Country	Registration No.	Mark	Class of Goods & Services	Dates of Application and Registration
United Kingdom	2,362,047	BARCLAYS PREMIERSHIP	9,14,16,18, 24, 25, 26, 28, 32, 35, 28, 41 and 43	Applied for April 28, 2004 Registration pending
Community Trade Mark	3,8903,194	BARCLAYS PREMIERSHIP	9,14,16,18, 24, 25, 26, 28, 32, 35, 28, 41 and 43	Applied for April 29, 2004 Registered on January 18, 2006

The “Premier League” domain name

5.A.6 Since, August 23, 2002 the Complainant has operated a website at <www.premierleague.com>.

The dispute with Felix Moffatt (aka James McKeown)

5.A.7 The disputed domain name was registered on February 20, 2005. From October 2005 until November 2007 that domain name was owned by Felix Moffatt (aka James McKeown).

5.A.8 The website to which the disputed domain name resolved provided a subscription service enabling subscribers to view unauthorized and illegal peer to peer streams of, inter alia, ESPN Broadcast of matches in the Competition. In 2007 the Complainant brought proceedings in the English High Court against Mr. Moffatt in respect of both the disputed domain name and the website at “www.premiershiplive.net”.

5.A.9 The Complaint exhibits an Order made by Mr. Justice Mann on February 27, 2008 in that action. That Order provided, inter alia, an injunction against Mr. Moffatt, whether acting by himself, his servants or agents or otherwise howsoever, from using the name and mark PREMIERSHIPLIVE in the course of trade in respect of streaming English Premier League football match; paragraph 3.6 of the Order. Paragraph 5 of the Order further provided that by March 12, 2008, M. Moffatt assign the disputed domain name to the Complainant.

5.A.10 However, prior to that Order, on November 1, 2007, the Respondent had transferred the disputed domain name to Marko Oleksiy of Spasskaya, Kiev, Ukraine. Then, on March 9, 2008 the disputed domain name was transferred to the Respondent.

5.B Respondent

5.B.1 As noted, no Response was filed in due time

5.B.2 Further, a request made on May 21, 2008 by the former registrant of the disputed domain name for an extension of time within which to file a Response has been refused by this Panel.

6. Parties Contentions

6.A. Complainant

Identical or Confusingly Similar

6.A.1 The Complainant relies on the registered trademarks BARCLAYS PREMIERSHIP set out in paragraph 5.A.5 above, which are jointly owned by itself and Barclays Bank PLC.

6.A.2 Complainant’s case is that the disputed domain name, the relevant part of which is “premiershiplive”, is confusingly similar to those registered trademarks. The Complainant advances two arguments in support of that assertion.

6.A.3 First, both the disputed domain name and the registered trademark include the word “premiership”. The Complainant says that the suffix “live” in the disputed domain name is non-distinctive and, accordingly, for the purpose of considering confusing similarity should be disregarded.

6.A.4 Second, the Complainant says that the fact the disputed domain name resolves to a website showing unauthorized peer to peer streaming of the Complainant’s Premier League football matches suggests a connection with the Complainant. This the Complainant says gives Internet users the impression that the Respondent’s services are sponsored by, endorsed by or affiliated with the Complainant. This false sense of origin was, the Complainant says, clearly chosen by the Respondent to take advantage of the goodwill associated with the Complainant’s BARCLAYS PREMIERSHIP trademark.

6.A.5 The Complaint then cites a number of decisions under the Policy in support of its case on confusing similarity. They are:

6.A.5.1 Microsoft Corporation v. J Holiday Co., WIPO Case No. D2000-1492 where the disputed domain name was <4microsoft2000.com>. Confusing similarity was found because that domain name included the entirety of the Complainant’s MICROSOFT trademark. The Panel in that case cited ISL Marketing AG et al v. J Y Chung et al, WIPO Case No. D2000-0034 where 13 of the 15 disputed domain names included “worldcup” – for example <worldcup2002.com> and thereby included the entirety of the Complainant’s WORLDCUP trademark. Also cited was The Price Company v. Price Club, WIPO Case No. D2000-0664 where one of the disputed domain names was <priceclub200.com>, which again included the entirety of the Complainant’s PRICE CLUB mark.

6.A.5.2 Wal-Mart Stores, Inc v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662. The disputed domain name <wal-martsucks.com> was held to be confusingly similar to the Complainants WAL-MART trademark by reason of including that mark in its entirety in the domain name. The Panel there said that confusion as to source required in cases of trademark infringement is not the test under paragraph 4(a)(i) of the Policy. The appropriate test under the Policy is to compare the domain name and the trademark, hence the relevance of the disputed domain name including the Complainant’s trademark in its entirety.

