WIPO Domain Name Decision: D2006-1648

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Basketball Federation v. Power Bilgisayar

Case No. D2006-1648

1. The Parties

The Complainant is International Basketball Federation, Geneva, Switzerland.

The Respondent is Power Bilgisayar, Turkey.

2. The Domain Names and Registrar

The disputed domain names <fibaworldcupturkey.com> and <fiba2010.com> registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On December 28, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain names at issue. On December 29, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com DSTR Acquisition VII, LLC d/b/a Dotregistrar.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 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 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2007.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on March 13, 2007. 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 the world governing body for basketball and is recognized as such by the International Olympic Committee. It is responsible for regulating basketball and competition in the sport including at the Olympic Games.

To promote the sport and to advance its own activities, the Complainant has registered a series of trademarks, some of which are as follows:

(a) Registered Trademark No. 003339389, filed on September 5, 2003 with the European Community Office for Harmonisation in the Internal Market, for the word FIBA;

(b) Registered Trademark No. 003340098, filed on September 5, 2003, with the European Community Office for Harmonisation in the Internal Market, as a figurative mark with graphic representation and the words FIBA WE ARE BASKETBALL;

(c) Registered Trademark No. 3039973, registered on January 10, 2006 with the United States Patents and Trademarks Office for the word FIBA;

(d) Registered Trademark No. 3144161 registered on September 19, 2006, with the United States Patents and Trademarks Office for FIBA WE ARE BASKETBALL with design;

(e) Registered Trademark No. 300084618 registered on March 26, 2003 in Hong Kong, SAR of China, for FIBA WE ARE BASKETBALL with device; and

(f) Registered Trademark No. 300084627 registered on March 26, 2003 in Hong Kong, SAR of China, for the word FIBA.

On August 1, 2010, the Complainant will hold the basketball World Championship for Men in Ankara, Antalya, Izmir and Instanbul, Turkey.

The Respondent registered the domain names <fibaworldcupturkey.com> and <fiba2010.com> on December 4, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain names <fibaworldcupturkey.com> and <fiba2010.com> should no longer be registered with the Respondent but that they should be transferred to the Complainant.

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant’s registered trademarks, both the FIBA and the FIBA WE ARE BASKETBALL marks, that the Respondent has no rights or legitimate interests in the domain names and that they have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.

In support of its case on the first of these three elements, the Complainant relies on the registered FIBA and FIBA WE ARE BASKETBALL trademarks to which reference has already been made and says that the domain names are confusingly similar to both marks because they consist predominantly of the word FIBA, together, in the first case, with words referring to a major basketball event to be conducted by the Complainant in Turkey in the year 2010 and, in the second case, with the addition of the year 2010 which is the year in which that major event will be held. The confusion comes, it contends, from the fact that internet users seeing the domain names will believe that they are official domain names referring to the Complainant’s major basketball event in Turkey in 2010 and that the domain names are therefore associated with the Complainant, which they are not.

The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain names because the facts show, first, that the Respondent is using in the domain names the Complainant’s famous trademarks without any authority. Secondly, it is argued, the Respondent cannot bring itself within any of the provisions of paragraph 4(c) of the Policy or otherwise establish a right or legitimate interest in either of the domain names.

Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because, first, the Respondent’s deceptive conduct comes squarely within paragraph 4(b)(i) of the Policy and because it shows that the Respondent has registered and used the domain names primarily to sell them to the Complainant. Secondly, it is contended that the Respondent has, within the meaning of paragraph 4(b)(ii) of the Policy, registered and used the domain names to prevent the Complainant from reflecting its trademarks in corresponding domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to 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 that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

A. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain names; and

C. The domain names have been registered and are being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain names are confusingly similar to the Complainant’s FIBA and FIBA WE ARE BASKETBALL trademarks, details of which appear above and which have been verified in the Complaint. That is so for the following reasons.

First, they are confusingly similar to the trademarks because the dominant feature of the domain names that compels the attention of the reasonable bystander is the word

“ fiba”, which instantly invokes the name of the renowned international body for the promotion and regulation of basketball, which is the Complainant, an organisation which is well - known throughout the world. The belief engendered by the domain names is that they are associated with the Complainant which is universally known by its acronym FIBA. That belief is not dispelled in the slightest, but is strengthened, by adding the year 2010 in one case, as this would naturally be taken to be a reference to the famous FIBA event, namely the world mens’ basketball championship which it is widely - known will be held in that year.

Nor is that belief dispelled by creating in the case of the other domain name the composite word “fibaworldcupturkey’’, as this simply conveys the notion that what is being referred to is the famous FIBA basketball championship to be held in Turkey, known, like all such international events, as a world cup.

