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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wembley National Stadium Limited .v.
Bob Thomson [aka Wembleystadium.net]
Case No. D2000-1233
1. The Parties
The Complainant is Wembley National Stadium Limited of York House, Empire Way, Wembley, Middlesex HA9 0PA, United Kingdom.
The Respondent is Bob Thomson [aka Wembleystadium.net] of 2 Devon Road, Quarrendon, Aylesbury, Buckinghamshire HP19 3GX, United Kingdom.
2. The Domain Name and Registrar
The domain name at issue is: wembleystadium.net and the Registrar is BulkRegister.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on September 18, 2000 [electronic version] and on September 19, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is September 22, 2000.
On September 21, 2000 the Center transmitted via email to BulkRegister.com, Inc a request for registrar verification in connection with this case and on the same day BulkRegister.com, Inc transmitted by email to the Center Bulk Register's verification response confirming that the registrant is Bob Thomson and that the contact for both administrative and billing purposes is Bob Thomson.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on September 22, 2000 to :
firstname.lastname@example.org; and to
this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by October 11, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
2 Devon Road
Buckinghamshire HP19 3GX
Cheap Domain Reg.
P O Box 1282
United States of America
A Response was received from the Respondent on October 1, 2000 [electronic version] and on October 6, 2000 [hard copy]. Acknowledgements of Receipt of Response were sent by the Center respectively on October 1 and October 6, 2000 using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding.
A Supplemental Communication was received from the Complainant on October 3, 2000 [electronic version] and on October 5, 2000 [hard copy]. A Supplemental Response to that Communication was received from the Respondent on October 9, 2000.
The Panel in its discretion [Rules, paragraph 12] admits both of these additional submissions by the parties. The Panel does this so as to ensure that each Party is given a fair opportunity to present its case [Rules, paragraph 10(b)]. Further, these additional submissions were both received before the date set by the Center for submission of the Response [October 11, 2000], so that admitting those submissions has not interfered with the due expedition of the Administrative Proceeding required by Rules, paragraph 10(c). The relevance, materiality and weight of the evidence presented in the Complaint, the Response and these additional submissions is reflected in this Decision [Rules, paragraph 10(d)].
Having received on 1 November, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was October 16, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, and two additional submissions by the Parties, the Policy, the Rules and the Supplemental Rules.
4. Factual background
4.1 The Complainant
The Complainant is Wembley National Stadium Limited the owner of Wembley Stadium, which venue hosts large scale sporting events and entertainment events. The Stadium opened in 1923 and since that date the Complainant maintains that the name WEMBLEY has become synonymous internationally with the Stadium and the events hosted at it. The Complainant states that it publicly advertises and markets those events, including by means of the Internet. From the Panel's own searches it appears that the Complainant registered the domain name wembley-stadium.com on March 23, 1998. From the Panel's own knowledge, Wembley Stadium is an exceptionally well known venue at least to the United Kingdom public and the Panel accepts the Complainant's assertion that it is also well known internationally. This is not denied by the Respondent.
4.2 The Respondent
The Respondent resides in Aylesbury, Buckinghamshire. No particulars are given in the Response as to his business or activities. On September 29, 2000, one week after the Notification of Complaint and Commencement of the Administrative Proceeding was notified to the Respondent by the Center, the Respondent changed his name by Deed Poll from Robert Thomson to wembleystadium.net (the domain name in issue).
4.3 The Complainant's Trade Marks
The Complainant relies on the following registered trademarks.
Application and Registration Dates
6: 9: 14: 16: 18: 20: 21: 24: 25: 26: 28: 30: 31: 35: 41; and 42
Applied for October 31, 1994
Registered September 10, 1999
WEMBLEY THE NATIONAL STADIUM
35: 41; and 42
Applied for January 12, 1995
Registered May 5, 2000
Community Trade Mark
3: 6: 9: 14: 16: 18: 20: 21: 24: 25: 26: 28: 35; and 42
Applied for July 2, 1997
Registered February 11, 2000
4.4 The Complainant states that UK Trademark 2,000,877 WEMBLEY, registered with effect from October 31, 1994 was granted on the basis of evidence of distinctiveness acquired through use. The Complainant's case is that this is evidence
- that there has been longstanding and substantial use of the trade mark WEMBLEY in relation to promotion of its goods and services;
- that the Complainant has acquired substantial goodwill in the WEMBLEY trademark; and
- that WEMBLEY is seen by the public as the Complainant's trademark and not only as a geographical name, Wembley being the district of London where the Stadium is located.
