WIPO Arbitration and Mediation Center

The list also include the following generic soccer domain names:

"soccertickets.com"; and
"footballtickets.com"

as to which, see discussion below.

4.2.4 As to trademark usage, the Complaint also lists the following which are registered by the Respondent:

"wnbatickets.com"
"mlbtickets.com"
"patriotstickets.com"
"flyersticketrs.com"
"76erstickets.com"
"ajaxtickets.com"
"celticstickets.com"

WNBA is a registered US trademark of NBA Properties Inc and resolves to The Women's National Basketball official website.

MLB is a registered US trademark of Major Leaguer Basketball Promotion Corporation.

PATRIOTS is a registered US trademark of New England Patriots L.P.

FLYERS is a registered US trademark of Philadelphia Hockey Club Inc.

76ERS is a registered US trademark of Philadelphia 76ers Basketball Club Inc

AJAX is a registered US trademark of DeVereniging A.F.C. "Ajax" Company Netherlands

CELTICS is a registered US trademark of Celtics Limited Partnership Boston Celtics Corporation

4.2.5 As noted in paragraph 4.2.1 above the Respondent's website acknowledges use of third party trademarks and trade names but asserts that such use is for descriptive purposes only.

5.1. The Complainants

The Complainants contend that the Respondent has registered as a domain name a mark which is identical or at least confusingly similar to the Complainants' FIFA trademark and service mark, that the Respondent has no rights or legitimate interests in respect of the domain name in issue, and that that domain name was registered and is being used in bad faith.

5.2. The Respondent

The Respondent states that the Complainants fail to meet any of the criteria set out in paragraph 4(a) of the Policy.

5.3. Correspondence between the parties preceding the Complaint

ISL wrote on September 6, 2000, by email to the Respondent requesting transfer to FIFA of the domain name in issue in consideration for payment of the Respondent's out of pocket costs directly related to the domain name. The Respondent's attorneys replied by email on September 22, 2000, pointing out the disclaimer [see above] on the Respondent's website, denying that use of the domain name in issue is likely to lead to confusion and offering to discuss any concerns the Complainants might have as to the adequacy of that disclaimer. ISL answered by email on September 25, 2000, taking issue with the relevance of the disclaimer, pointing to attempted resale by the Respondent of tickets for the 2002 FIFA World Cup Korea / Japan (constituting breach of the terms and conditions for sale of those tickets) and reiterating the request for transfer of the domain name in issue to FIFA.

The Respondent's attorneys responded by email on October 11, 2000, referring to almost identical issues regarding other domain names in arbitration and suggesting that both parties take no action until the decision in the other administrative proceeding is made. The Panel assumes this to be a reference to Case D2000-0930 referred to above.

6.1. The Policy, paragraph 4(a), provides that the Complainants must prove each of the following:

6.2 Identical or Confusingly Similar

6.2.1 The Complainants' Case

Case	Domain Name in Issue	Complainant's Trademark
D2000-0123	"buyserta.com"	SERTA
D2000-0435	"olympiconlinestore.com"	OLYMPIC
D2000-0494	"buyguerlain.com"	GUERLAIN
D2000-0826	"betwilliamhill.net"	WILLIAM HILL
D2000-0878	"canoninkjet.com"	CANON
D2000-1126	"buychanel.com"	CHANEL

In each of these Decisions the generic descriptor was held not to avoid confusing similarity with the Complainant's trademark.

"finalfourtickets.net";
"finalfour-tickets.com";
"finalfour-tickets.net";
"ncaatickets.org"; and
"finalfourticketsforsale.com"

wherein the Panel concluded:

"Halpern and Front & Center expect consumers to recognise the marks NCAA and FINAL FOUR and as a result visit their sites. It is highly likely that anyone interested in acquiring tickets via the Internet to an NCAA event, and more specifically to the Final Four collegiate basketball tournament, would start a search with NCAA or FINAL FOUR. A searcher may well expect tickets to be used by NCAA in connection with its marks. The record here is more than sufficient to support the conclusion of identity or confusing similarity under paragraph 4a(i)."

The above finding was made, notwithstanding the fact that, as in this administrative proceeding, the Respondent's website carried a Disclaimer:

"The National Collegiate Athletic Association (NCAA)® has neither licensed nor endorsed Front & Center Entertainment Group to sell goods and services in conjunction with NCAA Championships."

