WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Football Media Pvt Limited v. Ahmed Bilal, SportsHabit
Case No. D2020-2402
1. The Parties
The Complainant is Football Media Pvt Limited, United Kingdom, represented by Adlex Solicitors, United Kingdom.
The Respondent is Ahmed Bilal, SportsHabit, Pakistan, represented by Andrii Raietsky, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <footballmedia.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2020. On October 6, 2020, the Respondent requested an automatic extension to the Response filing period. Pursuant to paragraph 5(b) of the Rules, on October 6, 2020, the Response due date was extended until October 11, 2020. The Response was filed with the Center on October 10, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 14, 2020. 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.
On October 23, 2020, the Complainant filed a supplemental filing. On October 26, 2020, the Respondent submitted a supplemental filing in response.
4. Factual Background
The individual Respondent became the registrant of the disputed domain name in June 2007. At the time, his main operations were through a site then known as “soccerlens.com” (now known as “sportslens.com”) providing news about sports. “Sportslens.com” is now owned and operated by Mr Bilal through the corporate Respondent, a company which Mr Bilal established in 2018.
Mr Bilal used the disputed domain name as an advertising network for football news sites.
In February 2009, Mr Bilal incorporated a company in Pakistan under the name Football Media (Pvt.) Limited (FM PK) and the business using the disputed domain name was operated through that company. Facebook and Twitter accounts were established for “Football Media”.
In August 2009, FM PK entered into a joint venture agreement with a Mr Dean Akinjobi. According to the recitals:
“The parties to this agreement wish to establish an exclusive 50%-50% global Joint Venture as a [sic] online publishing and advertising network operating as Football Media (Private) Limited ….”
The terms of the written Joint Venture Agreement required all publishers to enter into agreements with the new joint venture vehicle. However, specific arrangements were made in respect of businesses which had been generated by FM PK before the joint venture so that revenues from those businesses were split 75%-25% rather than 50%-50%. The business was to be based in Pakistan unless the parties otherwise agreed.
Mr Bilal and Mr Akinjobi both signed the Joint Venture Agreement as joint CEOs of Football Media (Private) Limited.
In July 2010, the Complainant was incorporated in the United Kingdom. Mr Bilal and Mr Akinjobi were the Complainant’s two directors and each held 50 per cent of the share capital.
At some point after this, the registration details for the disputed domain name were changed to record the Complainant as the registrant organisation, using the Complainant’s then address in the United Kingdom as exemplified by the WhoIs search dated June 16, 2014.
So far as the materials submitted by the parties and review of the Wayback Machine captures reveal, the “get-up” of the website to which the disputed domain name resolved changed after the joint venture commenced.
In 2008, for example, the website was predominantly blue headed with “Football Media” (in white lettering) over a strapline in light blue, which read at one point “A network of the best football sites” and later in 2008 changed to read “Football Business Experts”, with a device in the shape of a ball or globe indicated by three stripes or bands coloured, respectively, blue, yellow and orange.
From December 2009, the background of the website was predominantly black with a claret stripe containing a device of a griffin next to the words FOOTBALL MEDIA and another device of a shield bearing the griffin and the words FOOTBALL MEDIA in a scroll.
By late 2019, the get-up of the website changed. In particular, the device of a griffin on a shield was replaced with a disc above (or adjacent) the words FOOTBALL MEDIA. The top half of the disc featured a series of red and white vertical stripes; the bottom half was white picked out in a red or claret border to indicate a semi-circle.
From the inception of the joint venture, responsibilities for the business were divided. Mr Bilal was broadly responsible for company operations and publisher relations. Mr Akinjobi was responsible for business development. It is apparent from the materials submitted by the parties that Mr Bilal’s responsibilities for the Complainant included maintenance and operation of the IT and business systems.
Undated information submitted with the Complaint (but presumably at some point this year) claims that, since 2010, the Complainant has delivered 1,000,000 digital advertising campaigns, has had 41 million monthly users with 500 million monthly views. The Respondent says that these figures are “categorically false”. The Complainant’s unaudited accounts submitted by the Respondent disclose that, as at July 31, 2018, the Complainant had turnover of GBP 309,000. As at July 31, 2019, the Complainant’s revenues had fallen to approximately GBP 197,000.