4.5 The Complainant also appears to rely upon common law rights in the name WEMBLEY STADIUM on the basis that the Stadium is commonly known as such. In this Panel's view the requirement in paragraph 4a(i) of the Policy that the Complainant must demonstrate rights in the trademark or service mark asserted is not limited only to registered trademarks. The requirement can also be met by demonstrating common law rights in a mark, such as the Complainant would need to establish in order to sustain a cause of action in passing-off under English law or some analogous right under the unfair competition laws of other countries.
4.6 The Respondent's activity complained of
On February 14, 2000 the Respondent - then known as Bob Thomson - registered the domain name in issue. That domain name is not currently used in relation to a website but only as the Respondent's email address.
4.7 The Dialogue between the Parties
August 10, 2000: the Complainant's UK trade mark agents wrote to the Respondent [by registered mail] putting him on notice of the three trademarks identified in paragraph 4.3 above; stating their belief that the Respondent's ownership and future use of the domain name in issue may result in confusion by members of the public being misled into believing that the Respondent is in some way connected with the Complainant or its licenses; that this will also damage the integrity and exclusivity of the Wembley Stadium name; and requesting the Respondent to assign the domain name in issue to the Complainant for a consideration comprising the Respondent's costs in registering and maintaining that name.
August 18, 2000: the Respondent vigorously rejected the claims made in the Complainant's cease and desist letter.
September 19, 2000: having, presumably, received a copy of the Complaint on September 18, 2000, the Respondent wrote to the Complainant taking issue on a number of points, all of which were subsequently reiterated in the Response. The case put in the Response is summarised in paragraph 5.2 below.
5. The Parties' Contentions
5.1 The Complainant
The Complainant contends that the domain name in issue is confusingly similar to the Complainant's registered trademarks WEMBLEY and WEMBLEY THE NATIONAL STADIUM, because:
- the whole of the registered trademark WEMBLEY is contained within the domain name in issue, wembleystadium.net;
- by reason of imperfect recollection, it is likely that the public will confuse wembleystadium and the registered trademark WEMBLEY THE NATIONAL STADIUM or that the public will use the two interchangeably simply viewing wembleystadium as an abbreviation of WEMBLEY THE NATIONAL STADIUM; and
- because the Stadium is commonly known as Wembley Stadium, the public would expect to find the Complainant's website at a domain name using the words wembleystadium.
The Panel takes the latter contention as the Complainant asserting rights in the unregistered mark WEMBLEY STADIUM which is identical with the substantive element of the domain name in issue. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue and that such name was registered and is being used in bad faith.
5.2 The Respondent
The Respondent's case is as follows:
5.2.1. The Complainant's Trade Marks
First, that the WEMBLEY trade mark is no more than a geographical name, which no one party is entitled to monopolise. "For instance, Wembley is a town here in England. Does the Complainant have jurisdiction over the town with the same name? Or are traders in that town denied the right to call themselves Wembley-Bakery or whatever?"
Second, that the domain name in issue will not cause confusion, because any future use of it "… would contain general family interests and personal background"
Third, trademarks are registered for certain classes of goods and services, so that use of the same trademark for different goods or services is permissible.
5.2.2. Rights and Legitimate Interests
First, that as an individual the Respondent has been commonly know by the domain name in issue.
"Because of my seven-feet-tall height, and large skeletal frame, I have been commonly known as "wembleystadium.net" for many, many years". (Emphasis added)
Second, that on September 29, 2000 the Respondent, as noted in paragraph 4.6 above, changed his name by Deed Poll to the domain name in issue. The Respondent maintains that the process of changing his personal name began "earlier in the year"; in other words, before he was put on notice of this dispute by the August 10, 2000 letter from the Complainant's trade mark agents.
