WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fulham Football Club (1987) Limited v. fulhamfc.com/Belize Domain Services
Case No. D2001-0335
1. The Parties
The Complainant in this administrative proceeding is Fulham Football Club (1987) Limited, a private limited company, incorporated in the United Kingdom and having its principal place of business at Craven Cottage, Stevenage Road, London SW6 6HH, UK.
The Respondents in this Administrative Proceeding is fulhamfc.com and Belize Domain Services both with an address at PO Box 28, San Pedro Town, Ambergris Caye, Belize.
2. The Domain Names and Registrar
The disputed domain name is <fulhamfc.com>. The Registrar of this domain name is Network Solutions Inc., of Hemdon, Virginia, United States of America.
By registering the subject domain name with the Registrar, the Respondents agreed to the resolution of disputes pursuant to the Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on April 19, 2001 by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 7, 2001 by email and on March 8, 2001 by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on March 13, 2001. On March 16, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding and notified the Respondents that their Response would be due by April 4, 2001. The Respondents did not file a response by the due date.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainantís material;
The Complainant was founded as a professional football club in 1898, although it had existed for a number of years previously as an amateur football club.
Prior to 1907, the Complainant competed in the Southern League, the competition immediately below the first class competition, the Football League. In 1907, the Complainant entered the Football League. It has been a member of the Football League continuously since that date. It also has competed during that period for the FA Cup and the League Cup. During that period, it had many claims to fame including winning the Third Division Championship in 1931-32 and 1970-71 and the Second Division Championship in 1948-49 and 1981-82.
The Complainant remained in the top flight until 1968.
Its fortunes dipped subsequently, but the Complainant retained a loyal and passionate fan-base, which has been rewarded in recent years by a stark improvement in the Complainantís performances.
The Complainant reached the Second Division play-offs in 1998-99 and won the Second Division Championship in 1999-2000, thereby securing promotion to the First Division.
The Complainant reached the FA Cup Final in 1975. It also reached the semi-final of the FA Cup in 1936, 1957-58 and 1961-62 and the sixth round of the FA Cup in 1947-48.
Many famous international players have played for the Complainant, including Bobby Moore, George Best, Rodney Marsh, Ray Houghton, Bobby Robson, Johnny Haynes (who captained England while a player with the Complainant) and George Cohen (who played right back for Englandís 1966 World Cup winning team).
The Complainantís contribution to football has been evident in many ways over the years.
In May 1997, Mr Mohammed Al Fayed acquired ownership of the club. With Mr Al Fayedís backing, the Complainant has been able to able to appoint coaches and sign players of world-renown.
The Complainant has a large following of fans, which has been increasing in recent years.
The Complainant has spent significant time and other resources in developing and exploiting its goodwill by developing a commercial program based on the Fulham FC "brand." In particular, the program is based on the word marks "Fulham FC" and "FFC", and on the club crest, which is a "heraldic" Ė style shield on top of which are the words "Fulham FC" in a scroll. The current crest is based on a previous, simpler design of the club crest. The current crest adds the words "Established 1879" under the scroll. In both crests the word mark "Fulham FC" has pride of place.
The Complainant has entered into a commercial arrangement with a mobile phone provider, whereby the mobile phone provider pays a license fee in return for the exclusive right to use the Complainantís trademark rights and other intellectual property rights in connection with mobile phone products.
The Complainantís copyright rights, design and trade mark rights in the Complainant crest include UK Trade Mark registration number 2174872 in classes 9, 14, 16, 18, 20, 21, 24, 25, 28, 41, and class 42, which covers the provision of access to and information from the Internet on the activities of the Complainant.
The Complainant constantly is looking to expand and improve its commercial program, which includes establishing and expanding its presence on the internet. It operates an official website at "fulhamfc.co.uk". The Complainant sought to make use of its intellectual property rights in the "Fulham FC" mark by registering the "fulhamfc.com" domain name, but discovered that that domain name had been registered on May 30, 1998.
The Respondent Belize Domain Services is listed in the Network Solutions database as the administrative, technical and billing contact in respect of the "fulhamfc.com" domain name.
On May 3, 2000, the Complainantís solicitors sent the to the Respondent Belize Domain Services a "cease and desist" letter, setting out the Complainantís intellectual property rights, as well as the nature of the breach of those rights arising from the registration of the subject domain name. The Respondent was requested to transfer the registration of the subject domain name to the Complainant.
The Respondent Belize Domain Services responded to the May 3, 2000 letter by e-mail dated May 24, 2000 stating that: it had registered the domain name on behalf of its client (although it did not specify who that client was); it was its clientís intention, when funded, to operate a "fun club" using the "fulhamfc.com" domain name.
To date, there is no web-site using the subject domain name. The Complainant is not aware of the existence of any "Fulham Fun Club".
The respondent Belize Domain Services also is named as the administrative, technical, zone and billing contact for the "wimbledonfc.com" domain name. The address for Belize Domain Services is the same address as is provided for the registrant of the subject domain name. There is a well known football club in the UK called "Wimbledon".
5. Partiesí Contentions
The Complainant relies on its use and registration of the words Fulham FC and says that the subject domain name is identical. The Respondentsí professed intention to use the subject domain name is not credible and no use of the subject domain name has been made.
As to bad faith, the Complaint states that the Respondents have attempted to hide the true identity of the registrant of the subject domain name and that the threat of using the subject domain is itself evidence of bad faith. The fact that the Respondent Belize Domain Services also has registered a domain name using the name of another well known football club also is relied on.
The Respondents have not participated in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site 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 web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant clearly has a long-standing use of the words "Fulham FC". It has common-law and registered rights to the words. The subject domain name essentially is identical.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
As a first step it is necessary to consider whether both Respondents are proper parties to this proceeding. Both are named as respondents.
The official registrant of the subject domain name is the Respondent fulhamfc.com. It clearly is a proper party, although the practice of allowing a registrant to use the exact words of a domain name should be discouraged.
The Complainant relies on the registration particulars of the subject domain name and the e-mail reply from the Respondent Belize Domain Services to support its official involvement in this proceeding.
The fact and content of its response support an inference that the Respondent Belize Domain Service is a proper party to this proceeding. It is named as a Respondent, but has not contested that fact. It is a proper party.
Although the Respondents asserted in an e-mail that use of the subject domain name is intended in conjunction with a fun club, no such use has taken place. The Respondents have not come forward in this proceeding to support their assertion. Standing alone is does not rebut the inference of no legitimate interest that arises from mere registration without use, particularly in light of the Complainantís notification to the Respondents of its interest in the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The facts that a domain name is identical to the interests of a complainant and that a respondent does have a legitimate use in the domain name, standing alone generally does not establish bad faith.
In this case there is some evidence that the Respondents attempted to disguise the identity of the registrant of the subject domain name, but there was a response to the Complainantís cease and desist letter.
Evidence of conduct similar to that which is the subject of a complaint should be approached with caution, but, particularly without explanation, it can support an inference of bad faith. In this case the Respondent Belize Domain Services is connected with the registration of a domain name that is associated with another well known football club. The relationship between that fact and this case is direct and supports an inference of bad faith.
There has been no offer to sell the subject domain name and no demand made for money to transfer it to the Complainant, but such conduct is merely one aspect of a potential finding of bad faith. At present, the Complainant is deprived of the opportunity of using its mark as a domain name. It need not wait for direct harm before seeking redress in an ICANN proceeding.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and its findings the fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: April 21, 2001