Citation: 2016 SCC OnLine WIPO 376

Date: 5th May 2016.

Single Judge Bench/ Panelist: Tuukka Airaksinen.

PARTIES INVOLVED:-

1.) Complainant- Union des Associations Européennes de Football or commonly known as the UEFA. This Corporate body has headquarters in Nyon, Switzerland. The main purpose of the company is to organize various football events all around Europe and have the sole authority of promotion and other technicalities related to such events. In this case, UEFA was represented by its corporeal chain by the Nameshield, France.

2.) Respondent- Identity Protection Service, Identity Protect Limited of Godalming, Surrey, United Kingdom of Great Britain, and Northern Ireland (“United Kingdom”)/Adam Allen, Adam Allen of Slough, United Kingdom. The main purpose of this service provider is to create domain names and provide platforms regarding such domains.

FACTUAL HISTORY:-

UEFA is one of the most famous and a high-tier administrative body for association football in Europe, even though various member states are primarily or entirely located in Asia for football administration. The European Championship or the UEFA European Football Championship is the biggest stage of football for the clubs organized by the UEFA. Along with that, the EUROs are on the biggest events in the International football governed by UEFA. The whole case revolves around the 2016 EURO Cup, the sale of tickets, and trademark issues related to such. UEFA holds the sole rights of issuing tickets or delegating such work to other organizations but with certain terms and conditions maintaining the ownership with the UEFA. The respondent without any prior permission created a domain for the sale of EURO’16 tickets under the domain name as that was registered with 123-Reg Limited.The disputed domain name includes the Complainant\’s trademark EURO 2016 in its entirety. The website to which the disputed domain names resolves displayed the Complainant\’s logos and offered the sale of tickets to the EURO 2016 championship. The whole process and work were not authorized by UEFA to the respondent company.

ISSUES HIGHLIGHTED:-

1.) Whether the respondent company possesses any right for such sale of tickets?

2.) Whether there was any legitimate interest by the respondent company and is there any relation between the two parties?

JUDGMENT & ANALYSIS:-

This very case isa benchmark case in the International Sports Trademark disputes. The contention that was put forward by the complainant company i.e. UEFA was that the Respondent vests no rights in respect of the disputed domain name and he is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent tried to create confusion with the Complainant to sell unofficial tickets for the EURO 2016 championships. The most important and interesting fact here is that the respondents did not even try to reply to the contentions raised by UEFA against the respondent company.

The judgment laid down several sticks to obtain a domain name in terms of the rights vested under the Trademark law. Three elements need to be fulfilled to establish that the transfer of the domain name through such trademark rights has been done in a legit manner or illegally. The 3 elements are namely-

(a.)Similar / Identical

(b.) No Rights

(c.)Registered and used in bad faith.

These elements arean important factor and the omission of even one element would result in slipping of the case to the actual illegitimate holders. The Center in this very case verified that the Complaint together with the amended Complaints satisfied the formal requirements of the “Uniform Domain Name Dispute Resolution Policy” or “UDRP”, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

Firstly, the domain name that the respondent company came up with was technically similar to that of the complainant. “Paragraph 4(a) (i) of the Policy (UDRP)” requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It is on the part of the complainant to establish without any reasonable doubt that the rights of the trademark vests with him and not with the respondent. Not just the UEFA is bound to prove that but also, is required to make transparent that the disputed name is identical as well as similar to the trademark.The Complainant has shown that it is the proprietor of; inter alia, the registered trademark EURO 2016. The disputed domain name includes the Complainant\’s trademark in its entirety and combines it with two generic words, “sell” and “tickets”. The “WIPO Panel Views”in consonance with paragraph 1.9 that is laid down in the WIPO overview made it clear by the scrutiny that the domain name made by the respondent has all the details of the EURO 2016 vesting with the complainant. Since this particular point was established by the complainant i.e. UEFA and even the respondent company didn\’t even oppose it, the next step was analyzed.

Now, the next step in determining the transfer of domain name is the most crucial because this element would establish a prima facie casefor such a concrete move. Paragraph 4(a) (ii) of the Policy (UDRP)requires that the Complainant establishes that the Respondent has no rights or legitimate interests to the disputed domain name. The onus of proof lies with the Complainant i.e. The UEFA to establish, no right was granted to the respondent in doing such act on behalf of the complainant. Once, such an element has been proved, then the burden to prove shifts to the respondents to establish that such right was granted with the help of producing certain legitimate documents in the favor.[1] The complainant after producing all the evidence contented that no right was granted to the respondents and even has no affiliation with the respondent company.No authorization was intended in the favor of the respondents to use the trademark EURO 2016 or the disputed domain name, and that the Respondent is not commonly known by the disputed domain name.Again just like the first element, the respondents have erred in maintaining any real evidence and also not rebutted the arguments or the contentions presented by the UEFA. After all this scrutiny and close discussion, it was decided that the complainant i.e. The UEFA was successful in establishing the prima facie of this particular case. And so, taking into considerations all the points highlighted by the complainant and no such rebuttal by the respondents, the adjudicating panel, in this case, declared the second element also towards the complainant.

Since the above two elements were accomplished, the element was comparatively easy for the complainant to establish taking into consideration the other contentions and points put forward towards the panel. Paragraph 4(a) (iii) of the Policy (UDHR) requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Few questions were raised in maintaining this element as,

• Was the domain name registered?
• Was the respondent company aware of the event being owned by the complainant?
• Was the registered domain illegal? And
• Was there any bad faith in doing such an act by the respondent company?

These questions were answered chronologically by the panel from the starting point of the registration. The pieces of evidence and proofs put forward by UEFA pinpoint that the respondents registered the domain name to sell tickets for the event i.e. EURO 2016. \”circumstances indicating that the respondent has registered or has acquired the domain name primarily for selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration over [the respondent\’s] documented out-of-pocket costs directly related to the domain name\”As was indicated by the panel while answering the first question. Registering the domain name made the respondent company liable to provide a disclaimer for the internet users regarding working under the name of UEFA, rather they omitted this important step, and was seen that the registration was for personal benefit. Even, the respondents can\’t argue that they were not known about the particular event (EURO \’16) because of the international and one of the most famous competitions solely owned by UEFA. Since, neither any right was granted to the respondent company nor any association was established between the two parties to make it evident that the registry of the domain name was legal. The most crucial point here was that the registration of the domain name was for personal benefit and was done in the bad faith creating a high line of men\’s rea involved in the whole act of the respondents. The panel, in this case, pointed out that:

“by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent\’s website or other online location, by creating a likelihood of confusion with the complainant\’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent\’s website or location or a product or service on the respondent\’s website or location.”

The final verdict was surely towards/ in favor of the Complainant i.e. UEFA. It was passed that the respondents have intentionally and with full purpose created and registered the domain name to sell, rent, or other types of transferring of tickets related to the EURO 2016 competition without even informing or creating any disclaimer posted on the website. The purpose was as simple as gathering buyers and steeping the competition from the UEFA even though the trademark vested with the complainant. The point here was even though the domain is now at this point active or not is none of the concern because once it has been registered illegally or with a bad intention then the burden would surely fall on the respondents no matter what. Hence, by clubbing all the contentions put forward by both the parties and the shreds of evidence drawn in favor of the pleadings, it was finally decided that the domain name should be handed over to the complainant along with all the rights embedded in such domain. 

-Areeb Ahsan

KIIT Law School

[1]Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0.