"In addition, it takes time for a formal change to be made by deed-poll. A lawyer has to be contacted, payment by cheque has to be cleared, not to mention delays in the postal system. Then the documents have to be prepared, returned and finally witnessed". [Respondent's additional submission dated October 9, 2000]
5.2.3 Registered in Bad Faith
First, that both before and after registering the domain name in issue on February 14, 2000, the Respondent made a trademark search and this showed that name as free. In fact, the search exhibited to the Response is not a trademark search, it was a search made on February 19, 2000 with MarksOnline for domain names. That search showed that the domain name - as opposed to the trademark - wembleystadium.net was available.
Second, that the Respondent has not engaged in a pattern of registering domain names in order to prevent the trademark owner [i.e. the Complainant in this Administrative Proceeding] from reflecting the mark in a corresponding domain name.
Third, that "… the Complainant … had every opportunity to register the domain name, but did not do so, and should now not benefit having sat on its hands!"
5.2.4 Used in Bad Faith
First, the domain name in issue is not being used in relation to an active website.
Second, (as noted in paragraph 5.2.1 above) when it is used it will only contain "general family interests and personal background" and so will not compete with the Complainant's business, still less disrupt it.
Third, the domain name in issue is not being used as a trademark, it is only being used as an email address. Thus, confusion in a trade mark sense will not arise [quoting the Avery Dennison Corp .v. Sumpton case decided by the 9th Circuit on August 23, 1999].
Fourth, the domain name was not registered with a view to selling it for profit over and above the out of pocket costs directly related to it.
Fifth, that the Respondent has made no attempt to sell the domain name to the Complainant, because the Respondent was aware that such an offer could be construed against him as evidence of bad faith use.
Sixth, bad faith registration and use is exemplified by circumstances of the type involved in Case D2000-0265 Sporoptic Pouillioux S.A. .v. William H Wilson. There the Respondent deliberately registered the domain name buyvuarnetsunglasses.com against the trademark interests of Mr Jean Vuarnet, a former Olympic Ski Champion, who had registered VUARNET for sunglasses in a number of countries. By contrast, the facts surrounding this Complaint are manifestly different. There is, the Respondent avers, no evidence of bad faith registration and use of the domain name in issue.
6. Discussion and Finding
6.1. Under paragraph 4a of the Policy, the Complainant must prove three distinct elements in order to succeed with a claim for transfer of a domain name, namely;
- that the 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 Identical or Confusingly Similar
6.2.1. First, the Panel considers that the Complainant has common law rights in the name and mark WEMBLEY STADIUM in addition to its registered trademarks. That being the case, the domain name in issue is identical to that mark.
6.2.2. Second, given the use of the Complainant's WEMBLEY registered mark in relation to goods and services promoted by reference to the Stadium, there must be a likelihood of confusing similarity with the domain name in issue. The Avery Dennison case concerned the issue of whether there was trademark infringement under US law. That is not necessarily the issue to be addressed under paragraph 4a(i) of the Policy, which does not set a requirement that a Complainant must show trademark infringement. However, the Panel is entitled to apply "… any rules and principles of law it deems applicable" [Rules, paragraph 15(a)]. Whether or not the Respondent in time uses the domain name other than as email address, the Panel considers there is every likelihood that at least members of the British Public will expect a domain name comprising the words wembleystadium to have some connection with the famous Stadium of that name and the organisation which runs that Stadium, the Complainant.
6.2.3 Although by reason of the Panel's findings in paragraph 6.2.1., it is not necessary to find confusing similarity in this case, the Panel believes that such is likely to occur. The Complainant satisfies the requirements of paragraph 4a(i) of the Policy.
6.3. Rights or Legitimate Interests
6.3.1. Paragraph 4c of the Policy sets out circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate rights or legitimate interests to the domain name in issue. Those circumstances are not exhaustive of the circumstances which may establish rights or legitimate interests. One of the paragraph 4c circumstances is that the Respondent can show that he as an individual has been commonly known by the domain name. In this case, the Respondent asserts this to be the case [see, paragraph 5.2.2. above].
