Nominet UK Dispute Resolution Service
DRS 04232
The F.A. Premier League Limited
–v–
Premier League Tickets Limited
Decision of Independent Expert
1. Parties:
Complainant: | The F.A. Premier League Limited |
Country: | GB |
Respondent: | Premier League Tickets Limited |
Country: |
GB |
2. Domain Name: premierleaguetickets.co.uk ('the Domain Name').
3. Procedural Background:3.1 The Complaint was lodged with Nominet on the 21st of November 2006, with papers being received and validated by Nominet on the 22nd of November. The Respondent was informed of the Complaint by letter on that same day. The Respondent entered a Response which was received by Nominet on the 12th of December 2006. The Complainant was advised by Nominet of this Response on the 13th of December and on the 27th of December 2006 a Reply was received from the Complainant.
3.2 Nominet initiated its mediation procedure on the 2nd of January 2007. The mediation procedure proved unsuccessful and on the 17th of January 2007 Nominet wrote to the Complainant informing them that the matter could be referred to an Independent Expert for decision. On the 26th of January 2007, the Complainant paid Nominet the required fees for a decision of an expert in accord with Paragraph 7 of the Nominet (UK) Dispute Resolution Service Policy ('the Policy'). On the 29th of January 2007 Nominet contacted myself (Andrew Murray) to inquire whether I might provide an independent decision in this dispute. I formally confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as an Expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. On the 5th of February 2007 I was appointed as Independent Expert for this dispute.
4. Outstanding Formal/Procedural Issues (if any):
4.1 There are no outstanding formal/procedural issues.
5. The Facts5.1 The Complainant was formed on the 20th of February 1992.
5.2 The Complainant is registered at Companies House under the name 'The Football Association Premier League' and has been since the 27th of May 1992.
5.3 The Complainant is a company whose members are the football clubs which participate in the Football Association Premier League competition, currently known as the Barclays Premiership, which is the elite league of football in England and Wales.
5.4 The Complainant organises and acts as governing body of the Barclays Premiership and has done so in each football season since 1992/1993.
5.5 The Complainant's main website (www.premierleague.com) attracted 3 million users, and 167 million hits during August 2006, and during September 2006 attracted 3.1 million users and 147 million hits.
5.6 The Respondent was registered at Companies House, following a name change, on the 23rd of June 1998.
5.7 The Respondent was established by friends with the idea to create an internet-based business to provide a bespoke ticket sourcing service for all major sporting events using an already established and reputable network of supply chain partners.
5.8 The idea of using the name 'premier league' was to convey the fact that the Respondent was to be focussed on premier sporting events such as test matches, rugby internationals, the Ryder Cup and the British Grand Prix.
5.9 The Respondent ceased to trade as of the 8th of September 2002.
5.10 As part of the Respondent's business, a website was created and the domain name 'premierleaguetickets.com' was registered with Network Solutions on the 13th of February 1999. The registration has since been extended until the 13th of February 2010.
5.11 The Domain Name was registered on the 29th of October 2002 and has been extended until the 29th of October 2008.
5.12 The website accessed through the Domain Name was closed down on the 1st of October 2004 and has not been activated since.
6. The Parties' Contentions
Complainant:
The Complainant contends that:
The Complainant has rights in the Domain Name because:6.1.1 The Football Association Premier League Limited was formed in 1992 and has organised successive seasons of the Football Association Premier League competition in each football season since 1992/1993. The Complainant is registered at Companies House under the name The Football Association Premier League and has been since May 27, 1992. The Complainant is commonly and inevitably referred to as 'The F.A. Premier League' and 'The 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 F.A. Premier League' and 'The Premier League' is an almost automatic adaptation.
