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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Union des associations européennes de football (UEFA) v. Chris Hallam
Case No. D2001-0717
1. The Parties
Complainant is Union des associations européennes de football (UEFA), Route de Genève 46, 1260 Nyon, Switzerland. Complainant’s authorised representatives are Mr. Yvan Merlotti and Mrs. Isabelle Hoang, Lawyers, Cabinet Juridique Merlotti, Boulevard Helvétique 15, P.O Box 3447, 1211 Geneva 3, Switzerland.
Respondent is Mr. Chris Hallam, 34 Sykes Meadow, Edgeley, Stockport. SK3 9RJ, England, United Kingdom. Respondent is represented by Mr. Andrew Fields (Solicitor) Hewitson Becke and Shaw Solicitors, Shakespeare House, 42 Newmarket Road, Cambridge CB5 8EP, England, United Kingdom.
2. Domain Name and Registrar
The domain name at issue is <uefa2004.com>. The Registrar is Network Solutions, Inc. Herndon, Virginia, United States.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint from Complainant in e-mail form on May 31, 2001, and in hardcopy form on June 5. On June 1, 2001, the Center issued an Acknowledgement of Receipt of the Complaint.
Having issued a Request for Registrar Verification to the Registrar, the Center received a Verification Response on June 4, 2001. According to that Response:
a) Network Solutions is in receipt of the Complaint sent to it by Complainant.
b) Network Solutions is the Registrar of the domain name at issue.
c) Registrant is "CRH, 29 Buxton Road Chinley, High Peak, sk23 6dj, UK".
d) The domain name is <uefa2004.com>.
e) Administrative Contact Billing Contact is "Hallam,Chris" with the same address as mentioned under c).
f) Technical Contact is "NamesDirect.com Support".
g) The NSI Service Agreement Version 5 is in effect, and,
h) The domain name registration is in active status.
Having verified that the Complaint complied with the formal requirements, the Center issued, on June 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Respondent and to Complainant as well as to the Registrar and to ICANN.
On June 26, 2001, the Center received a Response in e-mail form from Respondent’s representative which was also received in hardcopy form on June 28, 2001. On June 26, 2001 the Center issued an Acknowledgement of Receipt of the Response, which was communicated to the Parties.
The Center invited Mr. Henry Olsson to serve as Sole Panelist and received, on July 4, 2001, Mr. Olssonґs Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated to the Parties. The Projected Decision Date was July 17, 2001.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant in this case, Union des associations européennes de football ("UEFA"), is the governing body of European football. Complainant is a non-profit association organised in accordance with Article 60 and following of the Swiss Civil Code. It has its registered seat and headquarters in Nyon, Switzerland. It consists of 51 European National Football Associations and it organises a number of European football events, such as UEFA CHAMPIONS LEAGUE every year and UEFA EUROPEAN FOOTBALL CHAMPIONSHIP (EURO) every fourth year, for European national teams.
According to information available, Respondent is a private person.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the Courts where the principal office of the concerned Registrar is located, i.e. Herndon, Virginia, United States.
5. Parties Contentions
Complainant contends as a general background that, as of 1984, the UEFA EUROPEAN FOOTBALL CHAMPIONSHIP, commonly known as the EURO, has been identified by trademarks comprised of the term "EURO" coupled with the year of the event. Thus, for instance, the competitions in England in 1996 were designated by the trademark "EURO 96" and the competitions in Benelux in 2000 by the trademark "EURO 2000" The next competitions in Portugal in 2004 will correspondingly be designated inter alia by the trademark "UEFA EURO 2004"
The EURO competitions have become extremely popular and widely broadcast and, for instance, the EURO 2000 had a total cumulative audience of over 7 billion individuals; the final tournament generated by itself a total of 329 million viewers worldwide. In addition, Complainant has a substantial presence on the World Wide Web through its official website <uefa.com> and the websites constructed especially for each EURO competition. For instance, the website <euro2000.org> had more than one billion hits. Complainant has submitted a comprehensive documentation in support of these contentions.