In January 2020, Mr Bilal emailed Mr Akinjobi that he wished to “exit” the Complainant and its business. Mr Bilal’s resignation as a director of the Complainant was recorded with Companies House as of February 7, 2020.
Thereafter, Mr Bilal and Mr Akinjobi engaged in negotiations to finalise the terms of Mr Bilal’s departure including buying out Mr Bilal’s shareholding. During this time, Mr Bilal provided a considerable amount of technical assistance to facilitate other people within the Complainant taking over the work for which he had been responsible. A significant part of the negotiations and assistance appear to have been undertaken or provided by email as, by this time, Mr Bilal was in Pakistan and restrictions relating to COVID-19 were taking effect around the world. Some of the emails references discussions and, in its supplemental filing, the Respondent states that in addition to the emails there were weekly discussions.
Insofar as the materials submitted by the parties reveal, the parties were in agreement that Mr Bilal was entitled to a payment. However, there were disagreements about the amount and the period over which payments would be made. Mr Bilal’s emails state that based on average earnings over the past five years, his payout should be GBP 52,000. He subsequently scaled back his valuation to GBP 35,000 based on average revenues over two years. It does not appear that the parties reached agreement on this matter.
On January 28, 2020, Mr Bilal emailed Mr Akinjobi the general terms which Mr Bilal proposed for the separation. These included at point 4 that Mr Bilal would retain access to his email account issued by the Complainant, “[…]@footballmedia.com”, “to facilitate any internal and external conversations.” That is, an email account using the disputed domain name.
On February 16, 2020, Mr Akinjobi responded to Mr Bilal’s proposals by email. This response explicitly rejected Mr Bilal’s continued use of an “@footballmedia.com” email account. Mr Akinjobi’s email also stipulated that transfer of the disputed domain name, and transfer of administrative control into Mr Akinjobi’s email address were required.
As at February 24, 2020, Mr Bilal accepted that retention of his email account was not required. However, Mr Bilal’s position was that he would not provide a complete handover of operations documents, the domain names and accounts until all terms relating to his exit had been finalised. His email of that date stated in part:
“5. Ops doc / introductions / domain&account [sic] handovers - I can only do a complete handover once we've agreed on the terms of the exit. There's some stuff that I can start right now and will execute this week: revenue account IDs, WomensFootball.co.uk domain, publisher details, traffic stats, basic documentation etc - all of that I can do asap.”
That was unacceptable to the Complainant. On March 4, 2020, Mr Akinjobi emailed Mr Bilal to ask:
“Can you send over and domain transfer and ownership of FootballMedia.com and Womensfootball.co.uk to Football Media as discussed.”
On March 6, 2020, Mr Bilal replied relevantly:
“Here are the account details:
Tigertech.net (go to the site and click 'My Account' from menu)
login url: [redacted]
This has all files for footballmedia.com and womensfootball.co.uk. This is the control panel access, you can manage everything here.
Please make sure you change all contact details in this account.
I have paid for 1 month's additional hosting, so you'll need to add your CC to the account - it's $10 / month when paid annually, or you can move everything to a different webhost if you'd like.
WordPress access for WomensFootball is below, you already have the FootballMedia.com wordpress
WomensFootball.co.uk WordPress Access:
login url: [redacted]
On March 24, 2020, Mr Bilal stated that he would compile the account log-ins and send them through at the same time as he provided accounting information for the month of March. His email stated in part:
“2. Account Logins / Publisher Contact Emails:
“I will compile and send everything at the same time that I do the March numbers.”
[At point 1, he had earlier stated that he would “sort out March’s docs on 1st April and update [Mr Akinjobi] when that’s done.]
“The key handover items - apart from the account logins mentioned earlier - is probably publisher reporting, which is tricky because we're pulling in data from multiple sources. I'll send the documentation for that along with the March numbers and contacts / logins next week.”
On April 21, 2020, Mr Bilal emailed Mr Akinjobi stating (amongst other things):
“I've been quite busy outside of work plus I thought you knew you already had access to emails / etc and your own ad ops person to sort out things like header bidding or reporting.