6.1.2 The Complainant is the registered proprietor of the UK and Community Trade Mark (CTM) applications and registrations for the mark 'Premier League' and for marks containing the term 'Premier League'. These comprise: (1) 'Premier League', UK registration no.1530592, filed 23 March 1993, registered 30 April 1997 (2) 'Premier League', UK registration no.2147892, filed 14 October 1997, registered 5 May 1999 (3) 'Premier League', UK registration no.2147888, filed 14 October 1997, registered 5 May 1999 (4) 'Premier League', UK application no. 2422847, filed 25 May 2006 (5) 'Premier League', UK application no. 2423713, filed 6 June 2006 (6) 'The F.A. Premier League', UK application no. 2103124, filed 18 June 1996, registered 10 April 1998 (7) 'Barclays English Premier League', UK application no.2374742, filed 29 April 2004 (8) 'Premier League', CTM application no.001609536, filed 13 April 2000 (9) 'Premier League', CTM Registration no.000979153, filed 6 November 1998, registered 20 January 2000 (10) 'Premier League', CTM application no.005153077, filed 5 June 2006 and (11) 'Barclays English Premier League', CTM Registration no.003805793, filed 29 April 2004, registered 1 September 2005.
6.1.3 The Complainant has registered a number of domain names incorporating the term 'Premier League':
www.premierleague.com
www.premierleague.co.uk
www.premier-league.co.uk
www.fapremierleague.co.uk
www.fapremierleague.net
www.premier-league.com
6.1.4 The Domain Name is similar to and an infringement of the trade mark registrations and the domain names held by the Complainant, particularly the domain names www.premierleague.com, www.premierleague.co.uk, and www.premier-league.co.uk.www.fapremierleague.com.
6.1.5 The Domain Name is similar to the unregistered and/or common law rights, which the Complainant holds in respect of the term 'Premier League'.
6.1.6 Wherever the words 'Premier League' are used, there is immediate recognition of the Complainant's identity and status and the competition it organises. The Complainant is recognised as one of the elite football leagues in the world with an unparalleled structure and following.
6.1.7 The Respondent has no apparent rights to the Domain Name.
The Domain Name in the hands of the Respondent is abusive as:6.1.8 The similarity between the Complainant's Trade Marks and domain names and the Respondent's Domain Name creates a likelihood of confusion on the part of the public which includes the likelihood of association with the Trade Marks and this constitutes infringement contrary to section 10(2) of the Trade Marks Act 1994 and contrary to Article 9.1(b) of the Community Trade Mark Regulation.
6.1.9 The Complainant's Trade Marks have a reputation within the United Kingdom and the EU. Any use by the Respondent of the Domain Name will also take unfair advantage of, and be detrimental to, the distinctive character of the Trade Marks, contrary to section 10(3) of the Trade Marks Act 1994 and contrary to Article 9.1(c) of the Community Trade Mark Regulation.
6.1.10 It is the Complainant's belief that the Domain Name has been registered by the Respondent in bad faith in an attempt to either:
(a) take advantage of the Complainant's reputation and goodwill to attract users to the website for the Respondent's own commercial gain;
(b) prevent the Complainant from registering the same or a similar domain name;
6.1.11 The purpose for which the site has in the past been used and/or may in the future be used includes or may include the sale of tickets to football matches in the Barclays Premiership Competition organised by the Complainant. Use of the Domain Name in that regard may lead customers to consider that such sales:(c) sell the Domain Name for a value in excess of out-of-pocket expenses.
(a) are conducted by or on behalf of the Complainant;
(b) are authorised or condoned by the Complainant;
6.1.12 Any use of the Domain Name would be a deliberate attempt on the Respondent's part to confuse the general public into believing and undoubtedly be understood by the general public to mean that the Respondent is officially authorised and/or connected and/or associated with the Complainant in a material way, which is clearly incorrect.(c) are valid and legal on account of such official endorsement. In addition to infringing the Complainant's trade mark rights and/or passing off against the rights held by the Complainant.