6.2.2 The Respondent's Case

The Respondent's case is as follows:

The Plaintiff held registered US trademarks for PLAYBOY: PLAYMATE: PLAYMATE OF THE MONTH; and PLAYMATE OF THE YEAR. Although sometimes the latter registration was abbreviated to PMOY, the Plaintiff had no registration for that abbreviation. The Plaintiff nevertheless contended that it owned common law trademark rights in PMOY.

The Defendant, formerly Playmate of the Year 1981, operated a website under the domain name "www.terriwelles.com", the website being headed Terri Welles Playmate of the Year 1981. Each page of the website used as a background watermark the abbreviation PMOY'81. The court held that this constituted fair use under the US Statute because;

The Court denied the Plaintiff the preliminary injunction sought, finding that

"… there is not a strong likelihood of success on the merits."

The Court characterised fair use as a defence which;

"… in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and to prevent others from accurately describing a characteristic of their goods."

It cited Justice Holmes in Prestonettes .v. Coty 264 US 359, 368 (1924)

"When the mark is used in a way that does not deceive the public we see no sanctity in the word as to prevent it being used to tell the truth. It is not taboo."

6.3 Rights or Legitimate Interests

6.3.1 The Policy paragraph 4(c) provides that any of the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii);

(i) before any notice to you of the dispute, your use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.

6.3.2 The Complainants' Case

The Complainants' case is as follows:

• The Complainants have not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks,. The Complainants cite the Decision in The Stanley Works and Stanley Logistics Inc .v. Camp Creek Co Inc D2000-0113.

In that case the disputed domain names were "stanleybostich.com" and variants incorporating the trademarks BOSTITCH and STANLEY and "bostitch.net" and variants of the BOSTITCH trademark. Both marks had been in use by the Complainant for over 70 years. The Respondent used the domain names in issue for websites at which the Respondent offered to sell certain STANLEY BOSTITCH products, having been [according to the Respondent] an authorised retailer for such products since 1991. In fact, the Panel found little evidence that the Respondent was an authorised retailer. As to paragraph 4(a)(ii) of the Policy, the Panel held:

Moreover, even if Respondent is a retail seller of Complainant's products, the collateral trademark use necessary to allow resell of Complainant's products is not enough to give Respondent proprietary rights in Complainant's trademarks, and certainly not enough to confer the right to use these trademarks as domain names. Many famous trademarks designate goods that are manufactured and sold through numerous retail stores. But this, without something more such as authorisation in a licensing agreement or other special circumstance, does not give the retail sellers rights of domain name magnitude over the manufacturer's trademarks.

The Respondent also cites Cases D2000-0435; D2000-0494; and D2000-0878 as sustaining that position [see above].

In that Case the Panel referred to the Decision in Stanley Works as instructive in terms of its approach to paragraph 4(a)(ii) of the Policy. The Panel then went on to hold:

Halpern and Front & Center clearly intend to attract customers to their primary websites for the purposes of commercial gain. They intend to do so by taking commercial advantage of the goodwill associated with the NCAA marks which forms part of their domain names. It is difficult to believe that consumers are not misled by this use of the NCAA marks. Halpern and Front & Center expect consumers looking for NCAA tickets to be led to the Halpern and Front & Center sites simply because of the inclusion of the NCAA marks in the domain names in issue. Such customers are necessarily misled by those domain names because they are not directed to an authorised NCAA site, but rather to Halpern and Front & Center's primary sites, where NCAA tickets are offered without authorisation from NCAA and where other tickets, goods and services are offered.

….

Halpern and Front & Center's use of the NCAA and FINAL FOUR marks in the domain names in issue is commercial, is not authorised, and is with the intent to divert consumers to the Halpern and Front & Center primary sites which offer not only NCAA tickets but also other goods and services not sanctioned by NCAA. Thus, consumers are misled.

6.3.3 The Respondent's Case

The Respondent's case is that it has a legitimate interest in the domain name in issue as evidenced by its use of that name to identify the tickets and service sold and delivered by them. The Respondent is selling items originated by FIFA and is using the FIFA trademark to identify the source of the items.

In this respect, the Respondent cites Adaptive Molecular Technologies .v. Priscilla Woodward, Case D2000-0006. In that case, the domain name in issue was "militec.com" and the Complainant was the owner of a US registered trademark for MILITEC and logo for lubricants in Classes 1 & 4, together with corresponding registered trademarks for the mark MILITEC-1 in many other countries worldwide.

