WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Football Association Premier League Limited v. David Wilson
Case No. D2012-0917
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 David Wilson of Pelham, New Hampshire, United States of America.
2. The Domain Name and Registrar
The disputed domain name <premierleagueticketsonline.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
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 the Registrar a request for registrar verification in connection with the Domain Name. On May 1, 2012, the Registrar 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.
The Center appointed Nicholas Smith 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 carries on business in the United Kingdom as the governing body of the association football (soccer) competition referred to as the Premier League. Its members are the constituent football clubs of the Premier League. The Premier League is a world-famous competition and both in and outside the United Kingdom there is a great deal of interest in the football matches played as part of the Premier League.
On April 6, 1999, the Complainant registered UK Trade Mark No. 2147888 consisting of the words “premier league” (the “PREMIER LEAGUE Mark”), for Classes 9, 14, 16, 25, 26, 28, 41 and 42. In particular the PREMIER LEAGUE Mark is registered and used in relation to football tickets (Class 16) and ticketing services in relation to sports events and matches (Class 41).
The Domain Name <premierleagueticketsonline.com> was registered on August 9, 2008. At the time the Complaint was filed, the Domain Name resolved to a site at “www.footballticketsonline.co.uk”. The Panel has since visited the website at the Domain Name and notes that as at June 6, 2012 the Domain Name resolved to a site at “www.soccerticketsonline.com”. A Panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, see Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070.
The websites at “www.footballticketsonline.co.uk” and “www.soccerticketsonline.com” (“Respondent’s Websites”) consist of material relating to various association football competitions and in particular the Premier League. The only difference between the sites is that the “www.footballticketsonline.co.uk” website appears to focus on the Premier League and the sale of tickets for Premier League matches while the “www.soccerticketsonline.com” website, while still referring to the Premier League and offering tickets to Premier League matches, focuses on a wider variety of association football competitions.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s PREMIER LEAGUE Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the PREMIER LEAGUE Mark, registered in the UK on April 6, 1999.
The Domain Name consists of the PREMIER LEAGUE Mark in its entirety with the addition of the words “tickets” and “online”. These additional words are descriptive and non-distinctive. Reference is made to similar cases including Microsoft Corporation v. J. Holiday Co., WlPO Case No. D2000-1493; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662 and PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 in which confusing similarity was found when the disputed domain name incorporated the complainant’s trade mark in its entirety. The commercial impression conveyed to Internet users by the Domain Name is that the Respondent's services are sponsored, endorsed or affiliated with the Complainant.
The Complainant has not authorized or licensed the Respondent to use the PREMIER LEAGUE Mark or sell tickets to Premier League matches. In Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437 it was held that in light of the fact that ”Complainant has not licensed or otherwise permitted the Respondent to use its trademark ... and... the mark lKEA is not one that the Respondent would legitimately choose ... unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”
The Complainant also notes that the unauthorised sale or disposal of tickets is a criminal offence under section 166 of the Criminal Justice and Public Order Act 1994 (as amended by the Violent Crime Reduction Act 2006). For the purposes of the legislation, a person is “unauthorised” unless he is authorised in writing to sell or otherwise dispose of tickets for the match by the “organisers of the match”.
The Respondent has registered and is using the Domain Name in bad faith. The Respondent registered the Domain Name in bad faith as it must have had knowledge of the PREMIER LEAGUE Mark at the time of registration.
The Respondent must have expected that any use of the Domain Name would cause harm to the Complainant. The Domain Name contains a mark that is so “obviously indicative” of Complainant’s products and services that Respondent's use of the domain name would “inevitably lead to confusion of some sort.” See AT&T Corp. v. Fred Rice, WIPO Case No. D2000-1276 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 in which the respective panels found that the use of complainant's entire mark in a disputed domain name made it difficult to infer a legitimate use.
The fact that the website to which the Domain Name resolves concerns the retail of tickets to the Premier League does not provide any assistance to the Respondent. In Speakasia Online Pte. Ltd., v. Gagandeep Randhawa, WIPO Case No. D2011-1317 the panel concluded that “[s]pecifically, the precise domain name chosen indicates that Respondent was attempting to create a false association with the Complainant and divert Internet users to a third party website unaffiliated with the Complainant. Whether the Respondent received some sort of financial gain for diverting internet users in this way is not clear, but in any event, there has been bad faith registration and use on the part of the Respondent”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the PREMIER LEAGUE Mark which was registered in the UK on April 6, 1999. In particular the PREMIER LEAGUE Mark is registered and used in relation to football tickets and the sale thereof.
The Domain Name consists of the PREMIER LEAGUE Mark and the generic suffixes “tickets” and “online”. The Panel finds that the addition of the suffixes “tickets” and “online” are not distinguishing features. The Panel refers to PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 where, in deciding that disputed domain names were confusingly similar to the complainant's marks, the Panel held that “the mere addition of common terms such as “sports”, “basketball”, “soccer”, “volleyball”, “rugby” and the like to the “PEPSI” mark, does not change the overall impression of the designations as being domain names connected to the Complainant”. In this case the suffixes “tickets” and “online” simply indicate to the Panel that the site sells tickets to the association football competition governed by the Complainant.
As a result, there is a risk that Internet users who see the Domain Name would think that the website accessible through it would be a website where they could buy the authorized tickets to the Complainant’s competition. The Panel finds that the Domain Name is confusingly similar to the Complainant’s PREMIER LEAGUE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the PREMIER LEAGUE Mark or a mark similar to the PREMIER LEAGUE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name for a legitimate noncommercial use. The Respondent’s Websites appear to offer for sale tickets for association football matches in the Premier League and other association football competitions. Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) notes that the consensus view of UDRP panelists is that:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder.”
However in the present proceeding:
a) It is unclear if it is actually possible to purchase tickets from the Respondent’s Websites. The Complainant’s authorised representatives attempted to access the ticket-purchasing area on the website at “www.footballticketsonline.co.uk” and received a message that its virus scanner detected spyware content which could infect its computer network;
b) The Respondent’s Websites sell tickets for association football competitions other than the Premier League. The existence of such links precludes any argument that the Respondent has been legitimately using the Domain Name as a reseller of tickets for the Complainant’s association football competition. See 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;
c) Neither the Domain Name nor the website itself clearly discloses the relationship between the Respondent and the Complainant; and
d) The Respondent has not been authorized by the Complainant to sell Premier League tickets; rather the unauthorised sale or disposal of tickets is a criminal offence in the United Kingdom, where the Complainant (though not the Respondent) is based;
The Panel concludes from the circumstances reflected in the record of this case that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Panel finds that the Respondent at the time of the registration of the Domain Name knew of the existence of the Complainant. The Domain Name resolves to websites that display the PREMIER LEAGUE Mark and provide information about the Premier League. The Respondent must have known, at the time of the registration of the Domain Name, of the Complainant and that visitors may initially be confused into believing that the Domain Name would be associated with the Complainant.
The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The use of the Domain Name to re-direct visitors to websites that appear to sell Premier League tickets in competition with the Complainant’s authorized offerings amounts to use of the Domain Name in bad faith. Regardless of whether the Respondent is directly involved with the Respondent’s Websites, or only receiving a fee for redirecting Internet users to the websites, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Websites by creating a likelihood of confusion with the Complainant’s PREMIER LEAGUE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <premierleagueticketsonline.com> be transferred to the Complainant.
Dated: June 8, 2012