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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tottenham Hotspur plc v. Kirsch Securities Ltd

Case No. D2003-0363

 

1. The Parties

The Complainant is Tottenham Hotspur plc of London, United Kingdom

The Respondent is Kirsch Securities Ltd of Middlesex, United Kingdom

 

2. The Domain Name and Registrar

The disputed domain name <tottenhamhotspur.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2003. On May 13, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 13, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 5, 2003.

The Center appointed David Perkins as the sole panelist in this matter on June 17, 2003. 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

4.1 The Complainant

4.1.1 The Complainant operates the well-known English football (soccer) club TOTTENHAM HOTSPUR. The club was founded in 1882, as the Hotspur Football Club and in 1884 was renamed Tottenham Hotspur Football Club.

4.2 The TOTTENHAM HOTSPUR registered trademarks

The Complainant is the registered proprietor of United Kingdom Trademark No. 1,199,577 for the words TOTTENHAM HOTSPUR in Classes 6: 14: 16: 18: 20: 21: 24: 25 and 28. That mark has been registered with effect from 1983. This is a merged registration for marks separately registered for each of the classes of goods, all dating from 1983. The Complaint states that trademark applications for TOTTENHAM HOTSPUR are pending in the European Community, Korea, Japan, the United States of America and Canada.

4.3 Reputation in the TOTTENHAM HOTSPUR mark

The Club plays in the United Kingdom Football Association’s Premier League. It has won both English National and European competitions on numerous occasions. It is well-known in football playing countries worldwide. The Complainant’s website at <www.spurs.co.uk> launched in July 1996, currently receives over 3 million page hits a month. The Complainant also sells under the TOTTENHAM HOTSPUR brand a range of goods and services including clothing, badges, credit cards, travel to away matches in TOTTENHAM HOTSPUR branded coaches, glasses, lighters, umbrellas, soft toys, stationery, confectionery, books and audio visual products about TOTTENHAM HOTSPUR. In 2002, the value of this merchandise exceeded Ј1.7 million.

4.4 The Respondent

4.4.1 The Respondent appears to be a property [real estate] company. The domain name in issue was registered on December 17, 1999.

4.4.2 In the absence of a Response, the only additional information relating to the Respondent is contained in the Complaint and in correspondence with Mr. Brian Kirsch exhibited to the Complaint. Mr. Kirsch would appear to be the principal of the Respondent company. He is also the Administrative Contact for the domain name in issue.

4.4.3 According to the Complaint, as at December 2001, the domain name in issue resolved to a website for Webcreation. The home page for that website exhibited to the Complaint reads:

Webcreation

Within five years, one billion people will do five billion pounds worth of business on the internet. If you are looking for a quality customer website at a sensible price then look no further We offer a comprehensive and efficient service to get your business on the Web.

The Complaint states that subsequent to that date, presumably as a result of the correspondence between the parties [paragraph 4.3 below], the domain name in issue no longer resolves to the Webcreation website and currently does not appear to be used. That website can now be accessed through the <disneyland-paris.com> domain name, which was registered by Mr. Brian Kirsch on December 10, 1998, who is also listed in the WHOIS Search as the Administrative Contact.

4.5 Correspondence between the Parties

The correspondence exhibited to the Complaint can be summarized as follows:

August 24, 2001:

IDR Ltd [agents on behalf of the Complainant] contacted Mr. Kirsch personally requesting transfer of the domain name in issue and offering to meet the costs related to such transfer.

July 2002:

The Complainant’s solicitors instructed a firm of Private Investigators, .com investigations [a division of Carratu International plc], to establish the identity of the individual or business underlying the Registration and the potential uses (if any) of the domain name which the Registrant might intend to conduct. This involved a series of emails over the period of July 4 – 8, 2002. Those involved were Richard Carrington [of .com investigations], Jeremy Freeman [Managing Director of Bamps Ltd] and Mr. Brian Kirsch.

