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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Football Association Limited v. Websitebrokers Limited
Case No. D2001-0156
1. The Parties
The Complainant is The Football Association Limited of 25 Soho Square, London W1D 4FA, UK.
The Respondent is Websitebrokers Limited of P17-P19 Bow Wharf, 221 Grove Road, London E3 5SN, UK.
2. The Domain Name and Registrar
The Domain Name is <thefa.com>, registered by Network Solutions Inc. on
July 20, 1998.
3. Procedural History
(1) The Complaint in Case D2001-0156 was filed on January 29, 2001 and was notified to the Respondent on February 15, 2001.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The Complainant has submitted observations on the Response, which under the UDNDRP are admissible only in my discretion. In reply to this the Respondent has submitted that the observations should not be admitted. This in turn has led to further submissions. Given the straightforward nature of proceedings under the Policy, panelists have been reluctant to admit observations of this kind, particularly where they amount to comments on matters which can be deduced by the panel from the material submitted in connection with the Complaint and the Response. The Complainant's observations in the present proceeding are either of this character or else raise issues insufficiently relevant to the disposition of the issue before me. I accordingly refuse to admit the Complainant's observations and related Annexes.
(5) The date scheduled for issuance of a decision is: April 1, 2001, but the late stage at which the Claimant's submission just referred to was received has made it impossible to adhere strictly to this timetable.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
(1) The Complainant, the governing body of association football in England since its formation in 1863, is widely known there as "The F A". The Association administers the rules of the sport and sanctions competitions involving the 43,000 affiliated clubs. It also organises its own competitions, including " The F A Cup" with its famous final in May of each year. It earns revenue from match sponsors, competitions, the sale of broadcasting rights, course fees, fees from member clubs, disciplinary fines, merchandising and similar commercial exploitation of its name and shield. It puts its profits back into association football.
(2) The Complainant has registered in the UK the mark "F.A." for a wide variety of goods and services within seven classes of the Register. These registrations were obtained before the date on which the domain name in issue was registered.
(3) The Respondent maintains a portfolio of domain names, of which it lists 52 examples, some of them sports related, some descriptive of types of business, some town and place names. So far as these consist of the names of, or directly related to, sporting events, the Respondent states that its purpose in holding them is to provide a website giving information about the event or events and to offer the services of its associated business, Ace Options, "as a brokerage" to book accommodation and such like. The Respondent has established one such website, at < Racemeetings.com >. It asserts that this is a prototype for the use that it will make of the other similar domains on its listing, including < thefa.com >, when it has the resources.
(4) This complaint and that in D2001-0157 (<thelondonmarathon.com>) have been referred to the same Panelist at the request of the present Complainant, since although the Complainants differ, the Respondent is the same and the cases arise out of the same activity by the Respondent. There is considerable similarity between the submissions on each side in the two cases. As will be seen, however, my reasoning and decision in the two cases differ.
5. Parties’ Contentions
The Complainant asserts the following:
(1) Its abbreviated name, "The F.A.", constitutes a trade mark to which the domain name in dispute is (but for the TLD) identical, and its registered mark, "F.A." is confusingly similar to that domain name.
(2) The respondent has no rights or legitimate interests in respect of the domain name (see UDNDRP, Paragraph 4(c)). It has not used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. It has not been commonly known by the domain name, nor has it made legitimate noncommercial or fair use of the domain name.
(3)On the contrary, the Respondent has registered the domain name and is using it in bad faith, particularly in the forms identified in the UDNDRP, Paragraph 4(b)(ii) and (iv). It has registered numerous domain names in which third parties have trade mark or service mark rights. These are displayed on one of two brokerage websites belonging to the Respondent as being for sale or lease. Six examples are given: <thelondonmarathon.com>,<thegunners.com>, < therydercup.com >, <thetoonarmy.com>, <baftatelevisionawards.com> and <alfreddunhillcup.com>.
(4) The registration of the Domain Name would suggest to Internet users a connection between Complainant and Respondent, which gives a detrimental impression of the former, notably by suggesting that it does not put back all its profits into football.
The Respondent asserts the following:
(1) It has not agreed to and is not bound by the UDNDRP, its Rules or the WIPO Supplemental Rules; they are all unlawful, void or infringe the Respondent's rights and are thus unenforceable; and it takes part in the present proceedings under protest. The essence of this protest is that the UDNDRP cannot properly be applied retrospectively to a domain name registered before its introduction, and that the Policy has been imposed unilaterally on registrants without any opportunity for voluntary acceptance.
(2) Its business, being based upon the intentions referred to in Paragraph 4(3) above, is entirely lawful; any action ordered in consequence of this complaint would infringe the European Convention on Human Rights, Article 10 (freedom of expression) and First Protocol, Article 1 (peaceful enjoyment of possessions), the English Unfair Contract Terms Act 1997, Section 3 (right to quiet use and possession) and the EU Treaty, Article 81 (restrictive and distortive trade practices).
(3) Much of the use of "the F.A." in relation to the Complainant is descriptive of its activities and events associated with them. In alleging that the expression is used as a trade mark for goods or services, especially through merchandising, no convincing evidence is adduced to show use of the expression in a trade mark sense.