The Respondent was selling genuine bottles of the Complainant's MILITEC-1 metal conditioner offered at its "militec-1.com" website, the only content of that website being to promote the product. The website clearly stated;

This Site is Owned & Operated by Machines & More

The Panel held that the Complainant failed to satisfy the requirements of paragraph 4(a)(ii) of the Policy, stating

Under these circumstances and on this record, it cannot be concluded that Respondent has no rights or legitimate interests in the domain as is required under the Policy. While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant has legally acquiesced in Respondent's registration and use of the domain, at least initially or whether Respondent's use is nominative fair use. Acquiescence and fair use are principles of trademarks law, each requiring full analysis of the underlying facts. These are issues for the Courts.

The Respondents in the NCAA Case [Case D2000-0700 referred to above] also relied upon the Decision in Case D2000-0006 in support of both its fair use and lack of bad faith defences. In its Decision in the NCAA Case the Panel preferred to follow the Panel in the Stanley Case.

6.4 Registered and Used in Bad Faith

6.4.1 Paragraph 4(b) of the Policy sets out circumstances which, 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 you have registered or you have 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-expenses directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, application, or endorsement of your website or location or of a product or service on your website or location.

6.4.2 The Complainant's Case

The Complainant's case is as follows:

adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names [Compagnie de Saint Gobain .v. Com-Union Corp Case D2000-0020]

The similarities between GUERLAIN and the domain name cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his company and his online store he precisely chose a domain name incorporating Complainant's name so as to be identical or at least extremely confusingly similar to Complainant's trademark. By knowingly choosing a domain name consisting of Complainant's trademark preceded by the verb "to buy", Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.

On balance, however, the record here shows that likelihood of confusion is what Halpern and Front & Center count on.

…

Overkill in registering domain names incorporating well-known trademarks for commercial purposes logically leads to an inference of bad faith registration and use.

Halpern and Front & Center's conclusory contentions that their consumers are sophisticated and know they must go to a ticket reseller for hard to find and premium NCAA tickets are not dispositive on the issue of likelihood of confusion as to source or endorsement of their websites incorporating the NCAA and FINAL FOUR marks … . Not until a consumer searches on one of the domain names in issue and actually visits the site associated with the domain name, will the consumer learn that the site is not an authorised NCAA site, or is no site at all. Indeed, the consumer will be channelled to Halpern's and Front & Centre's primary sites - not to an authorised NCAA site.

Initial confusion is enough to demonstrate bad faith under paragraph 4b(iv). Initial attraction is what Halpern and Front & Center are counting on. Consumers are likely to be drawn to Halpern's and Front & Center's FINALFOURTICKETS.NET in the belief that Final Four tickets will be transferred.

6.4.3 The Respondent's Case

The Respondent's case is as follows:

The Respondent had registered over 50 domain names, virtually all of which were descriptive or generic in nature. It was a start-up web development company. Although the domain names at issue did not all resolve to active websites, the Respondent had developed 6 websites and planned to develop more. The Respondent claimed that the Complainant's trademark was phonetically identical to polyester and that Polly and Esther are common first names. Moreover, it was the nickname for a member of the Respondent's family.

Held, that the first 2 limbs of paragraph 4(a) of the Policy were satisfied by the Complainant but that the third limb - bad faith registration and use - was not.

In this case, the Panel finds that where (1) the trademarks and service marks asserted by the Complainant are weak and where they are homophones of a generic term, (2) the domain names registered by the Respondent are generic or descriptive terms, rather than obvious trademarks or service marks, (3) the Respondent is already making use of some of the domain names it registered … the Complainant has failed to prove that Respondent's inaction constitutes bad faith registration and use of the domain names in issue.

The Case is authority for the proposition that in relation to the 3 limbs of paragraph 4(a) of the Policy, it is for the Complainant to prove that each of the elements are present. But,

a Panel is not required to blindly accept assertions offered by a Respondent, any more than it is required to accept unsupported assertions offered by a Complainant. It is especially important under this procedure to test Respondent's assertions for evidentiary support and credibility, since normally the Complainant has no opportunity to counter the Respondents assertions, while the Respondent does have the opportunity to counter those of the Complainant.

bad faith intent … shall not be found in any case in which the court determines that a person believed that the use of the domain name was a fair use or otherwise lawful.