6.1.13 The Domain Name constitutes therefore an instrument of deception. The potential use of the Domain Name will damage the Complainant in terms of the damage to the Complainant's goodwill by association of that goodwill with any services to be provided via the Domain Name, which do not have the Complainant's endorsement.
6.1.14 If, as appears likely, the site is intended to be used to sell tickets for Premier League football matches, s.166 of the Criminal Justice and Public Order Act 1994 makes it an offence for an unauthorised person 'to sell, or offer or expose for sale, a ticket for a designated football match in any public place or place to which the public has access or, in the course of a trade or business, in any other place'. For this purpose a person is 'unauthorised' unless he is authorised in writing to sell tickets for the match by the home club or by the organisers of the match. As a result any endorsement alleged to have taken place by the Complainant of any such site would cause serious and substantial damage to the Complainant's reputation and goodwill and in addition be a clear breach of the Criminal Justice and Public Order Act 1994. Any member of the public attempting to buy tickets legally and in good faith will be misled into believing that he/she is purchasing tickets legally from a site, which is legally authorised and officially sanctioned by the clubs and the match organisers to sell tickets. Instead, however, such members of the public are purchasing tickets, which are being sold illegally and unofficially by ticket touts.
Respondent:
The Respondent contends that:6.2.1 Premier League Tickets Ltd. was registered at Companies House, following a name change, on the 23rd of June 1998.
6.2.2 The idea of using the name 'premier league' was to convey the fact that the Respondent was only going to be focussed on premier sporting events such as test matches, rugby internationals, the Ryder Cup, British Grand Prix, etc. At all times the business was conducted in a legitimate manner with all statutory obligations being met.
6.2.3 During the lifetime of the website the Respondent was strident in its efforts to ensure that the 'man in Clapham omnibus' was unable to confuse the Respondent's activities with those of the FA Premier League.
6.2.4 The 'About Us' page included a photograph of three of the directors and included the company number and the registered office. The home page included hyperlinks in the form of rugby, cricket and tennis balls and a motor racing helmet. Every effort was made to ensure that the common man had no reason to believe that the website was officially authorised and/or connected and/or associated with the FA Premier League in a material way.
6.2.5 At no time has the Respondent reproduced any of the logos legitimately registered by the Complainant.
6.2.6 The Complainant's trade mark registration of the words 'Premier League' is specific in its scope and does not include tickets.
6.2.7 'Premier League' is a generic term and is used in common parlance as evidenced by the Complainant's need to register itself as the F.A. Premier League Limited.
6.2.8 The Respondent's website has not been active since the 1st of October 2004. The Respondent has therefore refrained from using the Domain Name since that date.
6.2.9 At no point since its incorporation has the Respondent directly and/or indirectly made any representation of any nature to the effect that or which can be construed to the effect that there is any connection between the Respondent and the Complainant or any business operated by or in connection with the Complainant.
6.2.10 No attempt has been made by the Complainant in its earlier correspondence with the Respondent to request the directors of the Respondent to cease trading in the name of Premier League Tickets Ltd. or to effect a change of the company name. This matter is in direct opposition to the Complainant's claims with regard to the Domain Name.
6.2.11 At no point since registration has the Respondent or any of its officers offered the Domain Name for sale. Furthermore, at no time has the Respondent written to the Complainant offering the Domain Name for sale.
6.2.12 The holders of Trade Marks are duty bound to challenge any perceived breach of their Trade Marks in a timely fashion following notice that a potential breach has occurred. Failure to act accordingly is tantamount to acceptance that no breach has deemed to have occurred. The Respondent is advises that it is aware of the fact that spokesmen from the FA, have been quoted in a Sunday newspaper (News of the World dated 18 April 1999, page 72) as being cognisant of the fact that the Respondent existed and operated a website at that time. A period of seven years would be deemed to be an excessive period for any investigation to be completed. The Complainant's actions could be considered to be tantamount to tacit agreement that the Respondent's actions did not warrant any action. Such action if taken would have resulted in the Respondent considering its actions and reacting in accordance with its responsibilities under the laws of the land.