“Email Redirects (general):
“You have access to all emails now, as your email ([....]@footballmedia.com) has admin access to the Google Apps account. Go to google.com/a/[….].com/ and you can reset passwords, redirect emails, change passwords, etc. etc.”
On May 14, 2020, Mr Bilal replied to a further email from Mr Akinjobi, stating:
“1. Email access issues: there was a settings issue with publishers@FM and admin@FM, just fixed it so you can pretty much go in and change their passwords whenever you'd like. Sorry about the delay here, I thought I had fixed this previously but the permissions weren't saved properly.
“2. [....]@footballmedia.com is a virtual account - it's a gmail feature (explained here: https://www.idownloadblog.com/2018/12/19/gmail-email-address-tricks/ - second one) that allows you to create virtual email identifiers for subscribing to different services without creating unique accounts.
“So the [....]@footballmedia.com login only works for DFP, and specifically for the legal manager role (that's needed for payment information, etc.) but otherwise it's not an actual email account - any email sent to it will go to [...]@footballmedia.com.
“3. Reporting Access: if there's an issue with access, upgrade their access to Administrator (AD Manager only) and that should do the trick. They will need to create the reports themselves.
“4. Reporting in general - that's something you or your ad ops person will need to figure out themselves. Give them access to all the accounts and they'll figure it out.”
As at May 21, 2020, a WhoIs search showed Mr Bilal of Football Media Pvt Ltd (that is, the Complainant) as the registrant, using the Complainant’s address in the United Kingdom and stating that the registrant’s country was the United Kingdom.
As at May 31, 2020, however, the WhoIs search showed that the address details of the registrant had changed to an address in Lahore, Pakistan and showing the registrant country as Pakistan. The registrant organization continued to be the Complainant.
On May 31, 2020, Mr Akinjobi emailed Mr Bilal with an “Official Legal Request” which stated the Complainant was going to terminate Mr Bilal’s “[...]@footballmedia.com” email account and requesting provision of the administration permissions to implement that intention.
On June 2, 2020, Mr Akinjobi again wrote to Mr Bilal with an “Official Legal Request” advising that it was going to terminate Mr Bilal’s “[…]@footballmedia.com” email account. The communication also requested that Mr Bilal arrange super administration privileges for the disputed domain name be allocated to Mr Akinjobi’s email address.
On or about June 11, 2020, the Complainant initiated a complaint with Google to obtain control of the G Suite account the Complainant had been using up to this date. This was unsuccessful.
Around this time, Mr Bilal terminated the Complainant’s access to the G Suite account the Complainant had been using to operate its business.
On June 12, 2020, the registration details for the disputed domain name were changed again to record the Respondent in Lahore Pakistan as the registrant. At this time, the Respondent apparently blocked the Complainant’s access to all of the email accounts the Complainant had been using up to that date.
On June 14, 2020, the registration details were changed again to identify the registrar’s privacy proxy service, WhoisGuard Inc. as the registrant.
On June 15, 2020, Mr Bilal replied formally to the communication from Mr Akinjobi on June 2, stating in part:
“As the legal owner of the domain footballmedia.com, I retain all rights to digital assets associated with this domain including, but not limited to, my own email account.
“This is an account I have used since before Football Media Pvt Ltd (UK) was established, and this is a domain that I have owned continuously since 2007, with no handovers being made in between.
“As such, you or Football Media Pvt Ltd (UK) have no rights to the data in my email account without my express and written permission.”
On June 30, 2020, the Complainant applied to register its FOOTBALL MEDIA and disc device as a trademark in the United Kingdom, Trademark Application No. UK00003506238. This trademark was registered on October 9, 2020.
On July 3, 2020, the Complainant’s solicitors sent a formal letter of demand to the Respondent in relation to the dispute.
On August 26, 2020, a WhoIs search showed the Respondent as the registrant. (As noted above, the Registrar’s verification response confirmed that the Respondent is in fact the registrant.)
The disputed domain name currently does not resolve to an active website. The disputed domain name resolves to a website which states “This site is currently down. For queries, email […]@footballmedia.com.”
