WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Liverpool Football Club and Athletic Grounds Public Limited Company and the LiverpoolFC.TV Limited v. Andrew James Hetherington

Case No. D2002-0046

 

1. The Parties

The Joint Complainants in this administrative proceeding are The Liverpool Football Club and Athletic Grounds plc (a Public Limited Company) of 52 Mount Pleasant, Liverpool, England

and

Liverpoolfc.tv Limited (a Private Limited Company) also of 52 Mount Pleasant, Liverpool, England, a company owned jointly by The Liverpool Football Club and Athletic Grounds plc and Granada Media plc.

The Respondent is Mr. Andrew James Hetherington of 7 Hulmewood, Wirral, Merseyside, England.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <liverpoolfc.com> (the "Domain Name").

The registrar with whom the domain name is registered is Network Solutions, Inc, 487 E. Middlefield Road, Mountain View, California, USA.

The Domain Name was initially registered with the registrar in question on September 14, 2000.

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on January 18, 2002, and in hardcopy on January 23, 2002. Payment in the required amount to the Center has been made by the Complainant.

On December 21, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that they had received a copy of the Complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

Registrar verifications were received on February 1, 2002.

On February 4, 2002, the Administrative Proceeding began.

On February 22, 2002, a response was received from the Respondent.

On February 27, 2002, deficiency notification was sent to the Respondent. No further response has been received.

On February 20, 2002, Notification of Appointment of an Administrative Panelist and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainantís request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott and advised that the decision should be forwarded to WIPO by March 15, 2002

On March 18, 2002, a request for an extension of time was granted.

On April 4, 2002, a decision was submitted to the Center.

 

4. Factual Background

The First Complainant, The Liverpool Football Club and Athletic Grounds plc, operates Liverpool Football Club, a professional football team which plays in the English Premiership. It is stated that the Liverpool Football Club was founded in 1888 and has an impressive club history in Britain and Europe, having won the European Cup four times, the UEFA cup three times (most recently this year) and the domestic league a record 18 times.

The First Complainant owns a number of UK trademark registrations comprising LIVERPOOL FOOTBALL CLUB and/or LFC. The First Complainant also made UK trade mark application no. 2253940 for LIVERPOOLFC.COM. The Respondent opposed this application on October 11, 2001 on the basis of his ownership of the Domain Name.

The Second Complainant, LiverpoolFC.TV Ltd, is jointly owned by the First Complainant and by Granada Media plc, the largest company in the UK commercial television sector. The Second Complainant was formed on July 10, 2000, but later changed its name to LiverpoolFC.com Ltd on August 18, 2000. Its name was changed again to LiverpoolFC.TV Ltd. It has an exclusive licence from the First Complainant to use and exploit all of the First Complainantís marks online. It operates a website at <www.liverpoolfc.tv> through which it provides news, statistics and other information on the Club, as well as selling match tickets and Club merchandise. This is said to be the only official website for Liverpool Football Club.

The Respondent is the current owner of the Domain Name and appears to be involved in the clothing business.

 

5. Partiesí Contentions

A. Complainant

The Second Complainant claims that it was engaged in pre-Complaint negotiations with the Respondent or his representatives, Canter Levin & Berg, towards the end of 2000 in an attempt to recover the Domain Name.

According to the letter received from Canter Levin & Berg dated December 12, 2000, the Respondent purchased the Domain Name on or about September 5, 2000, from the Liverpool Flying Club of America. The Allwhois search of September 20, 2000, shows that this change was registered on September 14, 2000.

The Complainants claim that during the course of the negotiations the Respondent either directly or through his representatives, Canter Levin & Berg, claimed that he intended to use the Domain Name for the promotion of a fashion club to be called "Liverpool Fashion Club". On December 13, 2000 the Respondent told Mr. Trevor Diamond, an independent contractor engaged by the Second Complainant, that he had a business plan and funding already in place. However, it is asserted that neither of the Complainants have seen any evidence to substantiate these claims.

The Second Complainant also says that on December 20, 2000, they made the Respondent a final offer of £50,000 in return for the transfer of the Domain Name. However, the offer was rejected by the Respondent through his representatives, Canter Levin & Berg, on December 21, 2000 and a counter-offer of £125,000 was made. This counter-offer was stated to be made with regard to the value to the Second Complainant of the Domain Name and not in consideration for the expenses incurred by the Respondent.

