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Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International,S.A. de C.V. [2005] GENDND 353 (30 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Premier League Limited v. Trademark

Case No. D2005-0014

1. The Parties

The Complainant is The Football Association Premier League Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by McCormicks Solicitors, Leeds, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Trademark, Georgetown, Grand Cayman GT, Cayman Islands of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <fapremierleague.com> is registered with NamesDirect.com on May 16, 2003.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2005. On January 6, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On January 6, 2005, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2005.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 4, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company registered in England under the name “The Football Association Premier League Limited”, whose members are the football clubs that participate in the Football Association Premier League competition, currently known as the Barclays Premiership (the “Competition”), which is the elite league of football in England and Wales. The Complainant organizes and acts as the governing body of the Competition. The Football Association Premier League Limited was formed on February 20, 1992, and has organized successive seasons of the Competition in each football season since 1992/1993. One of its founding shareholders is the Football Association Limited, the governing body of football in England and Wales, which is universally known as “The F.A.”.

The Complainant is commonly and inevitably referred to as “The F.A. Premier League”. It is the Premier League of football in England and Wales, as opposed to the many other Premier Leagues in other sports and other areas, and to refer to it as the FA Premier League is an almost automatic adaptation. Indeed, the Complainant refers to itself as the same on its headed paper, a copy of which has been submitted to the Center, and within its corporate logo, which can also be seen on the headed paper, and which also forms the basis of the sleeve badge worn by every football player at every match within the Competition. Both the Complainant and the Competition organized by the Complainant are well known not only to football enthusiasts but also to non-football enthusiasts.

The Complainant is the proprietor of several trademark registrations, both in the UK and the European Union, for the mark “PREMIER LEAGUE”. Such registrations, which date back to 1992 (when the Complainant was formed) and 1998 respectively, cover a wide range of goods in various Classes and also services in Class 41 for, amongst other things, “services relating to sports’ events and matches; all relating to the promotion of Association football”. Copies of printouts from the relevant Trademark Registry databases in respect of the Complainant’s trademark registrations for “PREMIER LEAGUE” (including that relating to Class 41) have also been submitted to the Center in support of the Complaint.

The Complainant’s name, fame and reputation and that of the Competition promoted and organized by it has spread throughout the world in terms of worldwide media coverage; worldwide dissemination of branded goods; and - not least - as a result of worldwide broadcasts of both complete matches and excerpts in the form of highlights from the Competition in some 192 countries worldwide, reaching some 600 million people worldwide.

Use of the trademarks referred to above, together with, amongst others, the Complainant’s logo and the unregistered mark “F A PREMIER LEAGUE”, are licensed to the Official Partners and suppliers of the Complainant. By way of illustration of some of the licensing and sponsorship deals, which have been undertaken by the Complainant, the current sponsor of the Competition is Barclays, one of the largest financial services groups in the world. Other Official partners of the Complainant include Nike in respect of, inter alia, match balls for the Competition; Anheuser Busch with Budweiser being the Official Beer of the F. A. Premier League; and GlaxoSmithKline the Official Drinks Supplier of the F.A. Premier League with, inter alia, its Lucozade Sport drink.

The Complainant, as mentioned above, also enters into licensing deals for the production of officially licensed products. For example, the Complainant has an agreement with E A Sports (one of the most well known and respected producers of computer games) for the development of an F.A Premier League computer game. Copies of the covers of some previous computer games produced on behalf of the Complainant, which clearly identify and make reference to the Complainant as “The F.A. Premier League”, have also been submitted to the Center. A further example of branded goods produced in association with the Complainant is the F.A. Premier League Sticker and Collector Album produced by Topps Europe Limited under its Merlin brand; copies of some of the covers of the sticker albums, clearly incorporating the Complainant’s branding and the term “F.A. Premier League”, have also been submitted to the Center in support of the Complaint.