6.2.13 The Respondent contests the Complainant's claim of abusive registration based on Section 4(a)(i)(B) of Nominet's Dispute Resolution Service Policy which states '…been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name'. We consider that the domain name 'premierleaguetickets.co.uk', is a legitimate domain name for a company registered at Companies House as Premier League Tickets Limited. This assertion is reinforced by the Complainant's constant failure to request the directors of the Respondent to change the company's name.
Reply:
The Complainant was offered the opportunity to reply to the response and on the 22nd of December 2006 these further replies were entered on behalf of the Complainant:6.3.1 The Complainant acknowledges that there are other premier leagues within the world of sport, but reiterates that if a member of the general public (whether a football enthusiast or otherwise) was asked what/who the 'Premier League' was they would automatically identify the Complainant because of the reputation and goodwill which the Complainant has built up in the mark as a consequence of the worldwide broadcasting and media coverage which takes place. If the Respondent wanted to convey that it only focussed on 'premier sporting events' why not call itself 'Premier Sporting Events Limited' or 'Premier Sporting Tickets Limited' and register the domain name www.premiersportingeventtickets.co.uk or www.premiersportingtickets.co.uk. The only possible reason for choosing the name Premier League Tickets Limited and registering the Domain Name was to benefit from the reputation and goodwill which the Complainant has built up in the name.
6.3.2 Any person coming across the disputed domain name and the website operated from it would undoubtedly assume some form of connection and/or authorisation from the Complainant, particularly if football tickets for Premier League football matches were for sale - which they obviously have been in the past as was highlighted by the Respondent within their Response. Even if at any point football tickets were not being sold through the website, any person seeking tickets to Premier League football matches through the unorthodox route of the internet, upon seeing the disputed domain name, would assume that tickets to Premier League football matches would be available from the website and would inevitably visit the website seeking to purchase the same. Once there, the person may well purchase tickets to other events. The Respondent is therefore clearly trying to divert web traffic to its website by suggesting through the disputed domain name that there is a deemed connection with the Complainant with the hope that once there the web visitor will purchase tickets to some other event. Given the difficulty in obtaining certain Premier League football tickets the frequency of these occurrences is likely to be high.
6.3.3 'The company ceased to trade as of the 8th of September 2002……The Domain Name was registered on the 29th of October 2002 and has been extended until the 29th of October 2008'. If the company ceased to trade in September 2002 the question arises as to why was the disputed Domain Name still active until the 1st of October 2004. It seems questionable to the Complainant that the Respondent would register the Domain Name after the company has ceased to trade, let alone extend the registration of the same, if the Respondent did not intend to trade again within the same business sphere. It is for this reason that the Complainant has submitted this Complaint as for the Respondent to trade in future within the same sphere would raise a severe risk of confusion by members of the public that the website is endorsed by, authorised by and/or in some way materially connected with the Complainant; or in the alternative the Respondent would benefit from the goodwill and reputation of the Complainant by directing traffic away from the Complainant's and official football ticket sales sources to the Respondent's website for the reasons explained above.
6.3.4 It appears from the Response that the Respondent is trying to rely on the absence of positive content, such as not including the Complainant's copyright works or trade marks or simply using icons of cricket and tennis balls as a means of avoiding confusion, which would simply not be sufficient. The Respondent does not confirm whether disclaimers or notices were contained within the website and in any event, any notices or disclaimers placed on the website would not be sufficient to remove the fact that there was clearly an initial confusion on the part of the common man when accessing the Domain Name, namely that they believed there to be some association, material connection and/or endorsement of the site. Furthermore, such notices and disclaimers would not address the fact that there has been a diversion of traffic to the Respondent's domain name simply as a result of the initial confusion of the common man, whether this relates in a sale of football tickets or other sporting event tickets the Respondent has undoubtedly benefited from the goodwill and reputation which the Complainant holds in the 'Premier League' mark.