The Complainants allege that on January 10, 2001, the Domain Name was linked to a website comprising a single page only. The website described itself as "The Ultimate Mix of Fashion & Music - Liverpool Fashion Club - London Fashion Club - membership opening soon". It is alleged that at some later stage the site was updated and was cached by Google. It is alleged that on September 28, 2001, this cache showed a site which contained only the words "www.liverpoolfc.com" and "This domain is for sale". However, by September 28, 2001, the words "This domain is for sale" had been removed from the site.

The Complainants assert that by January 18, 2002, the site had been updated and the home page included the text "Liverpool Fashion Club". The home page also included a form which purported to require the input of a user name and password in order to access the rest of the site. The Complainants indicate that, on accessing the source code of the website, this form serves no purpose since it has no action associated with it and so does nothing. In other words, they say, it is not possible to access the rest of the site by inputting an appropriate user name and password. By contrast the source code of an active form, for example that on the University of Oxford home page, would include text of the format action = "[website to go to]".

The Complainants say that the Domain Name was once again offered for sale at some point between January 10, 2001, and September 28, 2001. The Second Complainant offered to buy the Domain Name for £5000. On or around August 2001, the Respondent through his representatives replied by offering to sell the Domain Name to the Second Complainant for £50,000.

The Complainants allege the Respondent has also registered the names <londonfc.com>, <parisfc.com>, <madridfc.com>, <romefc.com> and <newyorkfc.com> in September 2000. However, by January 18, 2002, these domain names still continued to host the holding website of Easyspace and gave no indication of use as websites connected with fashion clubs.

In essence, the Complainants allege the "Fashion Club" story is a sham and the demands for excessive compensation show the true purpose of the Respondent.

B. Respondent

The Respondent says that he has been in the fashion business since the early 1980s and as well as running his own fashion retail business for several years has worked for various well-known fashion businesses.

The Respondent alleges that there are numerous websites not owned or operated by either Complainant which provide news, statistics and other information concerning Liverpool Football Club and numerous registered domains with broadly similar names. The Respondent asserts that at no time while owned by the Respondent, and as far as he is aware ever, has the site referenced by the Domain Name carried any news, statistics or other information concerning Liverpool Football Club.

The Respondent claims that use by the initial registrant appears not to have been challenged by either of the Complainants and the selection and use of the Domain Name was in that context not associated in any way with the activities of the Complainants. The Respondent also claims either of the Complainants could have acquired the Domain Name in an Internet auction pursuant to which the Domain Name was offered for sale. The auction took place in July 2000, and concluded on July 22, 2000. However, it is noted, the ostensible purchaser failed to complete the transaction as a result of which the Domain Name was available for purchase from the registered owner. The Respondent arranged for its purchase accordingly and that transaction was completed on September 5, 2000, with corresponding registration on September 14, 2000.

The Respondent claims that an employee of Granada Media plc and the Second Complainantís solicitors contacted the Respondent on September 26, 2000, with a view to buying the Domain Name. The Respondent says he explained his intentions concerning the Domain Name with reference to Liverpool Fashion Club.

The Respondent states that by letter dated December 5, 2000, solicitors representing Granada Media plc and the Second Complainant issued a "cease and desist letter" addressed to the Respondent. In that letter, the solicitors made reference to "liverpool fashion club" as mentioned on the Domain Name index page and wrongly suggested that the Respondent was not in the fashion business.

The Respondent goes on to say, a second letter dated December 5, 2000, included an offer by "our client" to purchase the Domain Name for £5,500. The Respondent claims that this is less than had been paid by the Respondent for acquisition of the Domain Name.

The Respondent says a Mr. Diamond made contact with the Respondent and his solicitors with a view to arranging an informal meeting to discuss terms for the acquisition of the Domain Name. A lengthy description is given as to what was said to have occurred. It is not necessary to repeat it here.

The Respondent admits that he met with Mr. Rick Parry, Chief Executive of the First Complainant, on April 2, 2001. Further discussions took place concerning the possible acquisition of the Domain Name but they were unproductive.

The Respondent accepts that the index page of the Domain Name did for a short time indicate that the Domain Name was for sale.