The Respondent relies upon the Playboy case discussed above and asserts that, on the facts of this case, it has a complete defence under paragraph 4(b) of the Policy because

- the domain name in issue was used by the Respondent to promote the resale of tickets to FIFA events prior to the notice of dispute from the Complainants,

- so that such use is fair use for the purposes of paragraph 4(a)(ii) of the Policy, applying paragraph 4c(i) of the Policy. Further,

- the Respondent has not offered to sell the domain name in issue to the Complainants at an over value [paragraph 4b(i) of the Policy];

- the Respondent did not register the domain name in order to prevent FIFA from reflecting its trademark in a corresponding domain name [paragraph 4b(ii) of the Policy]; nor

- has the Respondent interfered with use of the FIFA trademark by the Complainants [presumably, paragraphs 4(b)(iii) and/or (iv) of the Policy].

6.5 Findings under paragraph 4a(i) Policy : identical or confusingly similar

6.5.1 The Respondent does not contest that the Complainants' have rights in the FIFA trademark.

6.5.2 The Panel considers that the domain name in issue is, to all intents and purposes, identical to the Complainants' FIFA trademark. The suffix tickets is merely a descriptor. The Respondent has taken the trademark. That it has added a descriptive suffix does not change the fact that the domain name in issue incorporates the FIFA trademark in its entirety.

6.5.3 In any event, the Panel also finds that the domain name in issue is confusingly similar to the FIFA trademark and finds the Decisions under the UDRP cited above to be persuasive.

6.5.4 As to the Playmate case upon which the Respondent relies in support of its contention that their use of the domain name is legitimate fair use under US law, the Panel's view is as follows:

A Panel shall decide a 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 [Rules, paragraph 15(a)].

… a strong likelihood of success on the merits …

at trial, it has to be seen for what it was, namely a Decision applying the criteria applicable to adjudicating on motions for preliminary relief.

The Plaintiff's two websites used the domain names

" www.playboy.com"; and

That was a true description of Ms Welles' identity.

and the website offering tickets to events staged by FIFA used the trademark solely to describe the tickets as such.

Held, that a party can make use of a third party trademark only where necessary to indicate the origin of the goods or services. Such was fair use. It was not fair use to advertise the business as "BMW Specialist" when this was not necessary and could well be understood as indicating that Mr Deenik was an authorised BMW Distributor / Repairer, which he was not.

The trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,

…

(b) indicators concerning the kind … intended purpose … of rendering of a service, or other characteristics of goods or services;

(c) the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts;

provided that he uses them in accordance with honest practises in industrial or commercial matters.

· Held, that it was contrary to Art. 7 for the proprietor of a mark to prohibit the use of its mark to advertise specialisation in the sale of second-hand vehicles bearing the mark, provided that the manner in which the mark was used did not give rise for a legitimate reason for opposition under the above proviso - namely, the use must be in accordance with honest practises in industrial or commercial matters. Use of the mark suggesting a commercial connection between the advertiser and the mark's proprietor was capable of constituting such a legitimate reason for opposition. Whether in fact such a suggestion was created was a matter of fact for the National Court to decide. The mere fact that the use of a mark in otherwise honest and fair advertising lent an aura of quality to the advertiser's business did not constitute a reason for opposition.

"www.rolex.dk"

Mr Fogtmann's homepage read, inter alia,

We have always got DENMARK'S LARGEST selection of prestigious Swiss quality watches. John Fogtmann is Denmark's largest reseller of second-hand Rolex watches.

It also contained the following Disclaimer:

Rolex.dk is not in any way affiliated with the Swiss company, Montres Rolex SA.

Held, use by Fogtmann of the domain name in issue amounted to infringement of the ROLEX trademark, precisely as the Court of Justice had held that Deenik's use of the BMW mark constituted a trademark infringement. Fogtmann's use also contravened proper marketing practices because it gave an incorrect impression of his relationship to the business of Montres Rolex, such that his business might be confused with that of Montres Rolex or incorrectly linked to it, his only reason for using the ROLEX name and mark being to exploit the reputation attached to it. The Court did not consider that the Disclaimer of affiliation on Fogtmann's homepage was effective because the domain name operated as a key and shop front on the Internet which aroused commercial interest of would-be consumers with his business. The Court duly injuncted Fogtmann from continued use of the rolex.dk domain name.

6.5.5 In the Panel's view, this is a simple and straightforward issue. The Respondent can re-sell genuine tickets subject to local laws. The Panel makes no finding as to whether the Respondent's offer for sale and sale of FIFA tickets contravenes the terms and conditions of the sale of those tickets and/or local laws. Such finding is not necessary to this Decision.

