WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Legia Warszawa S.A. v. Piotr Galas
Case No. DTV2016-0005
1. The Parties
The Complainant is Legia Warszawa S.A. of Warsaw, Poland, represented by Leśnodorski Ślusarek and Partners, Poland.
The Respondent is Piotr Galas of Warsaw, Poland, represented by Wierzbowski Eversheds, Poland.
2. The Domain Name and Registrar
The disputed domain name <legia.tv> 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 July 26, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2016, 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 August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. On August 24, 2016, the Respondent requested the extension of the Response due date. The Response due date was subsequently extended until August 31, 2016. The Response was filed with the Center on August 31, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 6, 2016. 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 September 14, 2016, the Complainant submitted a supplemental filling on merits. On September 16, 2016, the Panel issued a Panel Order, invited the Respondent to comment upon the Complainant’s supplemental filling within 7 days upon receipt of the Panel Order. The decision due date was further extended for 7 days upon the receipt of the Respondent’s submission or the lapse of 7-day deadline. On September 23, 2016, the Respondent submitted its comments. Pursuant to paragraph 12 and 10 (b) of the Rules, the Panel accepted both submissions.
4. Factual Background
The Complainant is a company that owns Legia Warszawa - a professional football club based in Warsaw, Poland, founded in 1916 (the “Club”). Legia Warszawa, commonly known as “Legia”, is very well-known and popular in Poland - it is one of the most successful football clubs in Polish history that won eleven Ekstraklasa Champions titles, a record 18 Polish Cup and 4 Polish SuperCup trophies.
The Complainant is the holder of the following trademark registrations:
- Polish Trademark registration No. R.106533 for LEGIA registered on October 29, 1998 to cover services in classes 39, 41 and 42;
- Polish Trademark registration No. R.239664 for LEGIA registered on May 31, 2011 to cover services in classes 3, 9, 14, 16, 18, 21, 22, 24, 25, 28, 32, 35, 39, 41, 43 and 44;
- European Union Trade Mark (“EUTM”) registration No. 003805439 for LEGIA registered on November 18, 2005 to cover services in classes 3, 9, 14, 16, 21, 24, 25, 28, 32, 35, 39, 41, 43 and 44.
The Respondent is an individual, a fan of Legia Warszawa and amateur photojournalist.
The disputed domain name was created on March 9, 2004, and currently resolves to a pay-per-click website.
The Complainant and the Respondent were engaged in an email communication which took place between March 30, 2016 and June 10, 2016. The communication was initiated by the Complainant which approached the Respondent in order to settle the matter via the disputed domain name’s transfer. In the email of March 30, 2016, the Respondent expressed its intent to settle the case, and inquired about the state of “technological innovation” in the Club. In the email of April 6, 2016, the Complainant offered the Respondent the amount of PLN 5.000. The Respondent’s answered to the Complainant’s offer in the email of April 11, 2016, that he ‘“expected 2 zeros more, or, to be more real, at least one zero more”. The Respondent also stated in that email: “The proposed amount does not even cover my out-of-pocket expenses, and all of that was made and is made with the fan-effort, my hard work Not to mention, that it is below by weekly wage, being dangerously close to my project daily wage. I believe that we will reach an agreement for the common good of Legia. An interesting project in the field of TV would be a nice final touch for the club’s centenary, and the club evidently needs to outstrip the rest of Ekstraklasa and dominate it in non-sport area”. Further, in the correspondence of June 10, 2016, the Respondent expresses its doubts that the Complainant itself “would sell such an address for such money” and that for the money offered, the Complainant “may buy other nice address, e.g. <legiawarszawa.tv>”. In that message, the Respondent further indicated that if the Complainant is not willing to raise its financial offer, the disputed domain name may be bartered for something else that presents a real value.
5. Parties’ Contentions
The Complainant presented its contentions in two submissions: the Complaint and the supplemental filling of September 14, 2016. There are summarized below.
A. Identical or Confusingly Similar
The Complainant contends that it has exclusive rights in the LEGIA marks in Poland and in the all European Union member states, with the application for registration of the mark No. R.106533 filed with the Polish Patent Office already in 1995 which is 9 years before the registration of the disputed domain name by the Respondent. The Complainant asserts that it uses the LEGIA marks in its ongoing business activities related to running a sport club, including providing advertising and promotional services, organizing events, participating in the production of TV series, merchandising, running retail outlets and conducting other sport-related activities. According to the Complainant, the disputed domain name is identical, or at least confusingly similar to the LEGIA marks. This is because the disputed domain name wholly incorporates the LEGIA marks No. R.106533 and R.239664 and the distinctive part of the LEGIA mark No. 003805439.
Moreover, in the Complainant’s view, the country-code Top-Level Domain (“ccTLD”) “.tv”, which stands for “Tuvalu” and could also be associated with the word “television” and video content, actually enhances the likelihood of confusion since Legia Warszawa’s official website “www.legia.com” already contains a number of videos related to the general news concerning the Club and matches recently played by Legia.