With regard to the worldwide broadcasting of the Complainant’s name and the Competition organized and promoted by the Complainant, one of the most notable and publicized deals is that with Sky Television. Back in 1992, at the time of the formation of the Complainant, the agreement with Sky Television (covering five seasons) was worth approximately £191 million. The three-Season deal with Sky Television, which commenced at the beginning of the 2004/2005 Season, was worth approximately £1.1 billion. The fame and reputation of the Complainant can be illustrated by the fact that the broadcasting rights associated with the Competition are hotly contested.

In addition to the registered trademarks and unregistered rights the Complainant has in the term “F.A. Premier League” (referred to above), the Complainant has also registered a number of domain names incorporating not only the term “Premier League” but also “F.A. Premier League”. For example:

And the Complainant’s main website is located at: “www.premierleague.com”.

It is not unknown for members of the general public, where they do not know the official website of an entity, to type in a URL utilizing the name of such an entity in the hope that they will reach the correct website. Consequently, the Complainant registered the above domain names, being variations of its trade marks and the accepted and commonly used abbreviation of the Complainant’s corporate name, and directed all of the same to the Complainant’s main website. The Complainant’s main website during the first quarter of the 2004/2005 Season received a total number of 53,775,557 ‘hits’ through approximately 1,205,599 users. The Complainant (as mentioned above) has registered the domain name <fapremierleague.co.uk> (the .co.uk version of the domain name being the subject matter of this complaint). During the period December 2003 to November 2004, it has received a total number of 294 ‘hits’, being not an insignificant amount.

5. Parties’ Contentions

A. Complainant

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The Complainant asserts that it can be clearly seen from the above background information that the Complainant has rights - registered and/or unregistered - in the terms “Premier League” and “F.A. Premier League”. The domain name, <fapremierleague.com>, which is the subject of this Complaint, is clearly similar to the trademark registrations held by the Complainant. The only difference between the two being the addition of the term “FA”. The term “FA” is well recognized within the football world as referring to the “Football Association”, being the governing body of football in England and Wales and it is with the consent of that body that the Complainant is permitted to use the term “FA” within its trading name. The term “FA” is also a registered trademark of such governing body. Copies of printouts from the relevant Trademark Registry databases in respect of the trademark registrations for “FA” have been submitted to the Center in support and part of the Complaint.

The reference to “FA” within the domain name in issue is obviously intended to infer a connection to the premier league of football taking place in England as opposed to any other sporting premier league. Furthermore, the website associated with that domain name clearly contains links to websites for some of the top teams participating in the Competition organized by the Complainant.

In addition, the domain name in issue is identical to the unregistered and/or common law rights, which the Complainant holds in respect of the term “F.A. Premier League” and/or “The F.A. Premier League”. This reasoning, namely the assertion that the Domain Name is identical, is based on the findings by the Administrative Panel in The Sportsman’s Guide, Inc v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, where the Panel held that “the addition of generic top-level domains name “com” or the omission of the term “the”, are without legal significance and certainly do not render the disputed domain name different….”.

2. The Respondent has no rights or legitimate interests in respect of the domain name:

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

In accordance with Rules, paragraph 3(b)(ix)(2), the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

In support of such assertion, the Complainant points to the fact that:

1. Prior to any notice to the Respondent of this Complaint, the Respondent was not using the domain name in connection with a bona fide offering of goods and/or services, nor had it made any preparations to do so. The domain name was and is instead being used by the Respondent unfairly to trade on the Complainant’s name and marks, by associating the domain name, by way of hypertext links, to other sites and online stores offering information, goods and/or services, many of which are associated with merchandise websites and/or unofficial websites for football clubs forming part of the Competition organized and promoted by the Complainant.

2. The Respondent is not commonly known by the terms forming the domain name or any proportion thereof, nor has it registered and/or attempted to register the domain name as a trademark.

