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ISL Worldwide and The Federation Internationale de Football Association v. ActFit.com Inc. [2001] GENDND 1046 (30 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1.1 The Complainants are (acting jointly) ISL Worldwide ("ISL") of Grafenauweg 2, P.O. Box 4433, CH-63-4, Zug, Switzerland and The Federation Internationale de Football Association ("FIFA") of Hitzigweg 11, P.O. Box 85, 8030 Zurich, Switzerland acting jointly.

1.2 According to the information in the WHOIS database of Network Solutions, the Respondent is Lasermedia Comm. Inc. of 11 Charlotte St., Toronto, On M5V2H5. An email from Jennifer Zuwala to David Gill of ISL exhibited to the Complaint suggests that ActFit.com is the new name for LaserMedia Inc. According to the information revealed by a further WHOIS search, ActFit.Com Inc. has the same address as that registered for Lasermedia Comm. Inc. For the purposes of this Decision, the Respondent will be called ActFit.Com Inc.

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on March 26, 2001, and in hard copy on March 28, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint had been sent or transmitted to the Registrar of the domain name in dispute, NSI.

3.3 On March 27, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to NSI on March 28, 2001, by email. NSI responded to the Center’s request by email, stating:

(a) that NSI was in receipt of a copy of the Complaint sent to it by the Complainant;

(b) that NSI was the registrar for the domain name in dispute;

(c) that Lasermedia Comm. Inc. was the current registrant of the domain name in dispute;

(d) that the domain name in dispute was active in status;

(e) Lasermedia Comm. Inc’s contact details; and

(f) that the NSI Service Agreement Version 5 was in effect.

3.5 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on April 3, 2001, to the Respondent by post/courier, facsimile and email, and to the Complainant by email.

3.6 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainant by email on April 26, 2001, at 9.44 am. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.

3.7 Two emails in response were received by the Center on April 26, 2001. At 6.04 pm an email in reply, embedding the Center’s earlier email, was received from Mazdak Rezvani as follows:

"A transfer request has been put through. 3-5 business days are required for this to take effect".

At 7.27 pm a second email from Mazdak Rezvani stated:

"dom expires on May 6, 2001 -- approx. one week from now. we have no plans for renewing. please take it freely".

3.8 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant’s representative on May 9, 2001.

3.9 The Center sent a transmission of case file to the Panel on May 9, 2001. The documentation was received in hard copy by the Panel on May 14, 2001, in Sydney, Australia.

3.10 All other procedural requirements appear to have been satisfied.

The following information is asserted as fact in the Complaint and remains uncontested.

FIFA is the world governing body of the sport of Association Football, commonly known throughout the world as soccer or football, comprising the National Football Association of 203 countries around the world. FIFA is the originator and organiser of a number of world and European soccer championships, including, in particular, the world famous soccer championship known as the FIFA World Cup, but also organises the Olympic Football Tournament, the FIFA World Youth Championship, the FIFA U-17 World Championship, FIFA/Confederations Cup, the FIFA Women’s World Cup, the FIFA Futsal World Championship and the FIFA Club World Championship.

The Complainant also asserts without challenge that:

FIFA is the owner of all intellectual property rights in and to the trade names and trade marks "FIFA", "WORLD CUP" and "FIFA WORLD CUP".

The Complaint lists the numerous international, United States and European trade mark registrations in virtually all international classes for the trademarks "FIFA", "WORLD CUP" and "FIFA WORLD CUP" (the "FIFA Marks").

FIFA’s trademark registrations for the FIFA Marks were issued well prior to the registration date of the domain name in dispute. FIFA’s registration certificates are prima facie evidence of the validity of the FIFA Marks and FIFA’s exclusive rights to the FIFA Marks.

Having been widely promoted among members of the general public, including in Canada and the United States, and having exclusively identified FIFA as well as its famous international soccer championship for about a century, the FIFA Marks symbolise the tremendous goodwill associated with FIFA and represent a property right of incalculable value. It is unquestionable that FIFA has acquired common law trademark rights in and to the FIFA Marks, considering its extensive use that can be traced back to almost the beginning of the 20th century. Furthermore, due to its wide and substantial international use, the FIFA Marks and associated marks enjoy unquestionable fame and notoriety.

FIFA also owns the registration for the domain name <fifaworldcup.com>, which, since February 15, 2001, constitutes the address for the official 2002 FIFA World Cup web site, where consumers may get information and order their football tickets on-line. This web site and the services provided through it has a tremendous success, as evidenced by the fact that the web site is sometimes not accessible due to server overload.

No Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent. The Complainant states that it appears from the Respondent’s web site that the Respondent is active in the sports and fitness market.

The Panel has visited the Respondent’s web site at www.ActFit.com, according to which: "ActFit.com (ActFit) is a developer of software applications and network services for the health and fitness consumer and commercial markets. ActFit is divided into two divisions. The first being the commercial division (CLUBsite Internet Network), providing business to business Internet based software and network solutions to the health and fitness club industry. The second is the consumer division (Active Trainer Interactive Software Group), providing interactive Internet and CD ROM based software to the sport and fitness training market."