6.3.2. In support of the credibility of this, the Respondent says that he had decided upon the name change and had begun the process before he was first put on notice by the Complainant. The process, the Respondent says, is not a quick and simple one such that he could have implemented it either in the period following the cease and desist letter of August 10, 2000 or receipt of the Complaint on or about September 19, 2000.
6.3.3. As a matter of fact, this is not necessarily the case. The general rule of English law is that any person is entitled to change his name without the permission of any authority and without compliance with any formality. The only proviso is that use of the assumed name is not calculated to deceive or inflict a pecuniary loss. So, in the absence of malicious intention or misrepresentation, a person has a right to adopt another name for himself. Although the name change does not require any particular formality, it is usual to adopt one of three forms of formality. One of these is by Deed Poll, the method chosen here by the Respondent. A Deed Poll may be, but need not be, enrolled in the Central Office of the Supreme Court. A Deed Poll is, however, just as effective or ineffective whether it is enrolled or not. The only point of enrolment is that it will provide unquestionable proof, if proof is required, of execution of the Deed.
Thus, a person can, if he or she wants, put in place a change of name by Deed Poll overnight. Whether, in the circumstances of this case, the change of name by Mr Thomson avoids the pitfalls of deception and/or misrepresentation is not for this Tribunal to decide.
6.3.4 But, quite apart from the timing of the execution of the Deed Poll, the Respondent asserts that he was known by the nickname wembleystadium.net "for many, many years". But, the Internet as a commercial entity is generally regarded as having come into being some 5 years ago in about 1995. Even if the Respondent is indulging somewhat in the period of time during which he claims to have been known under the domain name in issue, he presents no corroborative evidence.
6.3.5 It is, on the evidence before the Panel, just not believable that the Respondent can bring himself within paragraph 4c(ii) of the Policy and the Panel does not accept the Respondent's case on that issue.
6.3.6 By his own admission, the Respondent has made no demonstrable preparations to use nor has he used the domain name for any bona fide business whether before or after the Complainant first made its concerns known to him in August 2000.
6.3.7 The Respondent has, therefore, failed to bring himself within any of the circumstances set out in paragraph 4c of the Policy.
6.3.8 The Complainant had not licensed or otherwise authorised the Respondent to use it name in the domain name in issue. Indeed, such is the notoriety of the Stadium in England that the Respondent must have been aware that by registering the domain name in issue he would be violating the rights of a third party, the Complainant. The very language used by the Respondent - "the Complainant has sat on its hands" [see, paragraph 5.2.3. above] - is indicative that the Respondent well knew that he had no rights or legitimate interests in respect of the domain name when he registered it in February 2000.
6.4 Registered and Used in Bad Faith
6.4.1. Paragraph 4b 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. In this respect, the Complainant cited Case D2000-0003 Telstra and the Respondent from his Response is clearly aware of the circumstances set out in paragraph 4b of the Policy.
6.4.2 First, the Respondent denies that he has engaged in a pattern of conduct [see, paragraph 5.2.3. above]. The Panel accepts this to be the case. The Complainant in its additional submission of October 3 / 5, 2000 has not alleged otherwise.
6.4.3. Second, the so-called trade mark search [see, again, paragraph 5.2.3. above] does not assist the Respondent to demonstrate registration in good faith vis-а-vis the Complainant's trade marks. It is trade marks, not prior registered domain names, which are relevant to the Policy.
6.4.4. Third, there is no actual use nor threatened future use which is designed to disrupt the Complainant's business. There may, however, be some incidental disruption when members of the public searching for the Complainant's website are directed to the Respondent's proposed website. But, information about the Respondent's "general family interests and personal background" will immediately indicate that they are at the wrong location.