Prior to Mr Bilal’s departure from the Complainant, Mr Akinjobi incorporated two other companies: Football Media Sponsorship Ltd in June 2018 and Football Media Sports Management Limited in August 2019. There is a dispute between the parties whether this was done with Mr Bilal’s knowledge.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. The Supplemental Filings
In the exercise of the discretion under paragraph 10 of the Rules, the Panel will admit the Complainant’s supplemental filing into the record in this case. Both parties have made allegations of fraudulent conduct or misleading statements against the other. In important respects, the Complainant’s supplemental filing addresses and seeks to correct allegations made against the Complainant, or Mr Akinjobi personally, in the Response.
In the first part of its supplemental filing, the Complainant contends that the Response should be struck out because it grossly exceeds the 5,000 word limit specified through paragraph 5(c)(i) of the Rules and paragraph 11(b) of the Supplemental Rules. In the end, the Panel will not take that course. The dispute over the disputed domain name is part of a larger dispute between the parties about the terms on which Mr Bilal exited the Complainant. That does not take the dispute about the disputed domain name outside the scope of the Policy, as the Respondent contends. There is a dispute between the parties about whether or not the Respondent is entitled to be registered as the holder of the disputed domain name in the face of the Complainant’s trademark rights. Such a dispute falls clearly within the scope of the Policy. Rejection of the Response in this case would not be interests of either party.
The Panel will also admit the Respondent’s supplemental filing. Much of the Respondent’s supplemental filing repeats things already addressed in the Response. It does provide, however, a letter from Surrey Police advising that they had closed their criminal investigation in relation to alleged conduct of Mr Bilal. This letter, as submitted in the Respondent’s supplemental filing, is dated October 23, 2020, and so was not available to either party at an earlier date. If it were not admitted into the record, the Panel would be left with the erroneous impression that Surrey Police were conducting a criminal investigation into Mr Bilal’s conduct. As that investigation has been closed with no further action to be taken by Surrey Police, that cannot be a factor into whether or not the Respondent has rights or legitimate interests in the disputed domain name or has registered or used it in bad faith.
The advice from Surrey Police that no further action will be taken unless further information comes to light does not mean that the Respondent necessarily has rights or legitimate interests in the disputed domain name under the Policy or has not, in terms of the Policy, registered or used it in bad faith. Whether or not either ground is made out falls to be considered on the evidence presented by the parties.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership in the United Kingdom of registered trademark No. UK00003506238.
The Respondent contends this trademark is not validly registered in the Complainant’s name, but rather the Respondent through Mr Bilal has a prior entitlement. The Respondent also contends that the Complainant has not used the trademark sufficiently extensively to have acquired rights in it as an unregistered trademark.
The question of the Respondent’s, or Mr Bilal’s, prior entitlement to the trademark is conventionally addressed under the second requirement of the Policy – whether or not the Respondent has rights or legitimate interests in the disputed domain name.
As to the Respondent’s second argument, the Respondent contends that “football media” is comprised of two ordinary English words. It provides a few examples of other people using the term descriptively. Accordingly, although contending it is the owner of the trademark rights in the term, the Respondent contends it is at best a weak mark.
The Panel notes, however, that, the Complainant uses the term FOOTBALL MEDIA not just as a word mark but also as a composite mark. For most of the last ten years, that has been in a form with a griffin or with a griffin superimposed on a shield. More recently, it has been in the form of a disc.
The Complainant’s current website at “www.footballmedia.co” claims that it has executed 1,000,000 digital advertising campaigns with millions of users since 2010. As noted above, however, the Respondent claims these figures are “categorically false”. Having regard to the Complainant’s revenue figures for 2018 and 2019, the Panel does not think it appropriate to accept the claimed number of users and website views in the absence of some independent corroboration of the metrics. The numbers claimed on the website may well be true. Mr Bilal, however, was a director of the Complainant for almost ten years. On the record in this proceeding, the Panel does not have any objective basis to decide which, if either, is right.
