WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fédération Internationale de Football Association (FIFA) v. Carter, Chris Case No. D2009-1232 1. The Parties
1.1 The Complainant is Fédération Internationale de Football Association (FIFA) of Zurich, Switzerland.
1.2 The Respondent is Carter, Chris of Utah, United States of America. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2009. On September 17, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2009, the Registrar 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”).
3.2 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 September 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 12, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 14, 2009. 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 was founded in 1904, is an association governed by Swiss law, and is based in Zurich. It will be well known to any football1 fan as the world governing body of Association Football and the organiser of the “World Cup”. The “World Cup” is held every four years and is often claimed to be the largest single sporting event in the world.
4.2 The Complainant owns numerous trade marks around the world that either comprise or incorporate the terms “FIFA” or “World Cup”. These trade marks include International Registration2 No 487225 dated September 10, 1984 in twenty one different classes for the word mark FIFA WORLD CUP. The trade mark is valid in a number of designated states.
4.3 The Complainant is the owner of various domain names but primarily conducts its online activities using the domain name . This includes the provision of information in relation to the Complainant's activities and past and future World Cups (including the upcoming FIFA World Cup taking place in South Africa in 2010), and the sale of tickets to the Complainant's tournaments.
4.4 The Domain Name was registered on February 13, 2000.
4.5 The current registration of the Domain Name appears to be an individual based in the the United States. He has been a respondent in numerous cases brought under the Policy. Cases identified by the Complainant in which he was held to have held an abusive registration are Mead Johnson & Company v. Chris Carter,WIPO Case No. D2007-0572; Reed Elsevier Inc. and Reed Elsevier Properties Inc. v. Chris Carter, NAF Claim No. 1268239; Bord na Mona, P.L.C. v. Chris Carter, NAF Claim No. 1257982; Silicon Laboratories Inc. v. Chris Carter, NAF Claim No. 1249999; and Yahoo! Inc. v. SL Pace a/k/a Chris Carter, NAF Claim No. 1240860.
4.6 At least recently the Domain Name has been placed with a Sedo parking page. For example, as on September 8, 2009 the page operating from the Domain Name contained links to various “searches” and “sponsored listings”. These listings included “Invest in South Africa”, “Hotels Wembley Stadium”, “2010 WC Football” and “Save 98% on Phone Calls”.
4.7 The Domain Name has also been offered for sale through Sedo and Sedo has provided a facility through which it is possible to make an offer to purchase the Domain Name.
4.8 On August 25, 2009 the Complainant sent a “cease and desist letter” to the Respondent. In that letter the Complainant alleged that the Respondent's use of the Domain Name involved an infringement of its trade mark rights and/or passing off. It demanded, inter alia, that the Domain Name be transferred to the Complainant. The Respondent did not respond to that letter.
4.9 A Sedo parking page continues to operate from the Domain Name as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant claims that the Domain Name is identical or confusingly similar to its registered trade marks. In this respect it refers to ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002,WIPO Case No. D2000-0034, in which the panel held that the inclusion of domain names of numbers that were indicative of years in which the World Cup was held, did not prevent those domain names from being confusingly similar to the Complainant's WORLD CUP mark.
5.2 On the question of rights and legitimate interests, the Complainant refers to the three examples of circumstances that might demonstrate a right or legitimate interest set out in paragraph 4(c) of the Policy and claims that none of these circumstances apply in this case. It therefore contends (citing Compagnie Gervais Danone v. DomainPark Limited,WIPO Case No. D2008-0587; Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,WIPO Case No. D2003-0070 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), Section 2.1) that the onus of proof of showing such a right or interest passes to the Respondent.
5.3 So far as bad faith is concerned, the Complainant separately addressed the questions of bad faith registration and use. So far as bad faith registration is concerned, it maintains that “[i]t is beyond doubt that [the] Respondent had the FIFA World Cup in mind when it first registered the [D]omain [N]ame.” It claims that it would have been known to the Respondent back in 2000 that the FIFA World Cup would be taking place in 2010.
5.4 The Complainant further contends that the registration of the Domain Name constitutes part of a pattern of conduct of preventing a trade or service mark owner from reflecting their marks in a corresponding domain name and refers to those cases (already listed earlier in this decision) in which the Respondent had previously been held to have engaged in abusive registrations.