5.1 The Complainant contends, by way of providing background to the dispute, that the domain name in dispute was registered on May 6, 1999. The Complainant states that at the end of 1999 it noticed fifaworldcup.net being used for a web site which was infringing upon FIFA’s trademarks and copyrights, through the prominent display of the Complainant’s word mark and trophy and device trademark "FIFA WORLD CUP", as well as through the display of videos and pictures found on the official <fifaworldcup.com> web site. The Complainant also states that although this site was managed by a person called Jan Alsos, it appears that the domain name in dispute was already owned by the Respondent, and the Complaint quotes an extract from a page of the infringing <fifaworldcup.net> web site stating "Actfit offered a very generous deal…". The Complainant states that now the domain name dispute is not connected to an existing web page on the Internet, and the Panel can confirm that the domain name does not currently resolve to an active web site.

5.2 The Complainant states that on February 16, 2000, it sent a communication to the Respondent requesting the transfer of the disputed domain name to FIFA and offering to pay the Respondent the costs of registration and transfer of the domain name. The Complaint states that on the same day Jennifer Zuwala of the Respondent responded and agreed that the domain name was to be transferred to FIFA. The Complaint states that the Respondent consequently prepared the transfer form and sent it to the Complainant, but it appeared that the prepared form was a Registrant Name Change Agreement for a Legal Name Change, instead of a Registrant Name Change Agreement for Transfers, and therefore NSI refused to process the transfer of the domain name. The Complainant also alleges that the Respondent did agree to execute the proper document but since then the Complainant has been trying to contact the Respondent without success, and was obliged firstly to send to it a cease and desist letter, and then to launch the present Complaint.

5.3 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.4 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges that it is incontestable that the domain name in dispute is identical to the "FIFA WORLD CUP" trademark, and that it confusingly similar to the trademarks "FIFA" and "WORLD CUP". The Complainant also alleges that the domain name in dispute is confusingly similar to the Complainant’s domain name <fifaworldcup.com>.

5.5 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaianant alleges that the Respondent has no rights or legitimate interest in the domain name in dispute because, inter alia, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks; the Respondent has never been commonly known under the disputed domain name, as a legal entity or otherwise, nor has he acquired any trademark or other rights to the domain name; and, in its communications with the Complainant, the Respondent agreed to transfer the disputed domain name to the Complainant.

5.6 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant alleges that as the disputed domain name incorporates the famous trade mark "FIFA WORLD CUP" and the separate trade marks "FIFA" and "WORLD CUP", the Respondent clearly knew of the Complainant, it’s activities and of the FIFA World Cup. The Complainant states that the Respondent could have provided information about soccer events including the FIFA World Cup by using a domain name that was not identical or confusingly similar to the Complainant’s trade marks. The Complaint alleges that the use of the disputed domain name by the Respondent is deceptive as it suggests that the services and information provided are provided by FIFA or with its consent, and this demonstrates bad faith.

5.7 The Complainant alleges that the domain name in dispute creates a likelihood of confusion with the Complainant and its trade marks because Internet users have been and will continue to be misled into believing that the domain name is operated and registered by the Complainant or with its permission or authorization. The Complaint further alleges that by using this domain name the Respondent has intentionally attempted to attract for commercial gain Internet users to the web site to which the domain name formerly resolved.

This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

The domain name in dispute is <fifaworldcup.net> The Complainant has numerous registrations of the trade marks ‘FIFA WORLD CUP", "FIFA" and "WORLD CUP". These marks are clearly well known with regard to FIFA’s international football championships and represent the goodwill FIFA has in these.

The domain name in dispute incorporates the words "FIFA" and "WORLD CUP", and is identical to the trade marks owned by the Complainant, the only difference being the gTLD suffix ".net" and the lack of spaces between the words. In the view of the Panel these differences are incapable of differentiating the domain name in dispute from the Complainant’s trade marks, and the Panel therefore finds that the domain name in dispute is identical to the Complainant’s marks.

Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i) of the Policy.

As noted, above, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because, inter alia, the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks.

The Respondent has not submitted a Response and has therefore not contested any of the contentions made by the Complainant. The Respondent has failed to assert any circumstances which might demonstrate its rights or legitimate interests in the domain name. Certainly there is no evidence before the Panel that any of the circumstances described in paragraph 4(c) of the Policy apply in this case, and the responses to the Center’s Notice of Respondent Default (see paragraph 3.7 above) are inconsistent with the Respondent asserting any rights or interests in the domain name.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:

"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".

Although the domain name in dispute no longer resolves to an active web site, the Complainant provides at Exhibit 22 of the Complaint excerpts from the "first infringing FIFA World Cup web site", being pages which appear to have been printed from a web site, the URL of which is http://www.fifaworldcup.net. The Panel is therefore satisfied that the Respondent has used the disputed domain name, although it may not be using it at present.

The Panel accepts the assertions made in the Complaint, in respect of the requirement of paragraph 4(a)(iii) of the Policy, and considers that the Respondent has registered and used the domain name in bad faith. Paragraph 4(b) of the Policy states:

"…the following circumstances…if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product or service on your web site or location."

In the Panel’s opinion, the Respondent registered the domain name with the intention of attracting Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel is of the view that the domain name in dispute was registered and was being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.

The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name <fifworldcup.net> be transferred by NSI to the Complainant.

Philip N. Argy
Sole Panelist

Dated: May 30, 2001