Complainant contends that, in view of the wide broadcast of the EURO 2000 in England – where Respondent actually lives – it seems impossible that Respondent was not aware of Complainant’s event at the time of the registration of the domain name at issue, which occurred during the same competition. In the view of Complainant, Respondent could not have ignored the problems which Complainant had in relation to the registration of the domain name <euro200.com> by a third party; it is in fact probable that Respondent registered the domain name at issue in order to try to create similar problems for Complainant in view of the forthcoming competition in 2004. Also in respect of these contentions Complainant has submitted a number of documents, such as posters, copies of press releases, copies of TV ratings and printout of the www.euro2000.org website.
As a basis for the Complaint Complainant invokes that, in accordance with Paragraph 3(b)(vii) of the Rules, it is the owner of all intellectual property rights in and to the trademark "UEFA EUROPEAN FOOTBALL CHAMPIONSHIP" which is the complete name of its prestigious competition commonly known as the EURO. It is registered under the Madrid Agreement and Protocol for a number of countries, including the United Kingdom, in international classes 1, 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 35, 36, 38, 39, 41 and 42. Complainant has used the trademark in connection with entertainment services, that is, the organisation of sporting events, such as football competitions. Complainant has submitted a copy of the international registration in question.
In addition, Complainant has licensed the trademark to the Local Organising Committee as well as to official sponsors and partners and also to suppliers for use on a wide variety of products and services.
Furthermore, according to Complainant, the trademark is also and has been used on Complainant’s official web site <uefa.com> in connection with information on and promotion for the competition, as well as on the specific competition’s websites.
Complainant is also the owner of numerous other trademarks related to the notion "EURO", which are registered in the United Kingdom, Switzerland and Benelux. Also, for instance, the mark EURO 2000 as an emblem is subject to an international registration covering also the United Kingdom.
In accordance with past practice also the trademark "UEFA EURO 2001" as a word mark has been registered under the Madrid Agreement and Protocol in a great number of classes, with a view of the forthcoming competition in Portugal in 2004. In addition, the mark "PORTUGAL EURO 2004" as a word mark and as a device mark has been registered internationally in class 41. The marks will be used in connection with entertainment events and could be licensed to the Local Organising Committee, official sponsors and partners as well as suppliers. Complainant has submitted a number of registration certificates relating to those registrations.
Identity or Confusing Similarity
According to Complainant, the domain name at issue incorporates the above-mentioned valuable name and trademark of Complainant as well as the two distinctive elements of Complainant’s trademark "UEFA EURO 2001", that is "UEFA" and "2004" which are protected especially in view of the upcoming EURO 2004. Thus there is, in the opinion of Complainant no doubt that the disputed domain name is identical or confusingly similar to Complainant’s trademarks "UEFA" and "UEFA EURO 2004. The fact that the terms "UEFA" and "2004"are associated in the domain name must be considered as an unsubstantial change of Complainant’s trademarks. The mere fact of adding a number (2004) to Complainant’s trademark UEFA cannot render the domain name different from Complainant’s trademark. Furthermore, the fact that "EURO" is not used in the domain name should not be considered as a substantial change of the trademark "UEFA EURO 2004."
Complainant has referred to a letter of November 24, 2000, to Complainant’s counsel, where Respondent admits that the domain name at issue was in fact registered in view of Complainant’s forthcoming EURO competition in 2004.
Complainant furthermore asserts that it has never licensed Respondent for the use of the trademarks "UEFA" and "UEFA EURO 2001" or any of its other trademarks, nor has it authorised or approved the Respondent to use the trademarks or domain name in any manner.
Rights or Legitimate Interests
Complainant contends that Respondent has not yet developed any website under the domain name at issue and has not used that domain name in any bona fide manner; the domain name is merely pointing at the hosting webpage of a company called <yournamefree.com> together with a message informing visitors that the webpage <www.uefa2004.com> is under construction. To support this, Complainant has submitted a printout of the hosting page mentioned.