Mr. Carrington addressed his opening email of July 4, 2002, to Mr. Kirsch at the email address given by Mr. Kirsch as Administrative Contact for his <disneyland-paris.com> domain name Mr. Carrington posed as a Tottenham Hotspur fan interested in buying the domain name in issue for the purpose of using it for a fan site. Mr. Freeman replied stating:

"My client has no intention of selling this domain."

Mr. Kirsch subsequently emailed Mr. Carrington stating:

"… you are welcome to make me an offer."

Mr. Carrington offered Ј500 - Ј700, which Mr. Kirsch described as "laughable". Mr. Carrington then increased his offer to Ј3,000.00 and, later, to Ј5,000.00. Mr. Kirsch replied:

"I have never advertised the site for sale nor do I particularly wish to sell the name unless what I consider is too good a price to turn down."

Adding that he had already rejected another offer to purchase the domain name in issue for Ј8,500.00 but saying that he would accept Ј15,000.00. Mr. Carrington took the matter no further.

September 2002 to January 2003:

The Complainant’s solicitors wrote a cease and desist letter to Mr. Kirsch on September 26, 2002, seeking transfer of the domain name in issue and various undertakings.

The Respondent’s solicitors [Whitehorns] replied on November 12, 2002, denying trademark infringement, passing off or the suggestion made in the cease and desist letter that the domain name had been registered or used in bad faith. In material part, Whitehorn’s letter stated:

"It is accepted that my clients are the owners of the above domain name but it is not (as you seem to allege) true that my clients have offered the name for sale, nor invited offers. Indeed the purpose of the purchase was as a gift to one of the director’s sons; himself a keen Spurs supporter, with the intention of using it as a personal internet address.

Someone (your agent I presume) approached my client and made, I am told, two offers which my clients refused. I am instructed that no offer was made to sell the domain name for Ј15,000, and that such figure was mentioned only with the intention of dissuading your correspondent from pestering my clients further."

The Complainant’s solicitors responded that this version of events was inconsistent with previous use of the domain name issue for the Webcreation website. They also pointed to Mr. Kirsch and the Respondent being registrants of two other domain names incorporating well-known trade marks, namely <disneyland-paris.com> [Mr. Kirsch] and <thefacupfinal.com> [the Respondent]

On the Respondent’s headed notepaper Mr. Kirsch replied in the following terms:

"Your Clients were free to register the above dotcom as recently as 3 years ago but instead chose to use spurs.co.uk. They obviously felt that there was no need to register the dotcom as above and did not even secure their trading name so that nobody else could take it. This mistake on the part of Tottenham Hotspur is just that, A MISTAKE.

When I found that the name was available I took it and as a lifelong Spurs supporter was very proud to own the name. I have never traded the fact that I own this name and resent your suggestions that have ever sought to profit by the ownership."

This was followed by rejection of the Complainant’s request for transfer of the domain name and undertakings and ended:

"I will however ensure that the Press is made aware of these threats by Tottenham Hotspur in trying to force a fan into submission."

This, effectively, terminated the correspondence and this Complaint was filed some 4 months later in May 2003.

 

5. Parties’ Contentions

5.1 Complainant

5.1.2 Identical or Confusingly Similar

The domain name in issue is identical to the TOTTENHAM HOTSPUR trademark, save for the .com suffix, which is irrelevant in terms of meeting the requirements of paragraph 4(a)(i) of the Policy.

5.1.3 Rights or Legitimate Interests

The Complainant’s case is as follows:

- The Respondent is not licensed or otherwise authorised by the Complainant to use the TOTTENHAM HOTSPUR trademark.

- The Respondent is not commonly known by the domain name in issue.

- Before notice of this dispute, the Respondent did not use or make demonstrable preparations to use the TOTTENHAM HOTSPUR mark in connection with a bona fide offering of goods or services.

- The Respondent’s story that the domain name was intended as a gift for one of his sons, a keen supporter of the Football Club, for use as a personal internet address is contradicted by the unauthorised commercial use made in relation to Webcreation website [paragraphs 4.2.3 and 4.3 above].