Additionally, the Complainant’s recent marketing strategy included involvement in the production of a documentary series about the Club, therefore Legia fans and other Polish Internet users would generally link the disputed domain name to the Complainant and its activities in the field of video production and broadcasting.
B. Rights or Legitimate Interests
The Complainant asserts that it did not grant the Respondent any license, permission or authorization to use the LEGIA marks. The Complainant states that different sport sections use the LEGIA mark and have obtain its consent or entered into license agreements with it.
The Complainant also claims that the disputed domain name is inactive and has been very scarcely used for 12 years thus it is evident that the Respondent does not make any legitimate commercial or noncommercial use of it. According to the Complainant, any past or planned use of the disputed domain name by the Respondent cannot justify its registration in violation of the Complainant’s rights.
In particular, the website under the disputed domain name is not a real fan site. The Complainant states that in the period between 2005 and 2015, the website only redirected Internet users to the domain names <legialive.tv> and <legionsici.tv>.
C. Registered and Used in Bad Faith
The Complainant contends that the disputed domain was registered and is being used in bad faith. In the Complainant’s view, the Respondent was or should have been aware of its rights while registering the disputed domain name due to the extreme popularity of Legia Warszawa in Poland (referring to CATI’s and Przegląd Sportowy’s researches) and the fact that the LEGIA mark No. R.106533 was already registered at that time.
Furthermore, the Complainant asserts that the registration of the disputed domain name directly preceded the acquisition of the shares of Legia Warszawa by the International Trading and Investments Holdings S.A. Luxembourg (“ITI”) which was at the time one of the largest corporations in the Polish media market. According to the Complainant, the news about the deal spread across the media in 2003 and 2004, thus the circumstances strongly suggest that the Respondent, while registering the disputed domain name, aimed at taking advantage of the potential launch of ITI’s television broadcasting activities related to Legia Warszawa. The above contentions are supported, in the Complainant’s view, by the communication between the Parties which took place before the submission of the Complaint.
The Complainant explains that in 2016, Legia Warszawa celebrates its centenary and for this reason it has decided to intensify its already far-reaching marketing actions. Hence, the Complainant took an interest in the disputed domain name and approached the Respondent with an offer to acquire it. Based on the email communication between an employee of the Complainant and the Respondent, the Complainant believes the Respondent estimated the value of the disputed domain name as higher than of other, similar domains, because of its attractiveness in the context of the Complainant’s marketing activities and its identity with the LEGIA marks and hence requested the Complainant to pay an amount exceeding its out-of-pocket expenses. Moreover, according to the Complainant, the Respondent used the pre-complaint contact with the Complainant as the pretext to ask for the position in the Club.
Consequently, the Complainant contends that the Respondent’s main purpose in registration of the disputed domain name was to sell the disputed domain name to the Complainant for a significant consideration, thus the conditions set forth in the Paragraph 4(a)(iii) of the Policy are fulfilled. It also asserts that because <legia.tv> has very strong connotation to the Club, every attempt by the Respondent to use it would damage the Complainant’s legitimate interests.
The Respondent presented its contentions in two submissions: the Response and the reply to the Complainant’s supplemental filling of September 15, 2016. There are summarized below.
A. Identical or Confusingly Similar
The Respondent agrees that the disputed domain name is identical with the LEGIA marks and the business name of the Complainant, but it also states that the Complainant has no monopoly to use the name “Legia” in relation to posting information on sport events or Internet forums. The Respondent asserts that “legia” means a military unit in ancient Rome’s army and is a name historically used by a military sports club based in Warsaw. It further contends that there is no evidence that the Complainant is an inheritor of the Legia military club, since the multidisciplinary club now is divided into many sections owned by different entities.
The Respondent denies that the disputed domain name infringes the Complainant’s rights as none of its marks are registered for TV-related business. According to the Respondent, the Complainant was not interested in the creation of the online TV business until up to 2016. The Respondent points out that there is also a LEGIA mark registered and used by the Browning International SA in various European Union member states.
Furthermore, the Respondents contends that the Complainant has no unregistered or common law trademark rights to the name “Legia” as Polish law, which is applicable to the Complainant’s intellectual property, does not recognize rights to unregistered or common law trademarks. The Respondent also explains that contrary to the assertions in the Complaint, it has never conducted any business that could infringe the Complainant’s right to its trademark/ trademarks.
B. Rights or Legitimate Interests
The Respondent asserts that it has legitimate interests in the disputed domain name. It contends that it registered <legia.tv> 2004 for the sole purpose to communicate information about the Club to the fans and to provide an Internet platform for fans, in particular where fans could share their amateur videos related to their activities as sports fans and comment on the Club’s actions. According to the Respondent, its activity is an example of building a society that supported a business of the Complainant and increased the popularity of the club that has nothing in common with acting in bad faith or for gain. The Respondent further explains that from March 2007 to spring 2016 the website connected with <legia.tv> was primarily used as a platform where sports fans could share their reports from the matches and amateur videos related to the football activity of the Club. The fact that for last couple of months the website was not active does not change – in the Respondent’s view – this assertion.
Moreover, the Respondent contends that its activities related to the disputed domain name have never been performed commercially or for gain – quite the opposite, all its activities may be considered as supporting the business of the Complainant and popularizing the Club.