6.A.5.3 Telstra Corporation Limited v. Ozurts, WIPO Case No. D2001-0498 where the 15 disputed domain names all included the Complainant’s TELSTRA trademark in combination with a prefix or a suffix, for example <i-telstra.com> and <telstradigital.com> respectively. Confusing similarity was found having regard to the well known status of the TELSTRA mark and the fact that all the disputed domain names incorporated the mark in its entirety. Addition of descriptive words did not avoid such a holding.

6.A.5.4 Nintendo of America, Inc .v Gray West International, WIPO Case No. D2000-1210 where the disputed domain name was <pokemon-games.com> and the Complainant’s trademark was POKEMON. Held, that the addition of the descriptive word “games” did not avoid confusing similarity.

Rights or Legitimate Interests

6.A.6 The Complainant asserts that none of the circumstances demonstrating rights or legitimate interests in the domain name set out in paragraph 4(c) of the Policy are present in this case.

6.A.7 The Complainant points to the website to which the disputed domain name resolves, which the Complainant says contains no information suggesting that the Respondent has a legitimate right to use the term “Premiership”. In that context, the Complainant cites Inter-IKEA Systems AB. v. Eveson Co Ltd, WIPO Case No. D2000-0437. There the disputed domain name was <ikea-korea.com>. The Panel’s decision read:

“In the light of … the facts that (i) the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating its trademark, and (ii) the mark IKEA is not one that the Respondent would legitimately choose in the context of provision of goods or services via a website unless seeking to create an impression of an association with the Complainant, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.”

Registered and Used in Bad Faith

6.A.8 The Complainant relies on paragraph 4(b)(iv) of the Policy and asserts that by its use of the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with its BARCLAYS PREMIERSHIP trademarks as to the source, sponsorship, affiliation or endorsement of that website.

6.A.9 The Complainant says that this is a case where the Respondent cannot use the disputed domain name without violating the Complainant’s rights under applicable law. In that respect, the Complainant relies on the Order of Mann J [see, paragraph 5.A.9 above] as establishing that operation of the Respondent’s website at the disputed domain name amounts to infringement of the Complainant’s trademarks. In such a case, the Complainant submits that bad faith exists even if a respondent has done no more than register the disputed domain name.

6.A.10 Furthermore, because the Complainant says its BARCLAYS PREMIERSHIP trademark is distinctive, the Complainant goes on to say that it is unlikely the Respondent could have registered the disputed domain name in ignorance of that trademark. Hence, the registration must have been made in bad faith. The Complainant cites Veuve Cliquot Pousardry Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 where the panel held

“VEVUECLIQUIOT.ORG is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”

6.A.11 The Complainant also cites Xerox Corp v. Stonybrook Investments Ltd, WIPO Case No. D2001-0380 where the disputed domain name was <zerox.com> and was used in connection with a website offering online gambling. Finding registration and use in bad faith the Panel concluded as follows:

“Furthermore, the panel is of the opinion that the domain names are so obviously connected with the Complainant and its services that their very use by someone with no connection with the Complainant suggests “opportunistic bad faith”.

citing the Veuve Cliquot case referred to in the preceding paragraph.

6.B Respondent

6.B.1 As noted, no Response was filed in due time and the Panel has decided not to admit the purported Response submitted by Mr. Oleksiy on May 22, 2008. However, for the record, the Panel sets out below the assertions made by Mr. Oleksiy.

Identical of Confusingly Similar

6.B.2 Mr. Oleksiy asserts that the Complainant has no relevant trademark for either “premiership” simpliciter or “premiershiplive” either in the form of two separate words or one conjoined word. The two component parts are, he says, both dictionary words, “premiership” a derivative from “premier” and “live”.

6.B.3 Next, Mr. Oleksiy refers to a comparable business to the Respondent’s business, <free-football.tv> operated by Live Sport Network Limited. Because that website processes subscriber payments through an authorized merchant account operated by Barclays Bank Plc, he assumes that Barclays are condoning such use of their trademarks.

6.B.4 Mr. Oleksiy denies that the disputed domain name directs to a website which offers peer-to-peer screening. He also states that the commercial impression conveyed by the disputed domain name is not to create sponsorship, endorsement or affiliation with the Complainant any more than with, for example, The Football League Championship or The Scottish Premier League. He says that use of the Complainant’s name and logo is merely to identify the football matches between clubs in the Premier League. In this respect, the Panel observes that the pages from the Respondent’s website attached to the Complaint advertise not only the Complainant’s Premier League matches but also, for example, Scottish, French, Spanish and Italian League games and UEFA Champions League games. Accordingly, Mr. Oleksiy says that use of the disputed domain name is not an attempt to trade off the Complainant’s trademark.