6.4.5. How then can there be registration and use in bad faith? The Respondent does not deny that he was interested in selling the domain name in issue to the Complainant. What he says is that he was concerned not to make the opening offer, since that could be construed against him for the purposes of the Policy [see, point 5 of paragraph 5.2.4 above]. The Respondent does, however, indicate in his letter of September 19, 2000 that he was all along willing to negotiate with the Complainant. There was, he says, nothing to prevent the Complainant from naming an offer. But, this is precisely what the Complainant did. By its August 10, 2000 it offered to buy the domain name in issue "in consideration of your costs in registering and maintaining the domain name". The Respondent denies that he rejected that offer but on the evidence before the Panel he did reject it in the very forthright language of his letters of August 18 and September 19, 2000.
6.4.6 In the letter of September 19, 2000 a hint of leverage in terms of consideration is introduced.
"It seems incredible to me that your client has chosen to take the route that they have, especially since it could have been settled amicably in the first instance.
I'm equally sure that certain readers of the press are definitely going to make a meal of this, and enjoy it, regardless of the outcome!"
This followed the closing comment in the letter of August 18, 2000 quoted at paragraph 5.2.3 above to the effect that the Complainant is now penalised for having "sat on its hands" by, presumably, not registering a domain name to which the Respondent clearly believes the Complainant had rights.
6.4.7 Is there any assistance to be derived from Panel Decisions involving domain names comprising or including geographical place names? Here, as the Complainant points out, we are not dealing with a geographical indication per se [for example, Barcelona or St. Mortiz, respectively WIPO Cases D2000-0505 and D2000-0617] but with a well known building, the Wembley Stadium.
6.4.8 Two WIPO Decisions bear on similar facts. One is Case D2000-0638 Manchester Airport, where in a split Decision, 2 of the Panellists held that the Complainant had failed to demonstrate that it had common law trade mark rights. The Presiding Panellist, Tony Willoughby, disagreed and this Panel considers he was correct. Again, the Presiding Panellist considered that the Complainant should succeed on the issue of the Respondent's failure to show rights or legitimate interest but was overruled by the majority. From a reading of the Decision, this Panel agrees with Mr Willoughby on this issue also. Given what was apparently a serious conflict of evidence between the parties, the Panel decided, obiter, that the dispute procedure was not suited to resolving conflicts of that nature.
6.4.9 More closely in point, in terms of the factual background is Case D2000-1224, the domain name in dispute being sydneyoperahouse.net. This was, however, not a case where the Respondent registered the domain name in issue to exemplify his so-called long-standing nickname. Instead, the Respondent in the Sydney Opera House case had a grandiose scheme to build a "global community network" bringing to life a number of domain names - including sydneyoperahouse.net - with other "generic people's icons" to create a worldwide web community for the purpose of "protecting" and "making positive contributions" towards society by developing an alternative and altruistic network for the common good.
6.4.10 The Respondent here claims no such altruism. But, as the Panel held in the Sydney Opera House case, there is only one Sydney Opera House. In the same way, there is only one Wembley Stadium. The Respondent here must be taken to have known of the use of WEMBLEY: WEMBLEY STADIUM; and WEMBLEY THE NATIONAL STADIUM in relation to the Stadium, otherwise he would not have, opportunistically, registered the domain name in issue because the Complainant, who clearly had rights in the WEMBLEY STADIUM mark, had "sat on its hands."
6.4.11 The Respondent may not have been aware of the Complainant's registered trade marks and/or its common law rights in the name WEMBLEY STADIUM, but ignorance of the law is no excuse. Further, the fact that the Panel has found that the Respondent has no rights or legitimate interest in the domain name is another incidence of bad faith.
6.4.12 As to use, the mere existence of the domain name in issue will likely give a false impression of an association between the Stadium and the Respondent. There is also, the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name.
6.4.13 In the circumstances, on the evidence presented by the parties the Panel is unable to attach weight to many of the assertions raised by the Respondent. The Panel, therefore, finds there to be sufficient indications of bad faith to constitute registration and use in bad faith in this case by reason of the Respondent's passive holding of the domain name in issue. Accordingly, the Panel finds that the Complainant succeeds in establishing both limbs of paragraph 4a(iii) of the Policy.
For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy and accordingly the Panel directs that the domain name webleystadium.net be transferred to the Complainant.
Dated: 16 November, 2000