Additionally, the Respondent believes that thanks to the disclaimer “legia.tv dla kibicow przez kibicow” (“legia.tv for fans from fans”) on the main site under the disputed domain name, there are no doubts that the webpage was not the official website of the Club.
The Respondent also challenged the accuracy of the tool available at “www.archive.org” which was used in the Complainant’s submission.
C. Registered and Used in Bad Faith
The Respondent asserts that it has not used the disputed domain name in bad faith. It denies that it knew about the Complainant’s rights or any business circumstances of the Complainant at the time of registering the disputed domain name. The Respondent finds the Complainant’s allegation in this regard to be groundless.
The Respondent confirms it exchanged emails with one of the Complainant’s employees, however it has never actively approached the Club with an offer for sale regarding the disputed domain name and its response to the Complainant’s email was the first discussion on this matter with the club (after 12 years from the registration and active use of the disputed domain name). Moreover, the communication between the Respondent and the Complainant’s employee should be, in the Respondent’s view, interpreted as informal, “maybe little emotional talk between two colleagues”.
Further, the Respondent submits that the real costs paid by the Respondent was the sum of PLN 38.489,87 which id evidenced in the presetend confirmations of bank transfers. Therefore, the Respondent believes that the amount of PLN 50.000 which was suggested by it in the email communication as the counteroffer for selling the disputed domain name does not meet the definition of “valuable consideration in excess of any documented out-of-pocket costs” set in paragraph 4(b)(i) of the Policy. Therefore, the history of the correspondence between the Complainant and the Respondent cannot be used to prove any bad faith of the Respondent.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is English. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant requested Polish to be the language of the administrative proceeding, however, it did not file any of its submissions in Polish – both the Complaint and the Complainant’s supplemental filling of September 15, 2016 were filed in English. Similarly, the Respondent mentioned in the email of August 26, 2016 that it supports the Complainant’s motion that the language of the administrative proceeding be Polish, yet it also failed to submit the Response as well as the reply to the Complainant’s supplemental filling of September 15, 2016 in Polish. In these circumstances, the Panel finds it appropriate to conduct the proceeding in English.
6.2. Substantive Issues
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant holds many valid trademark registrations for the LEGIA mark. The disputed domain name incorporates the Complainant’s LEGIA mark in its entirety. As stated by previous UDRP panels, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to said trademark (see 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).
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0”), clearly states: “The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name.” Therefore, the goods and/or services for which the trademark is registered are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In the Panel’s opinion, the ccTLD suffix cannot serve to distinguish the disputed domain name from the Complainant’s registered marks. On the contrary, the addition of “.tv” which could be associated to the word “television” increases the risk of confusion of Internet users who may easily link the disputed domain name to a website displaying videos of the Complainant’s activity.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the LEGIA mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent then assumes the burden of production, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with Paragraph 4(c) of the Policy:
(i) before any notice to the respondent of the dispute, its 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
At present, the disputed domain name resolves to a website that displays pay-per-click (“PPC”) links related to “video”, “download software” and other unrelated activities. The Panel accepts on balance the fact that it might have been used as a fan site, however, according to the WIPO Overview 2.0 in order to recognize rights and legitimate interests of a fan site, it has to be “actually in use, clearly distinctive from any official site, and noncommercial in nature”. As the fan site under the disputed domain name is presently inactive, which was asserted by the Complainant and confirmed by the Respondent, the Panel finds that the Respondent is not 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.”
In the light of above the Panel concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered on March 9, 2004 and incorporates the LEGIA mark, which was registered over 5 years before the disputed domain name and is commonly known in Poland. Moreover, the Respondent, as a Legia Warszawa fan, was fully aware of the Complainant’s rights stemming from the LEGIA mark. In the Panel’s opinion, wide-spread reputation of the LEGIA mark indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (see Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Advance Magazine Publishers Inc. v. Marcellod Russo, WIPO Case No. D2001-1049).
Secondly, the email communication between the Complainant and the Respondent prove that the latter’s sole interest was to sell the disputed domain name for either monetary or non-monetary consideration. When approached by the Complainant, the Respondent did not mention anything about its present or future use of the disputed domain name. Moreover, the sums requested by the Respondent (PLN 500.000 or 50.000) grossly exceeded the costs of the disputed domain name’s registration and its extensions (the Panel does not take into consideration the costs of hosting and administration since any content was removed from the website that the disputed domain name resolves to). The above indicates the bad faith of the Respondent.
Thirdly, the Respondent is using the disputed domain name in bad faith, as it directs Internet users to a parking website displaying “pay-per-click” links. Currently, it appears that the sole purpose of the Respondent’s website is to attract Internet users to the site, for profit, by creating confusion between the disputed domain name and the Complainant and its trademark as described in paragraph 4(b)(iv) of the Policy. The Respondent’s claim to have a fan site is primarily a pretext for commercial advantage (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753).
In the light of above, paragraph 4(a)(iii) of the Policy is found to be satisfied.
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 <legia.tv> be transferred to the Complainant.
Date: September 28, 2016