- Further, no evidence has been provided by the Respondent of any use or preparations to use the domain name in issue as an internet address.

Still further, use of a third party trademark as a domain name for an unauthorised fan football club website does not amount to a bona fide offering of services or a fair use [Juventus F.C. S.p.a v Claudio Sacco Interactive, WIPO Case No. D2001-0260].

5.1.3 Registered and used in Bad Faith

The Complainant’s case is as follows:

- Because of the notoriety of the TOTTENHAM HOTSPUR trademark, including the registered mark dating from 1983, and by reason of his being "a lifelong Spurs supporter" [see, paragraph 4.3 above], the Respondent and Mr. Kirsch were obviously well aware that that mark referred to the Complainant.

- Use of the domain name in issue for the Webcreation website was to attract Internet users to that website for commercial gain and clearly amounted to trading off the very considerable reputation of the Complainant’s TOTTENHAM HOTSPUR trademark.

- Registration by the Respondent / Mr. Kirsch of the domain name in issue, coupled with the <disneyland-paris.com> and <thefacupfinal.com> domain names, is evidence of a pattern of conduct designed to prevent the owners of those trademarks from reflecting those marks in corresponding domain names. As such it amounts to registration in bad faith.

- The fact that the Respondent has no rights or legitimate interests in respect of the domain name is also indicative of registration in bad faith.

- Further, having regard to the email exchange [see, paragraph 4.3 above], it is plain that the domain name in issue was registered primarily for the purpose of selling it to the Complainant trademark owner for a sum greatly in excess [for example, Ј15,000.00] of the out of pocket costs directly related to that domain name.

- Finally, the present non-use of the domain name can amount to bad faith use if circumstances of the type indicted in Telstra Corporation v Nuclear Marshmallows, WIPO Case No. D2000-0003 apply. Inaction in the form of a passive holding of a domain name can amount to bad faith use depending upon the facts of the case. Examples of circumstances indicating such bad faith can include the fact that the Complainant’s trademark has a strong reputation and is well known, failure by the Respondent to provide credible evidence of any actual or contemplated good faith use, and where it is not possible to conceive of any plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate. Furthermore, the fact of taking down the original Webcreations website does not expiate prior bad faith use [Ingersoll-Rand Co. v Frank Gurry, WIPO Case No. D2000-0021].

5.2 Respondent

In the absence of a Response, the Panel must look at the Respondent’s assertions made in the Correspondence. These have been identified in paragraph 4.3 above. They are:

- The domain name in issue was acquired for one of Mr. Kirsch’s sons, a fan of the football club, for use as an internet address.
- The domain name was not acquired with a view to selling it, whether to the Complainant for an over-value or at all.
- The Respondent never offered to sell the domain name for Ј15,000.00. Mr. Kirsch says he has not sought to profit in that way from registration of the domain name.

- The domain name cannot be of any real concern to the Complainant, otherwise they would have registered and used it. Instead, they have registered and used the <spurs.co.uk> domain name.

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Panel agrees with the Complainant that the .com suffix is irrelevant. Hence, the domain name in issue is identical to the Complainant’s TOTTENHAM HOTSPUR trademark and the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.6 In the Panel’s opinion, on the facts the Respondent has not brought itself within any of the circumstances specified in paragraph 4(c) of the Policy. The Panel agrees that where a Complainant makes a prima facie showing that the Respondent lacks a legitimate interest, the burden then shifts to the Respondent to demonstrate rights or such interest [World Wrestling Federation Entertainment v Ringside Collectibles, WIPO Case No. D2000-1306] and F.C. Bayern München v Miguel Garcia, WIPO Case No. D2000-1773].