He also accepts that after September 28, 2001, the index page was altered to include a draft of a login form. As at February 21, 2002, the page continues to include the draft form.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trademarks; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a) (iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a) (ii) referred to above.

Domain Name Identical to or Confusingly Similar

The Complainants, namely one and/or the other, have a clear interest in and have used a variety of names comprising as a key part thereof "Liverpool", "Liverpoolfc" and/or Liverpool Football Club.

The first Complainant owns a number of UK trademark registrations comprising Liverpool Football Club and/or LFC and the second Complainant clearly uses Liverpoolfc as part of its name.

The Liverpool Football Club is not just one of the United Kingdom's best known and premier football teams. It is known worldwide and must be taken to have a substantial and well-established international repute.

While the word Liverpool clearly denotes the city of Liverpool in the United Kingdom, and elsewhere, the name Liverpoolfc is, in its ordinary signification, associated exclusively with the Liverpool Football Club.

Having said this, it also should be noted that there are a number of places in the world with the geographical indication "Liverpool" and by the same token a number of domain names exist which incorporate the word "Liverpool".

For the reason stated above and notwithstanding the geographic meaning of the word Liverpool, it is found that the Complainants have used as a trademark and name and have rights in the trademark and the name Liverpoolfc. In the alternative, it is found that the Complainants either jointly or severally, have rights in the name or trademark Liverpool Football Club.

On the basis of the above it is found that the Domain Name is at least confusingly similar to a trademark in which the Complainants have rights.

No Right or Legitimate Interest

Notwithstanding the clear interest the Complainants have in the name/trademark Liverpool Football Club/Liverpoolfc, it is clear from the evidence filed that the term Liverpool also has geographic significance. It also forms part of many other domain names in which the Complainants have no interest and in reality cannot so have.

The Complainants allege that the Respondent's activities in setting up these so called "Liverpool Fashion Club" are a sham and really a front to allow him to extract a substantial amount of money from the Complainants. The difficulty a panel faces in situations of this type is that it has to base its decision on the evidence as filed and without the benefit of cross-examination or other enquiry.

While the Complainants assertions appear to have merit the Panel also has to look at the explanation given by the Respondent. In the absence of a suitable explanation the Complainant would probably prevail in a case of this type. However, here the Respondent has provided evidence (not under oath) that he has been involved in the clothing/fashion industry for many years, listing a number of outlets that he has been involved with. Further, he has annexed evidence showing that he is or was the owner/director of a clothing outlet in Liverpool. He has also annexed correspondence between his organisation and others, which suggests that he was at least making plans to set up some type of Internet fashion club.

The question arises whether this explanation should be determinative. It is not always necessary to rely on prior authority. However, this is a finely balanced case and it seems appropriate to do so. The first point is that while panelists have to work within the boundaries of the Policy and Rules they also have to apply common sense and real world standards. See for example: Damon Hill Grand Prix Limited v The New Group, WIPO Case No. D2001-1362:

"As to the merits on the issue of rights or legitimate interests, the Respondent faces the problem that in 1998 Damon Hill was one of the most famous motor-racing drivers in the world, and it is inconceivable that the Respondent was unaware of this fact. It was wholly unnecessary for the Respondent even if at the time he genuinely wished to run a business under the name "The Dam on the Hill", to have selected only the three words "dam", "on", and "hill". This is particularly the case when the natural way of pronouncing "damonhill" is "daymonhill". The Respondent has failed to justify his adoption of the Domain Name, and given the fame of the driver Damon Hill, the Panelist concludes that the Respondent has no rights or legitimate interests in the Domain Name".

In the present case, the Panel also has to take into account the widespread repute and fame of the Liverpool Football Club and the well established and primary meaning of the abbreviation "FC". The Panel also has to give due weight to the fact that "FC" is unlikely to be seen by the majority of Internet users as an abbreviation for " Fashion Club" or indeed "Frisbee Club" or any other manner of possible clubs.

A similar issue was dealt with by a previous three member panel, which reached a unanimous decision in FC Bayern München e.V v. Miguel Garcia, WIPO Case No. D2000-1773, to quote:

Respondent furthermore alleges that his planned web site would indicate that it is not the official web site of Complainant. However, the Domain Name <fcbayern.com> chosen by Respondent does not in itself indicate that a web site posted thereunder would be operated by a party other than Complainant. Respondent's assertion that "fc" stands for "fans club" is not credible and is irrelevant, because the public would anyway understand that the letters "fc" stand for football club.