6.B.5 As to the cases cited by the Complainant, Mr. Oleksiy points to the fact that they all involved distinctive trademarks, for example, POKEMON. By contrast, the words used in this case, “premiership” and “live” are non-distinctive dictionary words. Furthermore, “premiership” is also used for the “Guinness Premiership” professional Rugby League.

Rights and Legitimate Interests

6.B.6 As to rights and legitimate interests, Mr. Oleksiy says that the disputed domain name was purchased from a Domain Parking Business and has been used without dispute from the Complainant since February 2005. It is a bona fide and fair use. The website also provides free content comprising aggregated news, fixtures and results for numerous sports and competitions. Nor he says, is the content of the website unlawful. It provides the same service as other sites where Barclays Bank Plc process subscriber payments, such sites not only including <free-football.tv> but also <oleofootball.com> and <livesportnetwork.com>.

Registered Use in bad Faith

6.B.7 As to registration and use in bad faith, Mr. Oleksiy asserts that, for the reasons set out above, none of the circumstances set out in paragraph 4(b) of the Policy can be said to apply to the facts of this case. Additionally, he says that the Complainant appears to have no issue with the website at <freepremierleague.com> which Mr. Oleksiy points out uses the PREMIERLEAGUE components of the Complainant’s name and has been in operation since 2004.

7. Discussion and Findings

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

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

7.2 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.

7.3 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.

7.4 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 recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

7.5 First, as a co-owner of the BARCLAYS PREMIERSHIP trademark applied for the United Kingdom and registered as a Community Trade Mark, the Complainant has demonstrated that it has rights in that trademark. Mr. Oleksiy’s dissection of the component parts of the disputed domain name (“premiership” and “live”) ignores the fact that the Complainant is the joint owner of a registered Community Trade Mark for the BARCLAYS PREMIERSHIP mark. This is not the forum for a challenge to the validity of that registration.

7.6 There are two elements to the Complainant’s trademark, one being BARCLAYS the well known Bank and the other being PREMIERSHIP. The combination is well known in the United Kingdom and doubtless to football fans in other European countries as indicating the Competition between member Clubs of the Premier League.

7.7 The disputed domain name <premiershiplive.com> comprises the PREMIERSHIP component of the Complainant’s trademark and the suffix “live”. When the disputed domain name is considered in the context of the content of the website to which it resolves, the Panel can appreciate the juxtaposition of the words “premiership” and “live” could quite well lead Internet users to believe that the site was in some way authorized or sponsored by the Complainant. The question is whether the content of a website is relevant in determining confusing similarity.

7.8 The consensus view of Panels is that whether the content of a website is similar to the business of the trademark owner is irrelevant in the finding of confusing similarity: see, the WIPO overview of WIPO Panel Views on selected UDRP Questions <http//www.wipo.int/anc/en/domain/search/overview/index.html>. However, the relevant decisions cited in support of that proposition are quite different from the facts of this case¹ and, although this Panel subscribes in principle to the majority view in the WIPO Overview, that proposition is not in the Panel’s view determinative of likelihood of confusion on the present facts.

7.9 In coming to such view, the Panel has regard to the Order of the English High Court made by Mann J in February 2008; see, paragraph 5.A.9 above. By the terms of that order Mr. Moffatt was enjoined from infringing the Complainant’s registered Community Trade Mark No. E3803194. That is the same as the CTM relied upon by the Complainant in this case; see, paragraph 5.A.5 above. However, having transferred the disputed domain name to the present Respondent in November 2007 Mr. Moffatt had frustrated the subsequent Court Order to transfer the domain name to the Complainant. Nevertheless, the name and mark “premiershiplive” was held to infringe the Complainant’s CTM BARCLAYS PREMIERSHIP.

7.10 In the circumstances, the Panel takes the view that the disputed domain name is confusingly similar to the Complainant’s trademark.

7.11 En passant, the Panel distinguishes the facts of the present case over the Decisions under the Policy cited by the Complaint; see, paragraphs 6.A.51 to 6.A.5.4 above. This is because in each of those Decisions the disputed domain name included the Complainant’s trademark in its entirety. By comparison, in this case the disputed domain name reproduces only the PREMIERSHIP component of the Complainant’s BARCLAYS PREMIERSHIP trademark.