6.7 Here, the Panel is satisfied that such a prima facie showing has been made. The Panel does not regard discontinued use of the domain name in issue for the Webcreation website a bona fide offering of services within paragraph 4(c)(i) of the Policy. The knowledge of Mr. Kirsch of the reputation and activities of the Complainant under the TOTTENHAM HOTSPUR trademark must clearly be imputed to the Respondent. There is nothing to suggest that Mr. Kirsch is other than the alter ego of the Respondent. The fact that the Complainant used the domain name <spurs.co.uk> for its website does not legitimise the Respondent’s attempt to hijack their TOTTENHAM HOTSPUR trademark for its own commercial purposes.

6.8 Furthermore, the Respondent has chosen not to respond to this Complaint from which the Panel is entitled to and does draw an adverse inference. In all the circumstances, the Panel finds that the Respondent has failed to show rights or legitimate interest in respect of the domain name in issue and, accordingly, the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.9 On the facts, the Panel takes the view that the Complainant has demonstrated registration and use in bad faith under paragraph 4(b)(iv) of the Policy. This is by reason of the Respondent’s use of the domain name for commercial gain in relation to the Webcreation website, which can only be construed as a blatant attempt to take advantage of the well-known TOTTENHAM HOTSPUR trademark and the inevitability that this would create a likelihood of association with the Complainant’s Football Club.

6.10 Does the Complaint established a pattern of conduct as required by paragraph 4(b)(ii) of the Policy? Registration by Mr. Kirsch of <disney-paris.com> might, on its own, have been insufficient evidence of such a pattern. However, given the facts of this dispute as a whole, the Panel would tend towards a finding in favour of the Complainant under this provision of the Policy. But, given the Panel’s finding in paragraphs 6.9 and 6.12 of this Decision, it is not necessary to come to a decision on this point.

6.11 As to paragraph 4(b)(i) of the Policy there is a conflict of evidence The Complainant points to the Respondent’s willingness to sell the domain name for Ј15,000.00 [see, paragraph 4.3 above]. The Respondent says he did not register the domain name with the intention of selling and he only advanced the Ј15,000.00 figure with the intention of dissuading Mr. Carrington from pestering him any further [Whitehorn’s letter of November 12, 2002]. Then in a later letter [letter dated December 18, 2001] Mr. Kirsch himself took a somewhat contradictory position when he stated that he considered Ј15,000.00 to be the appropriate value of the domain name:

"Finally, as a Property Dealer I have spent my life dealing with values of property and by suggesting that Ј15,000 was my price I only sought to establish what someone else was prepared to pay."

6.12 As noted by the Panellist (Sir Ian Barker Q.C.) in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co., WIPO Case No. D2000-0163, the Respondent’s offer to treat with persons with a "property interest" in the domain name there in issue was "powerful evidence of bad faith". Also, as stated in Educational Tertiary Service v Toefl, WIPO Case No. D2000-0004 cited by Sir Ian in the Veuve Clicquot case:

"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimisation might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make or has made any legitimate use of Complainant’s trademark in connection with the domain name at issue."

6.13 Although in that case, the Respondent clearly stated in its website its intention to sell domain names for a profit, the principle of the Respondent being prepared to treat with the Complainant trademark owner, in effect, to buy back its own rights is, in the Panel’s opinion, strongly indicative of bad faith. Again, the Panel would tend to find in favour of the Complainant under this provision of the Policy.

6.14 Finally, as noted, the circumstances set out in paragraph 4(b) of the Policy are not exhaustive of the acts which can give rise to a holding of bad faith registration and use [see the Telstra case (supra)]. Added to the circumstances advanced in the Complaint [see, paragraph 5.1.4 (final bullet point)], there is, again, the fact that the Respondent has not chosen to defend this Complaint by filing a Response.

6.15 In all the circumstances, the Panel find that the domain name in issue was registered and is being used in bad faith and, accordingly, the Complaint meets the requirements of paragraph 4(a)(iii) 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 domain name <tottenhamhotspur.com> be transferred to the Complainant.

 

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David Perkins
Sole Panelist

Dated: June 23, 2003