6.3.5 Having conducted a thorough search of the remaining files and archives of the Complainant it appears that there is no record of any previous contact, investigation and/or dealings with the Respondent.
7. Discussion and Findings
7.1 General
According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities that:
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.2 Complainant's Rightsii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.2. Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question.
7.2.2 In this case, the Complainant relies upon their registered rights in the marks 'Premier League', 'The F.A. Premier League' and 'Barclays English Premier League' and in their domain names which include: www.premierleague.com and www.premierleague.co.uk. The Complainant has demonstrated that they hold a series of trade mark registrations at the UK Trade Marks Registry and at EU Office for Harmonisation, in the term 'Premier League' all of which predate the registration of the Domain Name.
7.2.3 The question remains whether the Domain Name is sufficiently similar to the Complainant's name and mark?
7.2.4 As noted by the Complainant in their Complaint: The only significant difference between the Domain Name and www.premierleague.co.uk and www.premier-league.co.uk [is] the addition of the term 'tickets'.'
7.2.5 The Respondent claims that 'the Complainant's trade mark registration of the words 'Premier League' is specific in its scope and does not include tickets' and further ''Premier League' is a generic term and is used in common parlance as evidenced by the Complainant's need to register itself as the F.A. Premier League Limited'.
7.2.6 Despite the claims of the Respondent it is clear that the Complainant does have rights in the name 'Premier League', as distinct from 'The F.A. Premier League' as it has several Trade Mark Registrations in the term 'Premier League', as well as ownership of several domain names, including www.premierleague.co.uk which was registered considerably in advance of the date of registration of the Domain Name.
7.2.7 The only remaining issue is whether the addition of the term 'tickets' is sufficient to distinguish the Respondent's Domain Name from the Complainant's registered marks and domain names.
7.2.8 A similar issue was addressed in Nokia Corporation v Andrew Stone [2001] DRS 68 where the expert examined the addition of the three letter term GSM in addition to the registered trade mark of the Complainant. While the expert noted that '[n]ot every combination of three letters added to NOKIA would render the composite word similar to NOKIA for the purpose of making a comparison under these rules' he held that 'the addition of a well known 3 letter abbreviation which describes features closely associated with products sold by mobile telephone manufacturers such as the Complainant is such that word NOKIAGSM is considered similar to NOKIA'.
7.2.9 Applying this principle, the Expert finds that it would be quite normal to associate the term 'tickets' with the business of the F.A. Premier League. And that therefore the term 'premierleaguetickets' is similar to the term 'Premier League'.
7.2.10 The Expert is satisfied that the Complainant has rights in respect of the mark 'Premier League' which is sufficiently similar to the Domain Name in question. Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.
7.3 Abusive Registration
Paragraph 1 of the Policy defines 'Abusive Registration' as:-
'a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.'
Under paragraph 3(a) of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant have indicated that they believe that in particular they may make out claims under paragraphs 3(a)(i)(A):
The Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
3(a)(i)(B)
The Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;
And further under paragraph 3(a)(ii):
7.3.1 Paragraph 3(a)(i)(A)Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7.3.1 In making their claim under paragraph 3(a)(i)(A), the Complainant makes a bald assertion that: 'It is the Complainant's belief that the Domain Name has been registered by the Respondent in bad faith in an attempt to: 'sell the Domain Name for a value in excess of out-of-pocket expenses' (Para. 6.1.10(c)).
7.3.1 The Complainant offers no evidence in support of this claim and in their Response the Respondent replies: 'At no point since registration has the Respondent or any of its officers offered the domain names for sale. Furthermore, at no time has the Respondent written to the Complainant offering the domain names for sale.' (Para. 6.2.11).
7.3.1 I find that there is insufficient evidence to support a claim that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name, and therefore reject the claim under paragraph 3(a)(i)(A) of the Policy.