6.5.6 The Respondent can refer to the FIFA mark to describe genuine tickets. But, importantly, this can be accomplished through, as here, a website bearing a non-infringing title - WESTERN STATES TICKET SERVICE - and using a generic or other domain name that does not infringe the Complainants' trademarks. Is this hopelessly impractical? Not at all. As with any other commercial enterprise, a website owner is able to advertise its goods and services. There is no need to piggyback on a trademark owner's investment and rights in his trademark. The Complainants' have satisfied the requirements of paragraph 4a(i) of the Policy.

6.6 Findings under paragraph 4a(ii) Policy: rights or legitimate interests

6.6.1 The Stanley Works and Adaptive Molecular Technologies Decisions under the UDRP are at odds with each other. This Panel finds the Panel's reasoning in Stanley Works both more persuasive and more apposite to this administrative proceeding. It is also consistent with the Decisions in the NCAA and BUYSERTA cases, which the Panel also finds persuasive and in point.

6.6.2 In any event, the Adaptive Molecular Technologies case can in this Panel's opinion, be distinguished upon the bases that, by comparison, in this case there is no suggestion of acquiescence by the Complainants to use of the trademark; that here there is no fair use of the type found by the US Court to apply in the Playmate case; and that it has not been followed or applied in a number of Decisions under the UDRP including the Stanley Works and NCAA cases, both of which this Panel finds well reasoned and convincing.

6.6.3 Because the Panel does not consider the Respondent's use of the FIFA trademark as a domain name to constitute fair use, the offering of goods through that domain name is not bona fide either. The Respondent does not satisfy any of the circumstances of paragraph 4(c) of the Policy.

6.6.4 Consequently, in the Panel's view the Respondent has failed to show rights or legitimate interests in the domain name in issue.

6.7 Findings under paragraph 4a(iii) Policy: registration and use in bad faith

6.7.1 The Panel has no quarrel with the Decision in the Do the Hustle case as to where the burden of evidence lies and how that evidence is to be assessed. As to the outcome of that Decision, it can readily be distinguished from this administrative proceeding on the ground that here FIFA is a well-known mark and on other substantial differences of fact.

6.7.2 The Panel finds the quoted extract from the Findings in the Guerlain case both persuasive and applicable to the facts in this administrative proceeding. As established in the Telstra case [D2000-0003] and followed consistently in subsequent Decisions under the Policy, the examples in paragraph 4(b) of the Policy are intended to be illustrative, rather than conclusive of bad faith registration and use. The considerations held to be relevant in the NCAA case quoted above apply with equal force to the facts in this administrative proceeding.

6.7.3 The Panel does not find the Respondent's Disclaimer effective for the purposes of either paragraph 4(a)(i) or 4(a)(iii) of the Policy. It is tantamount to committing a tortuous act but then seeking to avoid liability after the event. It is only by unauthorised use of the trademark that the potential customer is brought to the website (containing the disclaimer) in the first place. In the NCAA case the Panellist correctly found that the disclaimer failed to avoid confusing similarity or to negative unauthorised use of the NCAA and FINAL FOUR trademarks.

6.7.4 For the reasons identified above, the Panel does not find that the Playmate case applies to the facts of this administrative proceeding or that the Respondent's use of the FIFA trademark as a domain name is fair use or bona fide use in any event.

6.7.5 In the Panel's view the domain name in issue was registered and is being used in bad faith.

6.8 Case D2000-0903

The Respondents are able to conduct their business without using the NCAA trademark.

The majority of the Panel were persuaded by the Panel Decision in Adaptive Molecular Technologies [Case D2000-0006] and found that the Respondents succeeded in bringing themselves within the criteria of paragraph 4(c)(iii) of the Policy. The Respondents' use of the NCAA trademarks was a fair use because the NCAA is identified as the source of the tickets and any relationship between the NCAA and the Respondents was disclaimed. This Panel finds that somewhat at odds with the Panel's finding that

"… because the phrases "seats" and "tickets" are readily identifiable with sporting events, their addition to the entirety of the trademarks may not prevent confusion among users." [Emphasis added]

It seems to this Panel that such possibility of confusion does not sit readily with making legitimate fair use.

For all the foregoing reasons, the Panel finds that the Complainants have succeeded in establishing the 3 requirements of paragraph 4(a) of the Policy and directs that the domain name in issue "fifatickets.com" be transferred to the Complainant, FIFA.

David Perkins
Panellist

Dated: March 23, 2001

1. IR 633,108 covers 36 countries including France, Germany, Benelux, China, Egypt, Spain, Poland, Italy, Portugal etc.