Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 5681

The Arsenal Football Club PLC v EDOCO Limited

Decision of Independent Expert

1. Parties

Complainant: The Arsenal Football Club PLC

Country: GB

Respondent: EDOCO Limited

Country: GB

2. Domain Names

arsenalfc.co.uk ("the Domain Name")

3. Procedural Background

28 April 2008:	Complaint lodged with Nominet electronically
30 April 2008:	Hardcopy complaint received by Nominet
1 May 2008:	Nominet forwarded complaint to Respondent
28 May 2008:	No response received by Nominet

On 12 June 2008 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any)

None

5. The Facts

The Complainant is one of the world's leading professional football teams. It owns numerous registered trade marks for ARSENAL including UK trade mark 1583194 dated 24 August 1994 in class 41.

The Respondent registered the Domain Name on 1 April 2008.

As of 24 April 2008, the Domain Name resolved to a parking page with a directory of sponsored links which, for the most part, related to the Complainant and other Premiership football clubs.

6. The Parties' Contentions

Complaint

The Domain Name wholly incorporates the Complainant's trade mark plus the addition of the letters "f" and "c". These letters could be an acronym for "football club". This addition constitutes a well known abbreviation that can be considered as closely associated with the Complainant's product.

The Complainant's registered trademarks predate registration of the Domain Name.

The Respondent is not licensed or permitted to use the Complainant's trade marks for the registration of domain names. There is no relationship between the Respondent and the Complainant. The Respondent is not known as "Arsenalfc".

The Respondent is currently generating click-through revenue through a pay per click website. The use of a parking page of this nature does not constitute legitimate non-commercial or fair use of the Domain Name. Nor can it constitute a genuine offering of goods or services as it involves taking unfair advantage of the Complainant's rights.

The Respondent cannot provide any conceivable legitimate reason as to why it registered the Domain Name. It constitutes a blocking registration against the Complainant's ARSENAL mark.

The Respondent's use of the Domain name is confusing people into believing that the Domain Name is either authorised, affiliated or otherwise connected to the Complainant. The website contains consistent references to "Arsenal" and "football" throughout its pages. Any internet user who attempts to locate the Complainant online and adds the letters "fc", commonly used for "football club", will be mistakenly taken to the Respondent's website which they may believe is promoted, sponsored or endorsed by the Complainant. Likelihood of confusion is sufficient to constitute an abusive registration.

The Respondent is aware of the Complainant as the website contains sponsored links to the Complainant's own website. The Respondent is deliberately using the fame of the Complainant's mark to generate traffic and revenue for its website.

The Complainant's use of the Domain Name to promote other football teams, ticket selling facilities and other businesses is disrupting the business of the Complainant within the scope of the Policy.

The presumption of abusive registration in accordance with paragraph 3(c) of the Policy applies. The Respondent appears in the Nominet 3 Cases Respondent Table.

The Domain Name has been registered and is being used in a similar manner to other domain names of the Respondent which take advantage of registered and unregistered trade mark rights.

Response

No response was filed.

7. Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Names and, second, that the Domain Names, in the hands of the Respondent, are abusive registrations (as defined in paragraph 1 of the DRS Policy).

Complainant's Rights

The Complainant has undoubtedly acquired rights in the name ARSENAL by virtue of its registered trade marks as well as common law rights deriving from its extensive activities as an internationally-renowned football club over many years.

The Domain Name differs from the trade mark only by the addition of the letters "fc". This acronym is insufficient to distinguish the Domain Name from the Complainant's trade marks; in fact it enhances the connection as "fc" is a well-known abbreviation for "football club".

The Complainant has established rights in a name or mark which is similar to the Domain Name.

Abusive Registration

Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS 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."

Paragraph 3(c) of the Policy states: "There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c))."

This provision applies here as, according to the "3 Cases Respondent Table" on Nominet's website, there have been at least six successful DRS cases against the Respondent:

Edoco Ltd	DRS 05652	follifollie.co.uk
Edoco Ltd	DRS 05484	aolmail.co.uk
Edoco Ltd	DRS 05125	heli-beds.co.uk
Edoco Ltd	DRS 04824	planetdance.co.uk
Edoco Ltd	DRS 04522	pjhayman.co.uk
Edoco Ltd	DRS 05624	rochvalley.co.uk

All of these decisions were made within the last two years.

Paragraph 4(c) states: "If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration."

The Respondent has not filed a Response and has therefore failed to rebut the presumption of abusive registration.

8. Decision

The domain name arsenalfc.co.uk should be transferred to the Complainant.

Adam Taylor Date