7.3.2 Paragraph 3(a)(i)(B)
7.3.2 In making their claim under paragraph 3(a)(i)(B), the Complainant asserts: 'It is the Complainant's belief that the Domain Name has been registered by the Respondent in bad faith in an attempt to prevent the Complainant from registering the same or a similar domain name' (Para. 6.1.10(b)).
7.3.2 As with the claim made under paragraph 3(a)(i)(A), the Complainant offers no evidence in support of this claim. In their Response the Respondent replies: 'The idea of using the name 'premier league' was to convey the fact that we were only going to be focussed on premier sporting events such as test matches, rugby internationals, the Ryder Cup, British Grand Prix, etc. At all times the business was conducted in a legitimate manner with all statutory obligations being met.' (Para.6.2.2).
7.3.2 Again I find that there is insufficient evidence to support a claim that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights, and therefore reject the claim under paragraph 3(a)(i)(B) of the Policy.
7.3.3 Paragraph 3(a)(ii)
7.3.3 In making their claim under paragraph 3(a)(ii), the Complainant makes several assertions:
- 'The similarity between the Complainant's trade marks and domain names and the Respondent's Domain Name creates a likelihood of confusion on the part of the public which includes the likelihood of association with the Trade Marks and this constitutes infringement contrary to section 10(2) of the Trade Marks Act 1994 and contrary to Article 9.1(b) of the Community Trade Mark Regulation.' (Para. 6.1.8)
- The purpose for which the site has in the past been used and/or may in the future be used includes or may include the sale of tickets to football matches in the Barclays Premiership Competition organised by the Complainant. Use of the Domain Name in that regard may lead customers to consider that such sales:
(a) are conducted by or on behalf of the Complainant;
(b) are authorised or condoned by the Complainant;
(c) are valid and legal on account of such official endorsement. (Para. 6.1.11)
- Any use of the Domain Name would be a deliberate attempt on the Respondent's part to confuse the general public into believing and undoubtedly be understood by the general public to mean that the Respondent is officially authorised and/or connected and/or associated with the Complainant in a material way, which is clearly incorrect. (Para 6.1.12)
- During the lifetime of the website the Respondent was strident in its efforts to ensure that the 'man in Clapham omnibus' was unable to confuse the Respondent's activities with those of the FA Premier League. (Para 6.2.3)
- The 'About Us' page included a photograph of three of the directors and included the company number and the registered office. The home page included hyperlinks in the form of rugby, cricket and tennis balls and a motor racing helmet. Every effort was made to ensure that the common man had no reason to believe that the website was officially authorised and/or connected and/or associated with the FA Premier League in a material way. (Para 6.2.4)
- At no time has the Respondent reproduced any of the logos legitimately registered by the Complainant. (Para 6.2.5)
- The Complainant's trade mark registration of the words 'Premier League' is specific in its scope and does not include tickets. (Para 6.2.6)
- 'If a member of the general public (whether a football enthusiast or otherwise) was asked what/who the 'Premier League' was they would automatically identify the Complainant because of the reputation and goodwill which the Complainant has built up in the mark as a consequence of the worldwide broadcasting and media coverage which takes place. If the Respondent wanted to convey that it only focussed on 'premier sporting events' why not call itself 'Premier Sporting Events Limited' or 'Premier Sporting Tickets Limited' and register the domain name www.premiersportingeventtickets.co.uk or www.premiersportingtickets.co.uk. The only possible reason for choosing the name Premier League Tickets Limited and registering the Domain Name was to benefit from the reputation and goodwill which the Complainant has built up in the name. (Para. 6.3.1)
- Any person coming across the disputed domain name and the website operated from it would undoubtedly assume some form of connection and/or authorisation from the Complainant, particularly if football tickets for Premier League football matches were for sale. (Para. 6.3.2)