5.5 So far as use in bad faith is concerned, the Complainant maintains that the parking page use of the Domain Name by the Respondent constitutes bad faith use within the meaning of paragraph 4(a)(iv) of the Policy, citing The National Football League v. St Kitts Registry,WIPO Case No. D2007-1839 and Research in Motion Limited v. International Domain Names Inc. / Moniker Privacy Services,WIPO Case No. D2008-0780. B. Respondent
5.6 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant is the owner of various registered trade marks through the mechanism of at least one International Madrid Registration for the words “FIFA WORLD CUP”. Further, it accepts that the most sensible reading of the Domain Name is as the term “FIFA WORLD CUP” combined with the number “2010”. It also accepts that this number is most likely to be understood by the reader of the Domain Name as a reference to the year in which the next FIFA World Cup tournament will be held.
6.5 In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to trade marks in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 Many panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the burden of proof passes to the respondent to show such a right or interest. The Complainant has cited a number of UDRP decisions in this respect and also makes reference to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions that is supportive of this approach.
6.7 It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.8 The Panel accepts that the Domain Name in this case is currently being used by the Respondent for use with a “domain name parking” or “pay per click” service.
6.9 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.10 The Panel also accepts that the offer for sale of the Domain Name through Sedo indicates that the Domain Name is currently held with a view to its potential onward sale. There is generally nothing per se illegitimate in selling or dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.11 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.12 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel concludes that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainant's trade marks. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.13 As the Panel has already stated, it seems clear that the Domain Name has at least recently been used in connection with a “pay per click” or “domain name parking” service.
6.14 It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,WIPO Case No. D2007-1143).
6.15 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.16 It is clear beyond any reasonable doubt that the Domain Name has in this case been used to take advantage of confusion with the Complainant's mark. The Panel is persuaded that the fame of the term “FIFA World Cup” is both extensive and extends world wide. There is also no other reasonable reading of the Domain Name other than as a reference to the Complainant's tournament. Indeed, the Domain Name also incorporates a number that can most sensibly be read as a reference to the year in which the World Cup will next be held. There has undoubtedly been bad faith use.
6.17 So far as bad faith registration is concerned, matters are not quite so clear cut3. The difficulty here is that the Domain Name was initially registered nearly 10 years ago and yet the only evidence brought forward by the Complainant with regard to the Domain Name's use is no more than a couple months old. No explanation is offered as to why this is the case and why it has taken the Complainant so long to commence proceedings in relation to the Domain Name. In the circumstances, why is the Panel to assume that it was with the current domain name parking use in mind that the Domain Name was initially registered4?
6.18 However, ultimately the Panel is of the view that is does not really matter whether or not the Domain Name was registered specifically with parking use in mind. Regardless of whether or not this was the case, the nature of the Domain Name is such that the only reasonable conclusion that the Panel can reach is that the Domain Name was registered with a view to taking unfair advantage in some way or another of the reputation that exists in the Complainant's FIFA WORLD CUP mark.
6.19 There is no obvious legitimate use to which the Domain Name might have been put and there is no evidence of the fact that it was with any such legitimate use in mind that the Domain Name was registered.
6.20 Further, there is the fact that the Complainant has brought forward evidence that the Respondent has been involved in a series of cases where he has been found to have been involved in bad faith registrations. The domain names in question in those cases were , , , , , , , , , , , and . When these cases are looked at as a whole it is hard to escape the conclusion that the Respondent has deliberately engaged in a course of conduct which involves the registration of domain names that comprise or incorporate the trade marks of others with a view to taking advantage of the reputation of those marks for his own financial advantage. The Panel accepts that the Respondent's activity falls within the scope of paragraph 4(b)(iii) of the Policy. Even if it did not, it nevertheless provides compelling corroborative evidence of the Respondent's intentions at the time he acquired the Domain Name.
6.21 In the circumstances, the Panel is of the view that the Complainant has sufficiently demonstrated both bad faith registration and use. The Complainant has, therefore, made out the requirements of paragraph 4(a)(iii) of the Policy 7. Decision
7.1 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, be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: October 28, 2009
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