Complainant contends that it seems to follow from various letters exchanged between Respondent and its counsel and Complainant’s counsels that Respondent has registered the domain name at issue in order to set up a chat forum for fans during Complainant’s EURO 2004 competition. Complainant stresses that no evidence of such use or of any other bona fide use of the domain name has been produced by Respondent in any of its correspondence. In the view of Complainant, Respondent has not proved that it is making a legitimate non-commercial or fair use of the domain name without any intent for commercial gain misleadingly to divert consumers or to tarnish the trademark of Complainant. Furthermore, Respondent has not shown any evidence that such a website will actually be constructed or is under preparation. To support its contentions in this respect, Complainant has submitted copies of various letters relating to Respondent’s activities concerning the domain name at issue.
Complainant furthermore contends that the domain name at issue is not and could not be contended to be a name or a nickname of Respondent or other members of his family or in any other way identified with or related to a legitimate interest of Respondent.
Complainant stresses that, as a consequence, there is no evidence of Respondent’s use of, or demonstrable preparations to use, the domain name at issue in connection with a bona fide offering of goods or services and there is also no evidence that Respondent as an individual, business or other organisation has been commonly known by the domain name at issue.
According to Complainant, Respondent’s registration of the disputed domain name is preventing Complainant from registering the domain name for providing information on and promoting the EURO 2004 competition in Portugal. It is, in the view of Complainant, obviously a potential platform for "ambush" because a website constructed under the domain name at issue operated by Respondent but containing information about Complainant’s event could easily constitute an infringement of Complainant’s rights and mislead the public as to the connection between Respondent’s potential website and Complainant and its competition.
Complainant underlines that Complainant’s trademarks are among the most famous in professional sport worldwide and are among its most valuable assets; the importance of those trademarks has been achieved through many years of work and considerable investments. In particular, Complainant’s use of its trademarks on the Internet has expanded considerably over the last years; those trademarks are now widely present on the Internet. All information on Complainant and on its competitions have always been and will be provided by Complainant through its official website "www.uefa.com" and the specific websites related to the various websites of the UEFA competitions. It should be mentioned, according to Complainant, that Complainant’s trademarks have been registered worldwide in class 38 in order to protect those trademarks against unauthorised use by third parties on websites and for domain name registrations.
Registration and use in bad faith
Complainant contends that, as follows from the correspondence between the Parties, Respondent has not made any bona fide registration and use of the domain name and no evidence has been shown to that end; Respondent has simply alleged its intention to create a chat forum for football fans in relation to the EURO 2004 event. Complainant also stresses that Respondent has declared its intention not to trade on the website "www.uefa2004.com" to be constructed and has always maintained that it has not infringed Complainant’s rights, without, however, providing any evidence in that respect.
Complainant contends that Respondent registered its domain name almost two years ago but as up to now no website or any "under construction" website exists. This is in the view of Complainant evidence of bad faith. Any construction of a website containing information about Complainant’s 2004 event could easily constitute an infringement of Complainant’s rights and mislead the public as to a connection between Respondent and Complainant and its competition in 2004. The domain name at issue is clearly making reference to Complainant and its event and this is a further evidence of bad faith registration and use of the domain name at issue.
Moreover, according to Complainant, the registration and use of the domain name prevents Complainant from reflecting its trademarks in a corresponding domain name in connection with the 2004 event. Respondent has not, in the view of Complainant, shown any valid interest to legitimate such obstruction. As has been found in other cases the passive holding of the registration of a domain name can be a ground for a finding of registration and use in bad faith.
In accordance with Paragraph 4(i) of the Policy and for the reasons described in the Complaint, Complainant requests that the Administrative Panel issue a decision to the effect that the domain name be transferred to Complainant.
First, Respondent basically leaves undisputed Complainant’s contentions as regards the factual circumstances and accepts that the Complaint is based on the registered trademarks referred to by Complainant. On the other hand, Respondent disputes Complainant’s three allegations about identity/confusing similarity, about absence of rights and legitimate interests and about registration and use in bad faith. Respondent contends that Complainant has failed to show any of the three limbs set out in Paragraph 3(b)(ix) of the Rules – let alone all three of those – and that therefore Complainant’s request for the transfer of the disputed domain name should be unconditionally rejected.
