WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glory Establishment v. FutbolMasters Ltd., FW, FM, Steve Leighton
Case No. D2007-0439
1. The Parties
The Complainant is Glory Establishment, of Vaduz, Liechtenstein, represented by Ladas & Parry, United States of America.
The Respondents are FutbolMasters Ltd., FW, FM and Steve Leighton of Boca Raton, Florida, United States of America, self-represented.
2. The Domain Names and Registrars
The disputed domain names (“the First Domain Name”) and (the “Second Domain Name”) are registered with Tucows (the “first Registrar”).
The disputed domain name (the “Third Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com (“the Second Registrar”).
Together the three Domain Names are referred to hereinafter as “the Domain Names” and the two Registrars are referred to as “the Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March�22,�2007. On March�26,�2007, the Center transmitted by email to the Registrars requests for registrar verification in connection with the domain names at issue. On March�26,�2007, the First Registrar transmitted by email to the Center its verification response indicating the registrant of record for as “FW” and the registrant of record for as “FM” and providing contact details. The administrative contact was listed in each case as Steve Leighton, with contact details including an address in Florida, United States of America. On March�26,�2007, the Second Registrar transmitted by email to the Center its verification response indicating the registrant of record for as “FutbolMasters Ltd.” and providing contact details. The administrative contact was listed as Steve Leighton, with contact details including an address in Florida, United States of America.
For the reason set out below, the three named registrants of the Domain Names are treated for the purposes of this decision as one and the same and are hereinafter referred to as “the Respondent”. The term is also used to indicate Steve Leighton, who (a) is the administrative contact for two of the Domain Names, (b) has responded on behalf of Moe Leighton of the same address, the administrative contact for the other Domain Name, (c) has submitted a Response in respect of all three of the Domain Names and (d) is the Managing Director of FutbolMasters Ltd., the registrant of the Third Domain Name.
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 March�28,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April�17,�2007. The Response was filed with the Center on April�17,�2007.
On April�19,�2007, the Complainant sent an email communication to the Center querying inter alia the compliance of the Response with the Rules, and submitting that the Respondent should be considered in default and the Response not be forwarded to the Panel. On the same date, the Center acknowledged receipt of the Complainant’s email, noting any questions as to formal compliance of the Respondent’s documentation with the Rules, or indeed the weight to be accorded to such documentation in light of concerns raised by the Complainant, are matters more appropriately dealt with by a Panel on appointment. The Center indicated that it would forward the Complainant’s email, along with any reply that may be received from the Respondent, to the Panel for consideration on appointment. No reply to the Complainant’s email was received from the Respondent. On April�26,�2007, the Complainant filed a Supplemental Filing with the Center, the fact of receipt being acknowledged by the Center on April�27,�2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on April�31,�2007. 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.
The Panel notes the Complainant’s objections to the form of the Response, namely that it was only submitted in electronic form and did not contain a formal certification clause. Nonetheless, the Panel notes that in its subsequent Supplemental Filing the Complainant relies upon various aspects of the Response in support of its case. The Panel is prepared to overlook the formal defects in the Response and to admit it into the case.
It will be noted above that the Domain Names are registered in different names. The Complainant asks that the registrants be treated by the Panel as one and the same and has produced substantial evidence in support of its request demonstrating by reference to names, addresses and contact numbers that the registrants are all closely connected. The Response was filed by Steve Leighton (more particularly described above) and the Respondent does not challenge the Complainant’s contentions in this regard. The Response effectively acknowledges that the three registrations are under the same umbrella. The Panel accepts that it is appropriate that the Domain Names should all be dealt with in the one Complaint.
The Complainant’s Supplemental Filing alleges that certain claims made by the Respondent in the Response are false. The Panel has allowed the Supplemental Filing into the case and on May�9,�2007, issued a procedural order to the Respondent inviting a response from the Respondent to the Complainant’s allegations. The Respondent was given until May�14,�2007, to respond. No response to the procedural order was received by the Center.
As will be seen, the Response contains an allegation of Reverse Domain Name Hijacking. In the face of that allegation, the Panel would in any event in this case have sought a Supplemental Filing from the Complainant in response to that allegation.
The First Domain Name and the Second Domain Name are at the time of writing connected to parking pages with sponsored links to a number of commercial sites most of which have no overt connection with either Pele or the Complainant. The Third Domain Name is linked to the Respondent’s Players For Peace website, the player most prominently featured being Ronaldinho of FC Barcelona.
4. Factual Background
The Complainant is a Liechtenstein corporation. It is the registered proprietor of various trade mark registrations of the name, “Pele”, in both word and signature form. Pele is the nickname of the legendary Brazilian footballer, Edson Arantes do Nascimento (“Pele”). The registrations date from the 1960s. The US registrations, details of which have been provided to the Panel, came through in 1993, and cover product categories including inter alia footwear, clothing and leather goods.
Pele has provided the Complainant with written authority to register his name as a trade mark in various countries around the world and has granted the Complainant associated merchandising rights. A certificate signed by Pele and addressed to South African attorneys includes the statement “All the intellectual property rights in the trade mark PELE worldwide are owned by [the Complainant] and it is authorized to use and license the trade mark to third parties and to negotiate license fees.”
On September�19,�2005, Pele wrote a letter in which he described the Respondent as a friend.
The Respondent registered the Domain Names on April 19, May�2,�2006 and May�14, 2006 respectively.