On the other hand, in its Response, the Respondent states that Mr Bilal has spoken with thousands of publishers during his participation in the Complainant’s business. The revenue figures achieved by the Complainant in 2018 and 2019 are relatively modest, but not insubstantial. While the Respondent disputes one particular client claimed by the Complainant, other clients apparently include BWIN, the sponsors of Real Madrid, and other notable brands including TAG Heuer, Eurosport, Heineken, Adidas, Ladbrokes, SkySports, etc. Moreover, as noted above, Mr Bilal estimated his buyout based on his share of revenues at various GBP 35,000 to GBP 52,000. The Complainant’s evidence also includes some evidence of press coverage and promotional activities through presentations at relevant conferences.
The Respondent points out that another panel rejected the complaint in Keystone Publishing, Inc. v. UtahBrides.com, WIPO Case No. D2004-0725, finding that three years’ use and USD 371,000 in advertising expenditures was insufficient to confer secondary meaning on the domain name <utahweddings.com>. The Panel is not bound by that decision but, of course, it is highly desirable that similar cases are decided consistently. The Keystone Publishing case is not on all fours with the present case. First, there was only three years’ use, not ten years. Secondly, the complainant and respondent were direct competitors, not formerly co-directors in the trademark claimant. Further, the respondent had adopted and started using a very similar domain name, <utahwedding.com>, at almost the same time as the complainant’s use started. The learned panel also referred to evidence of many other competitors in the market using the same terms. The uses identified by the Respondent in this proceeding are not trademark use or directed to the same sort of digital advertising business. In addition, the market was also very different, being directed to the general public in the State of Utah looking for wedding services.
Bearing in mind the particular niche market in which the Complainant operates and the Respondent’s own recognition, through Mr Bilal’s calculations of his “buyout”, it is evident that the Complainant has generated goodwill in its particular field of operations sufficient to satisfy the standing requirement imposed at this stage of the Policy.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
The words “Football Media” are the only verbal element of the Complainant’s registered trademark. The disc component of the Complainant’s current trademark is visually larger than the verbal element. As the only verbal element, however, it is natural that members of the public will refer to it as the “Football Media” mark. The textual elements of the Complainant’s mark are not disclaimed, nor are they completely overtaken by the visual disc element so as to preclude the Panel applying the usual approach under the Policy of disregarding the device element for the purposes of a confusing similarity comparison. See WIPO Overview 3.0, section 1.10.
Disregarding the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system (WIPO Overview 3.0, section 1.11), therefore, the disputed domain name is identical to the name used by the Complainant to identify its services whether as a plain word mark or as the only verbal element of the device mark used by the Complainant.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g. WIPO Overview 3.0, section 2.1.
The Complainant contends that there was an unauthorised transfer of the disputed domain name from the Complainant to the Respondent on or about June 12, 2020.
On the other hand, the Respondent contends that Mr Bilal is and has been continuously since 2007 the registrant of the disputed domain name. It points out that the Joint Venture Agreement did not include any clauses transferring the disputed domain name or intellectual property rights to the joint venture or the Complainant.
The Panel accepts the Joint Venture Agreement does not expressly transfer the disputed domain name to the Complainant (which was not even in existence at that time).
It is apparent from its terms and the subsequent conduct of the parties, however, that the joint venture became the vehicle through which the business formerly conducted by Mr Bilal and then FM PK was to be operated. As noted above, for example, all publishers were required to enter into contracts with the joint venture vehicle. Recognition of the value FM PK was contributing to the joint venture business included a higher percentage of the revenues derived from the contracts FM PK already had in place being payable to FM PK than the contemplated “50%-50%” split.
Further, so far as the objective record reveals, the registration of the disputed domain name was transferred at some point after the incorporation of the Complainant into the Complainant’s name following the incorporation of the Complainant. The WhoIs record for the disputed domain name on June 16, 2014, shows Mr Bilal as the individual contact, but the Complainant became the registrant organisation. That is consistent with the division of responsibilities between Mr Bilal and Mr Akinjobi within the business. In its supplemental filing, the Respondent states at paragraph 14:
“…. As the co-owner of the Complainant company from July 2010 to February 2020, the
Respondent had updated the Domain’s registration details to his own company – the Complainant
company soon after the company was created. ….”
In its Response, however, the Respondent contends that there was a verbal agreement that the Respondent would keep ownership of the disputed domain name until the Complainant agreed to the Respondent’s payment terms.
When this verbal agreement was reached is not clear from the Response. It was certainly the position Mr Bilal took in his email to Mr Akinjobi on February 24, 2020.