- 'The company ceased to trade as of the 8th of September 2002……The Domain Name was registered on the 29th of October 2002 and has been extended until the 29th of October 2008'. If the company ceased to trade in September 2002 the question arises as to why was the disputed domain name still active until the 1st of October 2004. It seems questionable to the Complainant that the Respondent would register the Domain Name after the company has ceased to trade, let alone extend the registration of the same, if the Respondent did not intend to trade again within the same business sphere. It is for this reason that the Complainant has submitted this Complaint as for the Respondent to trade in future within the same sphere would raise a severe risk of confusion by members of the public that the website is endorsed by, authorised by and/or in some way materially connected with the Complainant; or in the alternative the Respondent would benefit from the goodwill and reputation of the Complainant by directing traffic away from the Complainant's and official football ticket sales sources to the Respondent's website for the reasons explained above.' (Para.6.3.3)
- It appears from the Response that the Respondent is trying to rely on the absence of positive content, such as not including the Complainant's copyright works or trade marks or simply using icons of cricket and tennis balls as a means of avoiding confusion, which would simply not be sufficient. The Respondent does not confirm whether disclaimers or notices were contained within the website and in any event, any notices or disclaimers placed on the website would not be sufficient to remove the fact that there was clearly an initial confusion on the part of the common man when accessing the Domain Name, namely that they believed there to be some association, material connection and/or endorsement of the site. Furthermore, such notices and disclaimers would not address the fact that there has been a diversion of traffic to the Respondent's domain name simply as a result of the initial confusion of the common man, whether this relates in a sale of football tickets or other sporting event tickets the Respondent has undoubtedly benefited from the goodwill and reputation which the Complainant holds in the 'Premier League' mark. (Para.6.3.4)
7.3.3 Although there are several 'Premier' competitions, including the Scottish Premier League (or SPL), and the Guinness Premiership (Rugby Union), the term 'Premier League' in everyday parlance is taken to refer specifically to the F.A. Premier League.
7.3.3 In their Response, the Respondents reply that 'The idea of using the name 'premier league' was to convey the fact that we were only going to be focussed on premier sporting events such as test matches, rugby internationals, the Ryder Cup, British Grand Prix'. None of these sporting events are though usually referred to as 'Premier League' events. The term 'Premier League' would have to be generic for a use of the term such as suggested by the Respondents and a quick review of the Oxford English Dictionary and a search on Google reveal that the ordinary usage of 'Premier League' is in relation to specific events, specifically from the UK perspective the F.A. Premier League, the SPL and the Premier League Snooker competition organised by the World Professional Billiards and Snooker Association.
7.3.3 As a result I support the Complainant's assertion that 'the similarity between the Complainant's trade marks and domain names and the Respondent's Domain Name creates a likelihood of confusion on the part of the public which includes the likelihood of association with the Trade Marks' (Para. 6.1.8).
7.3.3 In their Response the Respondents refute this assertion, claiming that in practice the Respondent was strident in its efforts to ensure that the 'man in Clapham omnibus' was unable to confuse the Respondent's activities with those of the FA Premier League. (Para 6.2.3). They support this by claiming that '[e]very effort was made to ensure that the common man had no reason to believe that the website was officially authorised and/or connected and/or associated with the FA Premier League in a material way.' (Para 6.2.4).
