WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Premier League Limited v. David Hanley

Case No. D2012-1255

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 of Great Britain and Northern Ireland.

The Respondent is David Hanley of Slough, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <premierleaguetv.com> is registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2012. On June 20, 2012, the Center transmitted by email to 1&1 Internet AG. a request for registrar verification in connection with the disputed domain name. On June 21, 2012, 1&1 Internet AG 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. No formal Response was received but the Respondent sent two informal email communications to the Center on July 10, 2012 and July 11, 2012.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 9, 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

In the absence of a formal Response, the facts relied upon by the Panel are those contained in the Complaint and which the Panel accepts as true.

The Complainant carries on business in the United Kingdom as the Governing Body of the Association of Football Competition referred to as the “Premier League”. Its members are the constituent football clubs of the Premier League.

The Premier League is world famous. In the United Kingdom and abroad there is a great deal of interest in televised live footage of football matches played as part of the Premier League (“Competition”). The Competition was formed as the “Premier League” in 1992. Following an agreement between the Complainant and Barclays Bank Plc (“Barclays”) regarding Barclays’ sponsorship of the Competition, the Competition was branded as “Barclays Premier League” from the 2007-2008 season.

The Complainant has registered and uses a number of trade marks in relation to the Competition including United Kingdom trademark No. 2147888 registered on April 6, 1999 for the mark PREMIER LEAGUE in classes 09, 14, 16, 25, 26, 28, 41, and 42 (“Complainant’s word mark”), and registrations in the UK and in the EU for device marks which include the words “Premier League” (“Complainant’s device marks”) (together, “Complainant’s marks”). Printouts of the Complainant’s marks were annexed to the Complaint at Annex D.

The Complainant has been active on the Internet for some years and in particular has operated the Internet website “www.premierleague.com” since August 2002. Representative pages of its website were attached as Annex E to the Complaint. Since around August 2006, the Complainant’s website has incorporated video footage connected with the Competition, such as news reports and interviews with managers of clubs in the Competition. Representative pages were attached as Annex F to the Complaint.

The Premier League is authorized by its member clubs to license parties throughout the world to provide audio/visual coverage of matches which are played as part of the Premier League competition. The rights granted by the Premier League pursuant to such licences vary depending upon the particular package of rights and territory concerned but include the right to make available footage of matches by means of the Internet. Any party making available, inter alia, live transmissions of matches, by means of the Internet without the authority of the Premier League or one of the Premier League’s licensees is doing so on an unauthorized basis.

The background to the immediate Complaint is that the Respondent registered the disputed domain name on May 16, 2005, which is more than 10 years after the Complainant began trading under the Complainant’s word mark and post-dates the Complainant’s website. The Respondent’s website resolving from the disputed domain name has been used as a sponsored link parking site since at least January 2011 as can be seen from the archive screenshot set out at Annex H and the current screenshot at Annex I to the Complaint.

After the Center notified the Respondent of the Complaint, he responded with two emails. In the first dated July 10, 2012 he stated:

“Hi, can you tell me what this is all about? I am not even that bothered about that domain which I bought ages ago!

Thanks,

Dave”

In the second email to the Center dated July 11, 2012 he stated:

“In layman terms what are they after? Do they want to buy the domain or bully it from me?

Thanks,

Dave”

In the light of these two emails, the Panel takes the view that there is no formal Response which it should take into account. However, it is clear from the email dated July 10, 2012 that the Respondent appears not to dispute the Complainant’s contentions.

5. Parties’ Contentions

A. Complainant

1. The Complainant contends that the disputed domain name is identical to the Complainant’s word mark PREMIER LEAGUE and similar to the Complainant’s device marks since it contains the words “premier” and “league”.

2. That the disputed domain name is “identical or confusingly similar” to a trade mark in which the Complainant has rights. The Complainant relies upon earlier UDRP decisions.

3. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

(a) The Complainant has not licensed or otherwise permitted the Respondent to use the name “Premier League”.

(b) The Complainant does not consider that the Respondent can demonstrate any circumstances that will evidence rights to, or legitimate interests in the disputed domain name.

4. The disputed domain name was registered and is being used in bad faith:

(a) Visitors to the Respondent’s website may initially be confused into believing that the disputed domain name is associated with or sponsored by the Complainant.

(b) The only reason to use the disputed domain name is for the purpose of bad faith to divert traffic from the Complainant and for the Respondent to generate income from the sponsored link.

B. Respondent

There are no contentions made by the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied for the reasons set out above that the Complainant is the owner of registered trade mark rights in the mark PREMIER LEAGUE which were registered before the date of registration of the disputed domain name. The Panel also accepts from the Complainant’s evidence that the Complainant has acquired goodwill in the mark PREMIER LEAGUE.

The issue which the Panel therefore has to decide is whether the disputed domain name <premierleaguetv.com> is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The only difference between the mark PREMIER LEAGUE and the disputed domain name is the use of the suffix “tv”. This is descriptive of television services as is submitted by the Complainant.

The Complainant relies upon a number of earlier UDRP decisions which are listed in the Complaint according to which the simple addition of a descriptive term to a trademark does not avoid the risk of confusion. Therefore, in the Panel’s view, the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. It follows that the Complainant succeeds in this element of the Policy.

B. Rights or Legitimate Interests

The Complainant’s case is that there is no evidence to show that the Respondent has been legitimately licensed or otherwise permitted to use the mark PREMIER LEAGUE, or that the Respondent demonstrates any rights to or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, in the absence of contrary evidence from the Respondent, the Panel finds for the Complainant in respect of this element.

C. Registered and Used in Bad Faith

The Complainant relies upon the evidence that visitors may initially be confused into believing that the disputed domain name is associated with or sponsored by the Complainant thus the Respondent would have attracted visitors to its site through the bona fide reputation of the Complainant’s name “Premier League” and the Complainant’s associated trade marks.

The Complainant points out that there is no reason for the Respondent to use the disputed domain name except for the purposes of bad faith to divert traffic from the Complainant and for the Respondent to generate income from such a sponsored link. The Complainant relies upon the earlier decision in Owens Corning v. NA, ( WIPO Case No. D2007-1143). In that case, the panel accepted that “by placing the domain name with the domain name parking service, the respondent deliberately attracted for commercial gain Internet users to the webpage created by GoDaddy by trading a likelihood of confusion with the Complainant’s mark”. This is a similar set of circumstances to this present case.

Finally, the Complainant asserts that the disputed domain name consists of the mark that is so “obviously indicative” of the Complainant’s products and services that the Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort”. The Panel accepts that reasoning and finds that the disputed domain name was registered and used in bad faith. It follows that the Complainant succeeds in showing this final element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <premierleaguetv.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Dated: August 24, 2012