3. The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue. The Respondent has a clear intention to use the domain name for a commercial basis with the further intent of making commercial gains. This can be illustrated by the fact that there are sponsored links and pop-up advertising on the website associated with the domain name in dispute, evidence of which has been submitted to the Center in support of the Complaint. Furthermore, as the Respondent is not utilizing the domain name in issue for the bona fide offering of goods and/or services, the Respondent can have no reason to register the disputed domain name other than misleadingly to divert consumers to the website in the belief that they are being directed to the website of the Complainant. Once on the website, the Respondent clearly hopes that they will then proceed to click onto one of the hypertext links contained within the website. Finally, the Respondent, by implication, has an intent to tarnish the marks in which the Complainant has rights, due to the fact that, within that section of the website purportedly associated with the Complainant, there is a link to an online store dealing in “Sex Toys & Sexy Lingerie”. Again, evidence of this has been submitted.

4. The Complainant has never assigned, licensed, authorized or given permission to the Respondent to use or register as a domain name the marks identified above as being marks in which the Complainant has rights

3. The domain name was registered and is being used in bad faith:

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

In accordance with Rules, paragraph 3(b)(ix)(3), the Complainant asserts that the disputed domain name was registered and is being used in bad faith.

In support of such assertion, the Complainant, as shown above, clearly has a significant amount of goodwill and reputation (not only in respect of the UK but also worldwide) in respect of the term “F.A. Premier League”. The Respondent, given the content of the website associated with the domain name (being in the majority references to and hypertext links to websites and online stores associated with certain football clubs being participants of the Competition organized by the Complainant), clearly has prior knowledge of the Complainant and the Competition organized by the same. In light of such obvious prior knowledge of the Respondent, the Respondent’s registration and use of the disputed domain name is effectively an intentional attempt to create confusion with the Complainant’s marks and thereby attract, for commercial gain, internet users to the website. The commercial gain, in this instance, would be afforded by means of sponsored hypertext links on the website associated with the disputed domain and pop-up advertising, which appear when that website is accessed.

A further indicator that the disputed domain name was registered in bad faith is the fact that the website associated with the disputed domain name contains no contact details for the Respondent (these have to be obtained from the “Whois” database of information) and the fact that the name contained within the “Whois” database does not appear necessarily to be a genuine one.

Furthermore, on October 14, 2004, the Complainant wrote to the Respondent with regard to the disputed domain name and requested that the Respondent transfer the disputed domain name to the Complainant. A copy of the letter sent to the Respondent has been annexed to the Complaint. This letter was sent to the Respondent by International Signed For Post at the address specified in the “Whois” database (whilst this letter left the UK on October 16, 2004, the Complainant has not been notified if it has been signed for); by facsimile utilising the number obtained from the “Whois” database; and by email to the email addresses specified in the “Whois” database. The Complainant has not received any delivery failure notices in respect of such emails. The Complainant has not received any response from the Respondent, which indicates that the Respondent does not believe they have a legitimate right and/or interest in the domain name.

B. Respondent

The Respondent, having been duly notified and kept informed of the proceedings by the Center, did not file any Response to the Complaint.

6. Discussion and Finding

To qualify for transfer or cancellation, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the Respondent failed to file a Response, the Panel’s decisions were based upon the Complainant’s assertions and evidence, as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is clear that the Complainant holds several trademark registrations in the UK, dating back to its foundation in 1992, and also one in the European Union, dating back to 1998, in the name “Premier League” covering a wide range of goods and services. Additionally, the Complainant has rights, granted by the England and Wales Football Association, to use the term “F.A.” – the commonly referred to and recognized abbreviation for and also a registered trademark of this organization - in the Complainant’s corporate and trading names. Furthermore, the Complainant has also registered a number of domain names incorporating not only the name “Premier League” but also “F.A. Premier League” including <fapremierleague.co.uk>. The Complainant’s main website is located at: “www.premierleague.com”.

