SPORTS DOMAIN NAME DISPUTES
The Internet is an integral part of modern life and, not least, commerce, and the registration of Internet addresses, ‘domain names’, is a common phenomenon in a wide range of activities, including sport.
Many sports organisations and well-known sportspersons have registered domain names and the corresponding websites, for sporting and other reasons, usually commercial ones. For example, FIFA, the World Governing Body of Association Football has registered <fifa.com> and Cristiano Ronaldo has registered his own domain name <cristianoronaldo.com> under which, amongst other things, he promotes his CR7 clothing line brand.
The world-wide reach and continuing importance of the Internet has led to the so-called practice of ‘cybersquatting’, that is, registering well-known individual, company and brand names, as domain names, with a view to selling them on at a profit.
In order to combat such activities, an administrative dispute resolution procedure was established under The Uniform Domain Name Dispute Resolution Policy (UDRP), which was adopted on 26 August 1999 by ICANN (the Internet Corporation for Assigned Names and Numbers).
Such cases are handled online, mainly by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO), which is a specialised Agency of the United Nations and based in Geneva. Such cases are decided by a single or a three-member Panel, who are appointed by WIPO, and their decisions must be implemented by the Registrar of the Registry in which the disputed domain name is registered.
It is interesting to note that the first UDRP WIPO case, which was filed on 2 December 1999, involved the World Wrestling Federation (WWF) and the registration by a Californian resident of the domain name <worldwrestlingfederation.com>. The individual concerned, within three days of registration of this domain name, had offered to sell it to the WWF for a significant profit. The case resulted in its transfer to the WWF.
Under the UDRP dispute resolution procedure, to qualify for cancellation or transfer of a disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy:
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The Respondent has no rights or legitimate interests in respect of the domain name(s).
- The domain name was registered and is being used in bad faith.
In previous UDRP decisions, where the disputed domain name incorporates a complainant’s registered trademark, this is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In order to determine whether the Respondent (Registrant) has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:
– whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366. For example, the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor.
The failure of the Respondent to answer the Complaint or take any part in the procedure, is a further example of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
The UDRP dispute resolution procedure is speedy and inexpensive, compared with Court proceedings, and has been extensively used over the years to settle ‘cybersquatting’ disputes. In fact, the WIPO Arbitration and Mediation Center has handled over 67,000 such disputes, involving parties from 185 countries and over 120,000 domain names.
The Panel is required to issue its decision within 14 days of being appointed.
The costs of the WIPO UDRP domain name dispute resolution procedure are:
For cases involving 1-5 domain names with a single member Panel: US$1,500 (around Sw. Frs. 1,310); and with a three-member Panel: US$4,000 (around Sw. Frs. 3,492).
For cases involving 6-10 domain names with a single member Panel: US$2,000 (around Sw. Frs. 1,746); and with a three-member Panel: US$5,000 (around Sw. Frs. 4,364).
We advise on and handle WIPO sports domain name disputes and further information may be obtained from our International Sports Law Consultant, Ian Blackshaw, who is a WIPO Panellist, by emailing him at: ‘blackshaw@valloni.ch’.