Commencing with a cease and desist letter dated May�24,�2006 the Complainant’s attorneys embarked upon a correspondence with the Respondent, drawing to the Respondent’s attention its trade mark rights and seeking transfer of the Domain Names. The Respondent sought without success to speak to the Complainant’s attorneys by telephone and demanded proof of the Complainant’s exclusive rights in respect of the “Pele” trade mark. The correspondence ended at the end of July�2006, with the Complainant’s attorneys refusal to provide the proof sought by the Respondent.
On July�18,�2006, a Special Adviser to the United Nations New York Office of Sport for Development and Peace wrote a letter “To Whom It May Concern” certifying that that office “endorses [the Respondent] as an organization of goodwill to assist [its] offices with its initiatives of Development and Peace projects worldwide.”
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the Domain Names is confusingly similar to its PELE trade mark registrations.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith.
The Complainant asserts that the Domain Names were registered without authority and with the object of diverting Internet traffic for commercial gain as set out in paragraph 4(b)(iv) of the Policy. The Complainant points to the use to which the Domain Names are being put. One of the Domain Names is linked to a holding home page for FutbolMasters Ltd (site said to be under construction) and the other two are linked to parking pages, through which, the Complainant asserts, the Respondent is earning click-per-view revenue.
The Complainant further asserts that the Respondent registered the Domain Names with a view to disrupting the Complainant’s business. The Complainant points to the fact that two of the Domain Names are connected to parking pages which feature trading links competing with the Complainant’s business.
The Complainant contends that the Respondent was clearly aware of Pele when the Domain Names were registered and had actual or constructive notice of the Complainant’s trade mark rights.
B. Respondent
The Respondent does not deny that the Complainant may have limited trade mark rights in respect of the name, “Pele”, but denies that they are exclusive rights and further denies that those rights give to the Complainant the right to all domain names in which Pele’s name is featured.
The Respondent claims that the Domain Names were registered for Pele’s personal use “to promote global awareness and support for his own initiatives and platforms of Goodwill, Development and Peace for UNHCR, through Players For Peace and the United Nations Sport for Development and Peace. The Respondent claims that Pele has personally asked the Respondent to protect the Domain Names for him. The Respondent states that in the week following the filing of the Response the Respondent will meet Pele and obtain from him a letter verifying the truth of what the Respondent claims.
The Respondent alleges that in various respects the Complainant’s evidence to the Panel is false or misleading and seeks a finding of Reverse Domain Name Hijacking.
The promised verificatory letter from Pele did not arrive.
C. Complainant’s Supplemental Filing
The Complainant rejects the Respondent’s allegations and produces a letter signed by Pele confirming the Complainant’s rights and denying that the Domain Names were registered at Pele’s request and for his personal use.
D. The Procedural Order
The Panel sought a response from the Respondent dealing with the Complainant’s Supplemental Filing and drawing the Respondent’s attention to the Respondent’s stated intention to obtain a letter from Pele verifying the Respondent’s claims. The Respondent has not responded to the procedural order. No verificatory letter from Pele has been produced to the Panel by the Respondent.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are 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 respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
B. Identical or Confusingly Similar
Each of the Domain Names features Pele’s name (i.e. the Complainant’s registered trade mark) and a descriptive suffix. The term ‘futebol’ and the number ‘10’ are directly related to Pele, football being the sport in which he excelled and 10 being his shirt number. The suffix ‘tv’ is a neutral indication. None of the suffixes detracts from the distinctiveness of “Pele”.
The Panel finds that each of the Domain Names is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
When the Panel first read the Response, the Panel anticipated reading, as promised in the Response, a confirmatory letter from Pele verifying the truth of the Respondent’s claims (namely that the Domain Names were registered at Pele’s request and for his personal use as part of the United Nations charitable programme with which both Pele and the Complainant are associated) and assumed that there had been some mix-up at Pele’s end and that the Respondent would have no difficulty in at least establishing a legitimate interest and an absence of bad faith.
That said, the Panel was somewhat surprised that domain names registered for such a purpose should be connected (as two of them are) to parking pages with sponsored links not exclusively associated with Pele and apparently earning for the Respondent click-per-view revenue. It is noteworthy that the Respondent did not contradict the Complainant’s assertions in this regard.
However, the only letter to have since emerged from Pele is one produced by the Complainant verifying the Complainant’s position and expressly rejecting the Respondent’s claims.
The Panel has given the Respondent an opportunity to come back with an explanation, but the Respondent has not taken up that opportunity.
In the face of Pele’s letter and in the absence of any explanation from the Respondent, the Panel has little alternative but to infer for present purposes that the Respondent’s claims as to rights and legitimate interests in respect of the Domain Names are groundless.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
By the same reasoning the Panel is not prepared to accept the Respondent’s denials as to bad faith with regard to registration and use of the Domain Names. Forensically, the Panel asks: why submit what would appear to be an inaccurate record as to the purpose of the registrations if it is not to conceal a mala fide intent in respect of the Domain Names?
It seems strange that a body such as the Respondent, which is said to be involved in United Nations Development and Peace initiatives, should behave in this way, but the correspondence from Pele and the lack of persuasive evidence or further explanation from the Respondent leave the Panel with no scope for any other interpretation.
The Panel finds that the Respondent registered the Domain Names for a purpose which the Respondent is not prepared to confirm and which in all probability was to attract/divert Internet users for commercial gain along the lines of paragraph 4(b)(iv) 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 Names, , and be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: May�17,�2007
Full & Egal Universal Law Academy