So far as the numerous emails submitted by the parties show, however, Mr Akinjobi rejected that position. In his email to Mr Bilal on March 4, 2020, he said:
“Can you send over and domain transfer and ownership of FootballMedia.com and Womensfootball.co.uk to Football Media as discussed.”
The text of that email indicates that there was a discussion at some point between February 24 and March 4, 2020, in which Mr Akinjobi understood Mr Bilal accepted the Complainant’s entitlement to the disputed domain name amongst other things.
The subsequent email correspondence summarised above is consistent with Mr Akinjobi’s position. On several occasions, Mr Bilal represented that he was about to provide, or had provided, the log-in details or control over the domain name account, not just the web-hosting accounts. It was not until May 31, 2020, when the Complainant sought to terminate Mr Bilal’s email account issued by the Complainant and exercise the rights over the G Suite account (which Mr Bilal’s email dated May 14, 2020 stated the Complainant had full administrative control over) that Mr Bilal cut off the Complainant’s access to the disputed domain name and the G Suite account having used his status as admin of the disputed domain name to transfer it to the Respondent. It was not until June 15, 2020, that Mr Bilal formally asserted his claim to ownership and denied the Complainant’s rights to the disputed domain name.
In its supplemental filing, the Respondent further contends in paragraph 14 that Mr Bilal only permitted the Complainant to continue using the disputed domain name after his exit to facilitate the Complainant’s application for a bank loan. That does not appear to be consistent with the email correspondence set out above prior to June 2020.
The Respondent also claims that Mr Bilal has always paid the registration fees for the disputed domain name. No evidence has been provided to support that claim or, if it was the case, to identify the capacity in which Mr Bilal was acting.
In these circumstances, the Panel finds that the Respondent does not have rights or a legitimate interest in the disputed domain name. The Complainant has established a prima facie case that Mr Bilal used his position as admin of the disputed domain name for the Complainant to transfer it to the Respondent without the Complainant’s agreement.
The Respondent contends that through his dealings with thousands of publishers Mr Bilal is commonly known as “Football Media”. That, however, does not take into account that he was dealing with them on behalf of the Complainant. Further, the disputed domain name is plainly not derived from the name “SportsHabit”.
The Respondent alternatively contends that it is perfectly legitimate for it to register descriptive words as a domain name for use in connection with their descriptive meaning. However, this is not a case where someone wholly unrelated to a trademark owner has registered a descriptive term for its value as a description.
The Respondent therefore has not rebutted the prima facie case established by the Complainant. Accordingly, the Complainant has established the second requirement under the Policy.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Paragraph 4(b) of the Policy provides that:
For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your 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 trademark 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 your web site 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 your web site or location.
The instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
The Complainant did not register its trademark until after the disputed domain name was transferred into the Respondent’s name. However, the Complainant had been using that form of its trademark before Mr Bilal announced his intention to exit the Complainant. Prior to that, the Complainant had been using the name “Football Media” and the shield form of its trademark since 2010. Mr Bilal was of course fully aware of that as he was one of the Complainant’s directors throughout this period.
In the circumstances outlined above, it appears that the disputed domain name was transferred sometime in mid-2020 to the Respondent as, at the least, bargaining leverage to secure payment for the value of Mr Bilal’s shares in the Complainant. These circumstances are closely analogous to the circumstances outlined in paragraph 4(b)(iii) of the Policy.
Mr Bilal’s knowledge of and intentions about these matters is attributable to the Respondent, being a company which he owned and controlled.
Registration of the disputed domain name by the Respondent in circumstances where the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name and moreover that the registration was undertaken to achieve leverage over another party, therefore, qualifies as registration in bad faith under the Policy.
It has long been established since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that “passively” holding a disputed domain name where it has been registered in bad faith is use in bad faith for the purposes of the Policy. It is not necessary to demonstrate positive or active use.
Accordingly, the Complainants have established all three requirements under the Policy.
E. Reverse Domain Name Hijacking
In the circumstances, it is unnecessary to consider the Respondent’s request for a finding of reverse domain name hijacking against the Complainant.
For 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 <footballmedia.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 28, 2020