Identity or confusing similarity
In this respect Respondent first contends that the domain name at issue was registered about 8 months before Complainant filed an application for registration of the trademark "UEFA EURO 2004" and thus during a considerable period of time there was no trademark in relation to which identity or confusing similarity could exist. As a matter of principle, according to Respondent, a person cannot be expected to foresee what trademarks a third party may or may not choose to register or – in the case of unregistered trademarks – may or may not start to use in the future.
Respondent furthermore submits that the domain name at issue is not identical to any of the 23 trademarks referred to by Complainant.
In addition, Respondent submits that the domain name at issue is not confusingly similar to any of the trademarks referred to by Complainant. None of the 23 trademarks contains the word UEFA followed by a number/year and Complainant has not produced any evidence that it has registered as a trademark the word UEFA followed by the year of any of its EURO football competitions (e.g. UEFA2000, etc). Respondent also submits that Complainant has not sought to register UEFA2004 as a trademark and Respondent could not have objected to such a registration, as it is not itself trading under that name. The posters submitted by Complainant do not contain any reference to UEFA followed by the year of the competition. The same applies to the websites set up by Complainant for the football competition in 2000; nowhere did the word UEFA followed by the year 2000 appear. The statistics provided by Complainant concerning the number of hits to its websites show, in the opinion of Respondent, that it is obvious that Internet users know exactly how Complainant markets and promotes its football competitions. Respondent submits that Complainant has never marketed its football events as UEFA followed by the year of the event and Complainant’s own statistics show that the football community clearly knows that EURO followed by the number of the year of the event is the address to Complainant’s website.
Finally Respondent states that it is obvious that a domain name registered for the purpose of setting up a fans discussion forum will have some kind of connection to the football competition to which the forum relates. In the view of Respondent, Complainant has failed to show that such a registration is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
Rights or legitimate interests
Respondent contends that the reason why no use has been made of the domain name at issue is the fact that the event to which it refers - in Portugal in 2004 - is three years away. Respondent has no plans to develop the site until well after the FIFA World Cup football championships in Korea and Japan in 2002. The absence of any activity by Respondent in this respect should not prejudice Respondent’s case, the more so that there is no evidence that Complainant has started to develop its own website for its EURO 2004 championships.
Respondent has in its correspondence with Complainant made it clear which the plans are for the site, i.e. to set up a discussion forum for fans for the forthcoming EURO football competition in Portugal in 2004. That site will be non-commercial. As in another case Complainant failed to establish that Respondent’s website was for commercial use and therefore failed to show that Respondent was not making a legitimate non-commercial use of the domain name. It is not for Respondent to prove that it has rights or legitimate interests in respect of the domain name at issue but it is for Complainant to prove that it has not. As regards the assertion that Respondent has no right to use the domain name or any other domain name containing Complainant’s trademarks Respondent remarks that a person only requires permission or license to the extent that he is trading under that mark. Respondent has no plans in this direction and in any case the domain name "uefa2004" is not registered as a trademark by Complainant.
Respondent has no intention to mislead the public as to a connection between Respondent’s potential website and Complainant, and Respondent is prepared to undertake to Complainant that is in no way connected or endorsed or associated with Complainant or its competitions. Respondent is even prepared to insert a direct hyper/image link to Complainant’s website for its EURO football competitions.
Respondent finally asserts that the domain name at issue is not preventing Complainant from registering and using the said domain name for providing information etc. on the EURO 2004 competition, as Complainant’s behaviour in the past has been to use a domain name containing the word EURO with the number of the actual year.
