Parties
The Complainant is The Football Association Premier League Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom.
The Respondent is Billettkontoret AS of Oslo, Norway.
2. The Domain Name and Registrar
The disputed domain name <premierleagueticketservice.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, LLC 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” 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 May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. The Response was filed with the Center on May 22, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on June 5, 2012. 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.
4. Factual Background
The Complainant is the governing body of a major English football association, known as the Premier League. The football matches of the Premier League are popular throughout the United Kingdom and receive worldwide television coverage.
The Premier League competition was founded by the Complainant in 1992 and the Complainant is the holder of the PREMIER LEAGUE trademark, registered in the United Kingdom in 1999. The Complainant operates an official website, advertising its matches and providing links to its authorized ticket sellers, at “www.premierleague.com”.
The disputed domain name was initially created on February 6, 2004. According to the concerned registrar, however, it was registered to the Respondent on April 11, 2010. The disputed domain name has been used in connection with a registrar’s parking page containing sponsored links, a blank page displaying a “site under construction” notice, and a website advertising tickets for both the Premier League’s football matches (via a click-through arrangement to the site at “www.footballticketshop.com”) and the matches of the Champions League (unaffiliated with the Complainant).
This latter version of the website, also the most recent, additionally contained a logo at the top of the page, consisting of the text “Premier League Ticket Services” and a tiger motif. A short section of text provided some history of the Premier League, and a notice on the site stated “Delivery Guarantee […] All sold tickets are guaranteed to be authentic”. No disclaimer or statement indicating the Respondent’s relationship to the Complainant was shown on the site.
The disputed domain name currently does not connect to any active content.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regard to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to its registered PREMIER LEAGUE mark because the disputed domain name contains the entirety of the mark in conjunction with the common dictionary terms “ticket” and “service”. The Complainant avers that these additional words do nothing to distinguish the disputed domain name from the mark.
The Complainant states that the Respondent has no rights or legitimate interests in the domain name as it has not been licensed to use the Complainant’s marks in any way or to sell tickets to the Complainant’s football matches. The Complainant references section 166 of the United Kingdom’s Criminal Justice and Public Order Act of 1994 (and its amendment in 2006), which governs, inter alia, ticket sales for the Premier League’s matches. The Act states that the unauthorized sale of such tickets by persons who have not received express written permission to do so from the organizer of the relevant event is considered a criminal offense.
The Complainant further notes that the site is being monetized by the Respondent by capitalizing on misdirected Internet traffic intended for the Complainant’s website, where links to legitimate, authorized resellers may be found. The Respondent’s use of the disputed domain name is not a bona fide offering, nor a noncommercial or fair use. The Complainant also alleges that the Respondent is not known by a name corresponding to the disputed domain name.
Concerning the third requirement of the Policy, the Complainant notes that the disputed domain name was registered long after its PREMIER LEAGUE mark and the extensive media coverage surrounding the Complainant’s events. The Complainant indicates that the Respondent must have been aware of the Complainant and the PREMIER LEAGUE mark at the time it registered the disputed domain name. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain pursuant to paragraph 4(b)(iv).
On May 22, 2012, the Center received an email from an individual listed as the administrative and technical contact for the disputed domain name, indicating that its message was to serve as the Response in this matter. It stated that the Respondent had not had sufficient time to engage its solicitors, but did not enter a formal request for an extension of the deadline pursuant to paragraph 5(d) of the Rules or provide evidence of any exceptional circumstances justifying the grant of additional time to file. Thus, the Respondent’s contentions are as follows.
The Respondent states that the disputed domain name “has been registered for almost 10 years”, although it does not provide any indication as to whether it was the original registrant, nor did it specify the date on which it acquired the disputed domain name. It indicates that it believes the Complainant’s actions in seeking transfer of the disputed domain name are unfair, as the Complainant is a large, “big league” company. It states that the disputed domain name has been used to provide information and “for advertising purposes with links to other sites”. It claims that it has not “done any misuse of any registered trademark”, and furthermore that “there is no way this domain can be connected to football tickets as the word football is not a part of the domain.”
The Respondent further indicates that it removed all content from the website and terminated all of its advertising contracts with other companies shortly after receiving notice of the dispute. The Respondent provided no further explanation as to its registration and/or use of the disputed domain name, and no evidence or arguments with regard to the Respondent’s rights or legitimate interests in the disputed domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to said trademark.
