English Premier League Clubs Win Important 'Cyber Squatting' Case

Article excerpt

Introductory Remarks

The Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO), a specialized agency of the UN based in Geneva, Switzerland, has recently delivered an important ruling in a 'cyber squatting' sports-related case brought by five leading English Premier League Football Clubs, including Manchester United, all of whom successfully claimed that their trademarks had been misused through the registration and commercial use of domain names incorporating them by an unassociated and unauthorized third party offering for sale so-called 'official' tickets to their matches.

To succeed in a 'cyber squatting' case, a Complainant is required to prove each of the following three conditions specified in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") of 1999, namely that:

i the Disputed Domain Names are identical or confusingly similar to trade marks in which the Complainants have rights; and

ii the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii the Disputed Domain Names have been registered and are being used in bad faith.

The present case citation is:

Fulham Football Club (1987) Limited, Tottenham Hostpur Public

Limited, West Ham United Football Club PLC, Manchester United

Limited, The Liverpool Football Club And Athletic Grounds Limited v.

Domains by Proxy, Inc./Official Tickets Ltd

And the reference is:

WIPO Case No. D2009-0331

Factual Background

The background to this case is as follows:

The Complainants are Fulham Football Club (1987) Limited, Tottenham Hotspur Public Limited, West Ham United Football Club PLC, Manchester United Limited, and Liverpool Football Club and Athletic Grounds Limited.

The Respondent is Domains by Proxy, Inc./Official Tickets Ltd., of United States of America.

The Complainants are all professional football clubs playing in the English Premier League. The Complainants have become widely known throughout the world through advertising and media coverage.

The Complainants are the owners of a number of trade marks registered in the United Kingdom, the European Union and the United States of America including, but not limited to:

FULHAM FC;

TOTTENHAM HOTSPUR;

WEST HAM UNITED;

MANCHESTER UNITED; and

LIVERPOOL FOOTBALL CLUB.

The Complainants own domain names which incorporate the Complainants' registered trade marks. These include:

;

;

;

; and

.

The Respondent is Domains by Proxy, Inc. /Official Tickets Ltd. of the United States of America.

The Disputed Domain Names were registered by Official Tickets Ltd. on October 24, 2007. The Disputed Domain Names resolve to websites selling tickets to the Complainants' football matches and other events.

The Respondent is not affiliated with the Complainants, nor is it - in any way - endorsed by the Complainants as an authorised distributor of tickets to the Complainants' football matches.

The Disputed Domain Names are:

;

;

;

; and official-liverpool-tickets.com>.

The Complainants' Contentions

The Complainants contended that they have registered trade marks in their respective names; and that the Disputed Domain Names are identical or confusingly similar to the trade marks or service marks in which the Complainants have rights.

The Complainants supported their contention by reference to the fact, for example, that the Domain Names