Rights and Legitimate Interests

7.12 The use to which the disputed domain name was put by the Respondent’s predecessor prior to the present Respondent being put on notice of this Complaint – namely, directing to the “www.premiershiplive.com” website – appears to have been found by Mann J to be unlawful. The Complainant has exhibited pages from that website both before and after the Order of Mann J. From those it appears that there has been no change in the content which that Order sought to enjoin in February 2008. Hence, it appears that the present Respondent is continuing to use the disputed domain name for the purpose found by Mann J to be unlawful. Such use cannot, in the circumstances, constitute use of the domain name in connection with bona fide offering of services and, accordingly, the Respondent cannot establish rights to or legitimate interests in the domain name under paragraph 4(c)(i) of the Policy. In relation to Mr. Oleksiy’s submission in paragraph 6.B.3 above, his response exhibits pages from the <free-football.tv> website. However, none appear to the Panel to use the BARCLAYS PREMIERSHIP trademark. Consequently, it is not of relevance to this Complaint.

7.13 There is no evidence that the Respondent has been commonly known by the disputed domain name. Accordingly, paragraph 4(c)(ii) of the Policy does not apply. The fact, as pointed out by Mr. Oleksiy in paragraph 6.B.4 above, that the <premiershiplive.com> website offers viewing of football matches other than those taking place in the Complainant’s Premier League is not a ground relevant to confusing similarity: see, paragraph 7.8 above.

7.14 Nor can the Respondent establish the circumstances of paragraph 4(c)(iii) of the Policy by reason of the Order of Mann J which is contrary to any claim that the disputed domain name is being made legitimate use of, without intent for commercial gain to misleadingly divert consumers. The service offered at the Respondent’s website is a subscription service and accordingly, is for commercial gain. As to misleadingly divert consumers, the Judge has found the Respondent’s use of “premiershiplive” infringes the Complainant’s CTM BARCLAYS PREMIERSHIP.

7.15 In the light of the forgoing, the Complainant succeeds in satisfying the requirement of paragraph 4(a)(ii) of the Policy.

7.16 As to Mr. Oleksiy’s submission in paragraph 6.B.6 above, the question is whether use of the disputed domain name since February 2005 constitutes bona fide use. Mr. Oleksiy says it is not unlawful and that it provides the same service as other sites where Barclays Bank Plc process subscriber payments, such as <free-football.tv> etc. This, however, appears to be directly contrary to the Order of Mann J referred to in paragraph 7.14 above.

Registered and Used in Bad Faith

7.17 The Complainant relies on demonstrating that the circumstances set out in paragraph 4(b)(iv) are present on the facts of this case. As noted in paragraph 6.A.9 above, the Complainant relies upon the Order of Mann J as establishing that operation of the Respondent’s website at the disputed domain name amount to infringement of the Complainant’s BARCLAYS PREMIERSHIP CTM. Hence, under applicable law – in this case, English law – the Respondent cannot lawfully operate the disputed domain name for its website. The Panel agrees that such use is bad faith use.

7.18 As to registration in bad faith, the Panel also agrees that the Respondent’s predecessor could not have registered the disputed domain name bona fide in ignorance of the Complainant’s BARCLAYS PREMIERSHIP trademark. The whole purpose of the Respondent’s registration was clearly to attract Internet users – in this case, football fans – to the website, the operation of which has been enjoined as unlawful by the English High Court. Accordingly, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy. Mr. Oleksiy’s submission in paragraph 6.B.7 above contains nothing to change this conclusion.

8. 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 <premiershiplive.net> be transferred to the Complainant.

David Perkins
Sole Panelist

Date: May 28, 2008

¹ In Arthur Guiness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the Respondent argued that his domain name was not confusingly similar to the GUINNESS trademark because the content of the website to which the disputed domain name resolved – namely, spirits, rugby, soccer, the Irish and Celtic culture – was quite different to the products sold by the Complainant under the GUINNESS mark. Held, this was not a relevant factor in terms of considering what amounts to confusing similarity under the Policy.

In Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty, Ltd. WIPO Case No. D2001-0110, the ANSELL trademark was used for condoms. The domain name in issue <ansellcondoms.com> was found to be confusingly similar.

In Dixons Group Plc v. Mr. Abu Abdullah, WIPO Case No. D2001-0843, the disputed domains <dixons-online.net> and <dixons-online.org> linked to other commercial website sand were held to be confusingly similar to the Complainant's DIXONS trademark

In AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, the disputed domain names were <attinternet.com> and <attuniversal.com> linked to a gambling website. held, confusing similarity.

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-0496.html

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