Registration and use in bad faith
Respondent disputes that Complainant has proved that no bona fide registration or use has been made. As mentioned above, Respondent has made its intentions as regards the domain name and the website absolutely clear to Complainant. The domain name could not have been registered in bad faith as the registration occurred on October 25, 1999, i.e. more than eight months prior to Complainant’s registration of the trademark "UEFA EURO 2004." Furthermore, Respondent’s development of the website can not be evidence of bad faith as it would be "ludicrous" to develop such a website at a point in time which is three years away from the event in question, also taking into account that Complainant has not yet set up its own website for the competition in 2004.
Respondent submits that Complainant’s assertion that Respondent’s registration prevents Complainant from using the domain name "in the same way it has done for former EURO competitions" is misleading, as Complainant has never before used domain names such as <uefa1996.com>.
Finally, Complainant submits that Complainant has submitted no evidence of bad faith as mentioned in Paragraph 4(b) of the Policy and as required under Paragraph 3(b)(ix)(3) of the Rules.
6. Discussions and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Service Agreement relating to the domain name registration at issue incorporates the Policy which is consequently applicable to this case.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
- that Respondent has no rights or legitimate interests in the domain name and,
- that the domain name has been registered and is being used in bad faith.
In the following parts of this decision, the Panel discusses each of those elements.
Identity or Confusing Similarity
In this respect Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <uefa2004.com>.
Complainant is the owner of a number of trademarks relating to its football activities. Of particular interest in this case is trademark "UEFA" owned by Complainant, which is included in the domain name. It is also known that the organisation of the football event UEFA EUROPEAN FOOTBALL CHAMPIONSHIP (EURO) takes place every fourth year. Therefore, the addition of the year 2004 is not sufficient as to avoid confusion.
In the view of the Panel, the domain name is confusingly similar to the trademarks in which Complainant has rights.
Rights or Legitimate Interests
In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
It is clear in this case that Respondent has informed Complainant about its intentions concerning the domain name, namely to create a non-commercial discussion forum relating to the forthcoming football event in 2004, the reason being that Mr. Hallam is – as it is put in the letter of November 24, 2000, to Complainantґs counsel – a "fanatic supporter of football". Respondent has submitted that the website has not yet been created because the event lies almost three years ahead.
The Panel cannot neglect the explanations given by Respondent, the more so as Complainant has not itself prepared its own websites relating to the same event. The Panel recognises that it may be difficult for a Complainant to prove the absence of something on the part of Respondent but it is nevertheless Complainant who has to prove that Respondent has no rights or legitimate interest in the domain name at issue. In view of the explanations given by Respondent in this case, the Panel cannot find that Complainant has produced sufficient evidence in this respect.
Registration and Use in Bad Faith
In this respect Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.
The Panel notes that the domain name at issue was registered some months before Complainant registered its trademark "UEFA EURO 2004". Even if it is conceivable that Respondent did know about Complainant’s plans concerning the event planned for 2004 when it registered the domain name, the fact is that the trademark in question was obviously not registered or otherwise protected at that time. Therefore, in the view of this Panel, it has not been proved that Respondent registered the domain name at issue in bad faith.
As then regards use in bad faith a certain importance must be attached to Respondent’s explanation why it has not developed a website relating to the domain name, namely that the event to which it refers lies some years ahead.
The Panel has noted Complainant’s contention that the registration of the domain name at issue prevents Complainant from using the same domain name in the same way as it has done in previous EURO competitions. This is of course true, even if it would seem that the domain names used for former competitions have been "EURO" together with the number of the year rather than "UEFA" followed by a corresponding number.
In view of Respondent’s explanations the Panel cannot find that the circumstances invoked by Complainant constitute sufficient evidence about Respondent’s use of the domain name in bad faith.
In the light of the foregoing, the Panel finds that it has been established a) that Respondent’s domain name is confusingly similar to Complainant’s trademarks; however, it has not been established b) that Respondent has no rights or legitimate interests in the domain name or c) that the domain name at issue has been registered and is being used in bad faith.
Accordingly, Complainant’s request for transfer of the domain name <uefa2004.com> shall be denied.
The Administrative Panel denies Complainant’s request for transfer of the domain name <uefa2004.com> to it.
Dated: July 10, 2001