7.3.3 There is though no evidence of the form the website took while in use and as a result I must decide whether there is a risk of a breach of Paragraph 3(a)(ii) on the basis of the evidence laid before me. Before deciding this I should point out that Paragraph 3(a)(ii) states that 'the Respondent is using the Domain Name', whereas as the Respondent noted in their Response: 'The website was closed down on the 1st of October 2004 and has not been activated since.'. The Complainant in their Reply makes an strong rebuttal of this though by noting: 'The company ceased to trade as of the 8th of September 2002……The Domain Name was registered on the 29th of October 2002 and has been extended until the 29th of October 2008'. If the company ceased to trade in September 2002 the question arises as to why was the disputed domain name still active until the 1st of October 2004. It seems questionable to the Complainant that the Respondent would register the Domain Name after the company has ceased to trade, let alone extend the registration of the same, if the Respondent did not intend to trade again within the same business sphere. It is for this reason that the Complainant has submitted this Complaint as for the Respondent to trade in future within the same sphere would raise a severe risk of confusion by members of the public that the website is endorsed by, authorised by and/or in some way materially connected with the Complainant; or in the alternative the Respondent would benefit from the goodwill and reputation of the Complainant by directing traffic away from the Complainant's and official football ticket sales sources to the Respondent's website for the reasons explained above.' (Para.6.3.3).
7.3.3 Taking account of all the evidence presented I find that on the balance of probabilities the risk of confusion given the specific nature of the Domain Name, and the ordinary usage of the term 'Premier League' is sufficiently high to support the contention of the Complainant. The claims as to specific disclaimers being impossible to verify means they must be discounted.
7.3.3 Accordingly I find that there is sufficient evidence to support a claim that there are Circumstances indicating that the Respondent may use, or may have used, the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, and allow the claim under paragraph 3(a)(ii)of the Policy.
7.3.4 Instrument of Fraud
7.3.4 Having found the Complainant has made a successful claim under paragraph 3(a)(ii) of the Policy the issue of instruments of fraud does not require specific examination.
7.4 Respondent's Response
7.4.1 The Respondent relies upon a defence under paragraph 4(a)(i)(B) of the Policy, stating that their registered name is 'Premier League Tickets Ltd.' and stating that 'We consider that the domain name 'premierleaguetickets.co.uk', is a legitimate domain name for a company registered at Companies House as Premier League Tickets Limited.' (Para 6.2.13)
7.4.2 The Complainant in their reply does not reject or deny this assertion, which is evidenced by an extract from the Register at Companies House. Instead the Complainant attempts to challenge the intent of the Respondent in registering the Domain Name: 'The company ceased to trade as of the 8th of September 2002……The Domain Name was registered on the 29th of October 2002 and has been extended until the 29th of October 2008'. If the company ceased to trade in September 2002 the question arises as to why was the disputed domain name still active until the 1st of October 2004.' (Para 6.3.3)
7.4.3 Although the intent of the Respondent is indeed unclear from this timeline there is no doubt that the Respondent is as clear a case as could be imagined by paragraph 4(a)(i)(B), as their registered name 'Premier League Tickets Ltd' matches almost identically the Domain Name. If I am therefore to rule against the Respondent I require strong evidence that the Respondent is in bad faith in their registration. The Complainant has gathered a strong circumstantial case, as is evidenced by the earlier discussion, but ultimately the Domain Name is not currently in use, and has not been for a period in excess of two years. Further there is no compelling evidence that during the period it was in use there was any bad faith on the part of the Respondent. Thus while I find that 'on the balance of probabilities the risk of confusion given the specific nature of the Domain Name, and the ordinary usage of the term 'Premier League' is sufficiently high to support the contention of… [an abusive registration]' (Para 7.3.3.10), I find on further analysis that the Respondent is entitled to rely upon the defence offered by paragraph 4(a)(i)(B), there being no actual evidence of confusion occurring, and more importantly no evidence that the Respondent was acting in bad faith in either registering or making use of the Domain Name.
7.5 Finding7.5.1 Accordingly, the Expert finds that the Domain Name is not an Abusive Registration as defined by paragraph 1 of the Policy on the basis that the Respondent has been commonly known by a name which is identical to the Domain Name and there is no evidence that the Respondent has been actually abusive in their use of the Domain Name.
8. Decision:8.1 In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name but that the Domain Name, in the hands of the Respondent, is not an Abusive Registration, the Expert directs that the Complaint in respect of the Domain Name be refused.
Andrew Murray Date: 17 February 2007