The Complainant has been in the business of organizing competitive football matches since 1992, and has provided evidence of its UK trademark registration for PREMIER LEAGUE, which was granted in 1999. Accordingly, the Panel finds that the Complainant has clearly demonstrated its rights for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin, WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. In this case, the descriptive term “ticket service” has been appended to the Complainant’s registered PREMIER LEAGUE mark, which may serve to heighten Internet user confusion due to its close connection with the Complainant’s goods and services. See Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PREMIER LEAGUE trademark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the disputed domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its PREMIER LEAGUE mark in any fashion, that the Respondent is not an authorized reseller of the Complainant’s tickets, and that there is no connection between the Respondent and the Complainant. Additionally, there is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. The website has been used to advertise apparently unauthorized ticket sales for the Complainant’s events through a click-through arrangement, from which the Respondent presumably derives revenue.1 Thus, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
The Respondent, in turn, has done little to rebut the Complainant’s allegations. It has indicated that it is a small company which has invested in its domain name, but has provided no evidence in support of its case. It notes that the disputed domain name has been registered for a number of years, but does not indicate when it became the holder/registrant. Even if the Respondent were the initial holder, however, the disputed domain name was registered twelve years after the Complainant began organizing its events, and five years after the Complainant’s PREMIER LEAGUE trademark was granted. The Respondent has provided no explanation for its actions in selecting a domain name containing a well-known trademark, and offering unauthorized services in connection with that mark (in addition to competing goods).
The Respondent has provided no arguments to rebut the Complainant’s contention that it lacks authorization to sell the Complainant’s tickets, has offered no explanation for its selection of the disputed domain name, has not explained its use of the “PREMIER LEAGUE TICKET SERVICES” logo on its website, and has not provided any explanation for the lack of a disclaimer disclosing the nature of its relationship to the Complainant. The Respondent has not argued that it is a bona fide reseller of the Complainant’s goods, and indeed the Panel notes that the Respondent would not be able to successfully claim such status under the Oki Data test, as the site both advertises competing goods and fails to disclose the relationship between the parties. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211.
In light of all the facts and circumstances in this case, the Panel finds it most likely that the Respondent has used the disputed domain name to trade on the Complainant’s goodwill associated with the PREMIER LEAGUE mark for its own financial gain and without authorization. Such use does not constitute a bona fide use of the disputed domain name. See Philadelphia Orchestra Association v. PCI Consulting Group, WIPO Case No. D2011-0549; Chelsea Football Club Limited v. Official Tickets Ltd, WIPO Case No. D2008-1574; and Glastonbury Festivals Limited v. Validweb.com Expired Domains, WIPO Case No. D2005-0188.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that its PREMIER LEAGUE mark is widely known in connection with the football matches which it is responsible for organizing. The Complainant has been doing business since 1992, and has held registered trademark rights in the PERMIER LEAGUE mark since at least 1999, which significantly predates the Respondent’s registration of the disputed domain name (regardless of whether the Respondent registered the disputed domain name in 2004 or at some subsequent time). The disputed domain name contains the Complainant’s PREMIER LEAGUE mark in its entirety, in conjunction with the non-distinctive dictionary phrase “ticket sales”. The Respondent has utilized the disputed domain name to provide advertisements for and links to, inter alia, unauthorized sales of tickets to the Complainant’s matches. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its PREMIER LEAGUE mark when it selected the disputed domain name.
By registering the PREMIER LEAGUE mark as domain name, in connection with the common terms “ticket” and “sales”, which are highly suggestive of the Complainant’s activities, and linking the disputed domain name to a site offering unauthorized sales of tickets to the Complainant’s events, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Philadelphia Orchestra Association and Chelsea Football Club Limited, supra.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <premierleagueticketservice.com> be transferred to the Complainant.
Dated: June 19, 2012
1 From the available information in the record, it is unclear whether the Respondent maintains a direct interest in or control of the “www.footballticketshop.com”, to which Internet users are directed upon clicking the Respondent’s advertisements. Even if the Respondent is not in control of this second website, however, the Respondent presumably derives revenue from a click-through or fee-sharing arrangement.