One has to question why the Respondent chose to acquire the Domain Name.

It seems that "Liverpool Fashion Club" is a far more descriptive and appropriate name for a business venture of the type alleged to exist. Further the loss of the Domain Name would not hinder the Respondent in continuing to develop his alleged business and to use the name "Liverpool Fashion Club".

Put another way, even if the Respondent had been involved in the clothing/fashion industry for many years, that is but one factor to take into account in balancing the merits of the case. It does not necessarily and on its own mean he has a legitimate interest in the domain name <liverpoolfc.com>. A panel has to look at the whole picture and make a call. As the panel in FC Bayern München e.V v. Miguel Garcia; WIPO Case No. D2000-1773, noted:

"As Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue, the burden of proof is shifted to Respondent to demonstrate, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed Domain Name (Lancôme Parfums et Beauté & Cie v. SL, Blancel Web, WIPO Case No. D2001-0028)."

In the present case evidence of an alleged legitimate interest is tendered by the Respondent. This evidence has however been weighed against the other relevant evidence before the Panel. The situation is a finely balanced one. However, for the reasons given above, it is found that the Complainants have met their burden under this head and the ground is made out.

Domain Name Registered and Being Used in Bad Faith

Under this head there needs to be a finding that the Domain Name was both registered and used in bad faith.

There is insufficient evidence to find that the Domain Name was registered in bad faith in the first place. It seems to have been registered by an entity in the USA, the Liverpool Flying Club. There is no proof on the evidence to hand that this earlier registration was made in bad faith or indeed that the Liverpool Flying Club did not exist or registered the Domain Name for an improper purpose. In the absence of clear evidence either way it is reasonable to infer that the initial registration was a bona fide one.

However, previous WIPO decisions make it clear that both the initial registration and the subsequent purchase are relevant. Motorola, Inc. v. NewGate Internet, Inc; WIPO Case No. D2000-0079:

"Ö. the determining factor that this panel must consider is the subsequent acquisition by the respondent of the domain name Ö... Indeed, the language of paragraph 4(b)(i) of the Policy, is clear: "the following circumstances ... shall be evidence of the registration and use of a domain name in bad faith: ... circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name ..." (emphasis added). That is, the mere fact that the respondent subsequently acquired the domain name for the purpose of selling it to Motorola for a sum in excess of costs incurred suffices to establish the bad faith registration and use referred to in paragraph 4(a) of the Policy."

As the Respondent properly notes, the mere fact that where a domain name has been offered for sale at a price greater than its registration cost does not necessarily imply bad faith. The mere fact that a complainant is prepared to pay for a domain name "over the odds" does equally not mean that there is a presence of bad faith. It may simply be that it is a domain name it needs or wants and is prepared to pay for. By the same token, it could be inferred that the fact that the Complainants may have been prepared to pay a relatively large sum of money for the Domain Name suggest some recognition that the respondent was in a position of strength rather than weakness.

However, these issues have to be considered in the light of the findings above. Having found that the Respondent has no right or legitimate interests in respect of the Domain Name it follows that his efforts in or involvement in the possible sale of the Domain Name for potentially large sums of money is prima facie bad faith use of the Domain Name. The fact that the so called "Liverpool Fashion Club" has not effectively got off the ground and that the evidence of genuine commercial effort is primarily a few letters suggests that while plausible on the surface, a reason for acquiring the Domain Name was likely to be to extract some added reward from the football club. The Respondent, having lived in Liverpool, was undoubtedly well aware of the football club and its repute and he had used one of its retired players to promote his business. These realities cannot be ignored.

Accordingly this ground is made out.

 

7. Decision

Therefore, and in consideration to the Complaintís compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15 (a) of the Rules, it is found:

(1) that the Domain Name is at least confusingly similar to the Complainantís liverpoolfc trademark

(2) that the Respondent has no right or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name was registered and used in bad faith.

Therefore, the Domain Name should be transferred to the second Complainant, the LiverpoolFC.TV Limited.

 


 

Clive L. Elliott
Sole Panelist

Dated: April 4, 2002