The Respondent incorporates in the domain name in issue, the Complainant’s trademark “PREMIER LEAGUE” with the addition of the letters “FA”. This is clearly confusingly similar. And the addition of the letters “FA” rather than eliminating any confusion, in fact, compounds that confusion because of the rights the Complainant has in the name “Premier League” and also in the abbreviation “F.A” as mentioned above. The elimination of the “dots” after each of the letters is irrelevant for the purposes of confusion. In any case, there is a general stylistic tendency in print not to use dots in abbreviations.

In any event, it is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the 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.

Furthermore, for the purposes of the Policy and the Rules, the Respondent’s domain name is identical to the above-mentioned Complainant’s registered domain name – <fapremierleague.co.uk> - notwithstanding that the Respondent’s domain name is a “.com” level one. See the decision in The Sportsman’s Guide, Inc v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 and, in particular the extract, cited above, where such a difference was held to be legally immaterial.

All in all, consumers and Internet users will be confused and misled into thinking that the domain name in issue belongs to the Complainant, which is not, in fact, the case.

Thus, the Panel concludes that there is no doubt that the domain name in issue if not identical is certainly confusingly similar to the trade or service marks in which the Complainant demonstrably has rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (Article 3 (b)(ix)(2) of the Rules and Article 4 (c) of the Policy), attention must be paid to any of the following circumstances, in particular, but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence that the Respondent has been using or preparing to use the domain name in issue prior to these proceedings for a bona fide offering of goods and services. On the contrary, the Respondent’s website contains links to other online stores offering goods and/or services.

Likewise, the Respondent is not commonly known by the domain name in issue.

It is clear that the Respondent has registered and is using the domain name unfairly to attract and divert traffic to its own website, for its own commercial and financial gain, which otherwise would have gone to the Complainant’s websites. Apart from general harm to the Complainant’s trademark rights and other interests, especially its substantial investment in the Premier League football Competition and related broadcasting and merchandising activities, there is evidence that the Complainant’s valuable trade and service marks have been tarnished through the sponsored link on the Respondent’s website to an online store selling “Sex Toys and Sexy Lingerie” with the ‘strap line’ “make her day”. Having nothing to do with the game of football or the Complainant’s Competition, this is clearly a serious and unjustified misuse of the Complainant’s well-known and valuable trade and service marks.

Again, there is no evidence that the Respondent has been authorized or licensed in any way whatsoever to use the Complainant’s trade and service marks for its own commercial and business purposes. As has been demonstrated, the Complainant has an extensive licensing and merchandising program and the Respondent does not figure in it at all.

Thus, for all these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not exhaustive but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.”

In view of the unauthorized incorporation of the Complainant’s valuable and well-known trade and service marks in the domain name in issue and the references and links in the Respondent’s corresponding website to online stores associated with certain football clubs that participate in the Complainant’s competition, the Respondent is using the domain name to create confusion on the part of consumers and Internet users with a view to reaping commercial and financial gains. The commercial nature of the Respondent’s website is emphasized by its slogan: “What you need, when you want it”. In other words, the Respondent is not operating the website associated with domain name in issue for fun. The Respondent is, therefore, acting in bad faith within the meaning of para. 4(b)(iv) of the Policy.

Furthermore, the unauthorized use of the Complainant’s trade and service marks in the domain name in issue also implies that the Complainant has, in some way, sponsored or endorsed the Respondent’s website and its commercial activities carried on through it, which is not, in fact, the case. This is further evidence of bad faith.

Also, by failing to respond to the Complainant’s ‘cease and desist’ letter of October 14, 2004, and also to answer the Complaint and participate in the present proceedings, this, in the view of the Panel, is additional evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering the domain name in issue in the first place it is reasonable to assume that the Respondent would have taken these opportunities to put forward an answer in defense of its actions.

Again, the fact that the Respondent’s website does not contain any contact details also suggests some element of bad faith on its part.

Based on all the above, the Panel, therefore, concludes that the domain name in dispute was registered and is being used by the Respondent in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fapremierleague.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: February 9, 2005