This aspect of the complaint is not strengthened by the holding of United Kingdom registrations of "F.A." as a trade mark since no evidence of any use of these registered marks is adduced; and the assertion of international trade marks is wholly without substantiation.
(4) Internet users now have no expectation that a domain name bearing or including a business or similar name will be connected with the person or organisation known by that name and that accordingly there can be no danger of confusion between the Complainant's trade marks and the domain name in issue.
(5) The Respondent is under no duty to seek authorisation from the Complainant for use of the domain name in issue.
(6) The Claimant has not succeeded in demonstrating that the Respondent has no rights or legitimate interests in the domain name in issue, particularly in relation to the matters specified in the UDNDRP, Paragraph 4(c).
(7) The Respondent has not been shown to have registered, acquired or used the domain name in issue in bad faith, and in particular those forms of bad faith within the UDNDRP, Paragraph 4(b) (ii) and (iv) which the Claimant alleges.
6. Discussion and Findings
A. Jurisdictional Basis of the Administrative Proceeding
The ICANN Uniform Domain Name Dispute Resolution Policy was incorporated by ICANN on October 24, 1999 into the terms on which certain registrations of Internet domain names are effected and held. The Policy, which took effect on January 1, 2000, was intended to affect domain names already registered when the Policy was introduced. As numerous decisions of panels applying the Policy have already held, it achieved that result thanks to the terms in which it had from the outset been couched. The objections to the legal effectiveness of the Policy as regards this complaint are accordingly not sustained.
B. Conflict between Mark and Domain Name
Under the UDNDRP, no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a). The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the complainant has rights. The Policy was introduced to deal, not with those who register, acquire, use or deal in attractive domain names in general, but with those who include in their domain a name so well-known as a trade mark that some potential uses of the domain could readily lead to confusion with that mark. This factor and the special interest which it may give the complainant in having the domain itself without having to pay an above-cost sum for it justify the remedies available under the Policy, provided that the other two elements in the overall test are also made out – bad faith and no legitimate right or interest.
Two consequences follow which are germane to the registration of the names of sporting bodies and events. On the one hand, given the summary nature of the Dispute Resolution procedure, there must be clear evidence that the name on which the Complainant relies is widely known as a trade mark, i.e. as a sign distinctive of the source of goods or services. It is not therefore enough that the Complainant may hold relevant trade mark registrations in or for one or more countries. There must be substantial evidence of actual use as a mark. On the other hand, the Policy has a precautionary character and can be called into operation without demonstrating that the Respondent is actually itself using the domain to cause confusion as to source.
The difficulty with the name of a sporting association, even one as well-known in a particular country as the Football Association is in England, is that the general public's acquaintance with it is largely in relation to its events and its regulatory functions, such as disciplinary procedures. The Respondent places repeated emphasis on this characteristic. Nevertheless, it must be accepted that the Complainant's activities also involve using its full title and the abbreviation, "The F A", in relation to commercial and organisational activities. These include broadcasting on a scale which makes the FA a British household name. If another association, large or small, set up a football organisation under a name which could be mistaken for the Football Association, the activity would in all likelihood amount to passing off.
The reputation which would form the basis of such proceedings would arise from the FA's range of commercial and organisational activities as a whole, rather than from use of its registered "F.A." marks. In this Complaint, the only evidence adduced of such use is on certain book titles, such as "The FA Complete Guide to England Players since 1945" and "The Official FA England Annual", which imply that the FA is the source of the product. Other titles only use FA as a description of contents. No details are given of the licensing of the mark for use on merchandise, so it is not possible to determine whether this too leads to an indication of trade source.
Given that the Football Association has a protectible trading reputation in "The F A", a second question arises. Is <thefa.com> identical with or confusingly similar to "The F A"? In such a comparison one disregards the addition of the TLD. Even so, the two marks are not identical and the issue becomes one of confusing similarity. While the practice of omitting spaces between words is characteristic of "domainspeak", the addition of only a consonant and a vowel to the definite article in English makes for a special case. "Thefa" seems inherently a fabricated word. The combination which is the Complainant's abbreviated name has to be picked out from it by deliberate mental effort. Not for nothing, in my view, is the Complainant's own official domain in the form <the-fa.org>. The hyphen makes a crucial difference.
The Complainant's position is not improved by its registered marks in the form, "F.A." What is essentially a two-letter mark could not be registered without supporting evidence of use. Yet once registration is achieved its scope is likely to be treated as restricted by the public policy interest in keeping similar branding open for use by other legitimate traders. In this context the presence of the full stops cannot be ignored. Nor can the omission in the registrations of the definite article. In any case, as already mentioned, the lack of evidence of much use of these marks makes them of little signficance in applying the Policy.
Because, as already explained, the threshold requirement is precautionary, it must be supported by adequate evidence. In the special circumstances, I am not satisfied that any sufficient case of confusing similarity has been made out. I find that the complaint fails at first base.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a)(i), that the domain name in dispute is neither identical with nor confusingly similar to the Complainant's mark comprising the Complainant's mark, "The F A". The complaint is therefore dismissed.
William R Cornish
Dated: April 5, 2001