In each case the domain name would still be assumed to be linked with FIBA and hence with its widely - known trademarks FIBA and FIBA WE ARE BASKETBALL.

The views just expressed are consistent with UDRP cases which have dealt with analogous issues that have arisen with respect to football and other sports and the illegitimate use of their organisational names and trademarks; see, for example, ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, where the panel said with respect to the domain names <worldcup2002.com>, <worldcup2002.net>, <worldcup2002.org>, <worldcup02.org>, <worldcup10.com>, <2002worldcup.org>, <worldcup02.net>, <2002worldcup.net>, <worldcup2006.org>, <worldcup2010.com>, <worldcup2010.org>, <worldcup2010.net> and<2006worldcup.org> the following:

‘This Administrative Panel finds that (the) domain names … are confusingly similar to FIFA’s registered trademark <WORLD CUP>. FIFA’s registered trademark <WORLD CUP> is widely known, at least in relation to the provision of services and goods related to and associated with the conduct of the quadrennial association football world championship organized by it. Also widely known are the fact that this football championship is organized quadrennially, and the fact that the years in which the championship will be conducted include 2002, 2006 and 2010. Accordingly, the addition in (the) domain names … of the number 02, 10, 2002, 2006 or 2010 does not distinguish the use of the phrase <worldcup> from the association with FIFA that these letters have in the mind of consumers. In fact, the use of these numbers serves to confirm such an association in the mind of consumers.’

See also and to the same effect: ISL Worldwide and The Federation Internationale de Football Association v. ActFit.com Inc., WIPO Case No. D2001-0424, where the domain name was <fifaworldcup.net> and ISL Worldwide and The Federation Internationale de Football Association v. Netplus Communication, WIPO Case No. D2001-0097, where the domain names were <worldcup.org> and <worldcup-tv.com>.

The Panel also draws the inference that the structure of the two domain names was effected deliberately to confuse internet users who are looking for websites devoted to basketball and its administration by the Complainant under its acronym FIBA and with the intention of using them, as it has done, for an illegitimate purpose. Accordingly, not only are the domain names confusingly similar to the trademarks, but they are intentionally so.

Finally, it has been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.

As the Complainant clearly has rights in the registered trademarks as their registered owner, the Panel finds that the domain names are confusingly similar to the trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until February 20, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

The Panel, after considering all of the evidence in the Complaint and drawing all necessary inferences from that evidence, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain names. That is so because the Complainant has established its own entitlement to the widely - known trademarks referred to above, that it has never authorised the Respondent to use its trademarks in a domain name and that the Respondent is using the FIBA trademark and logo to promote an event, namely the championship in Turkey in 2010, in which it has no legal rights. Those facts make out a prima facie case.

The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no such rights or legitimate interests in the domain names.

The Respondent chose, without the Complainant’s authorisation, the Complainant’s famous name and acronym as the dominant part of its domain names and simply added ‘2010’ in one case and ‘worldcupturkey’ in the other. It has been held many times that, as it was put in Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059, “…no rights or legitimate interest derive from this type of use of another’s trademark.”

Moreover, the Respondent then linked the domain names to websites that promote what appear to be every basketball competition except those for which the Complainant is responsible, that is to say basketball competitions and other sporting activities that are in direct competition with the official activities of the Complainant. Those websites also promote a vast range of retail activities for which the Complainant is not responsible, from the sale of sports clothing and equipment to motor cars, tickets to the Oberammergau Passion Play and hair restorer. Such conduct cannot give rise to a right or legitimate interest in the domain names.

It is clear therefore that the Respondent is illegally using the Complainant’s trademarks for commercial purposes entirely unconnected with the interests of the Complainant and in some cases in competition with them.

Accordingly, the conduct of the Respondent calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel draws the inference that “any evidence of the Respondent would not have been in [its] favour”: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.

The Complainant has therefore established that the Respondent has no rights or legitimate interests in respect of the domain names and has thus made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

“(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered 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 Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the site or location.”

In the present case, the facts are that the domain names <fibaworldcupturkey.com> and <fiba2010.com> are directed to a website that consists of a large number of links to a wide range of sporting and commercial activities for which the Complainant is not responsible and which, as has already been noted, are in some cases in direct opposition to the regulatory and administrative activities of the Complainant with respect to basketball. The Complainant has not approved of its name being linked with any of these activities and services.

It is clear that the Respondent is by this means trading on the Complainant’s good name for commercial purposes.

Those facts bring the case squarely within paragraph 4(b)(i) of the Policy, for it is clear to the Panel that the Respondent registered and is using the domain names to attract internet users to the sites to which the domain names are linked, with the intention of causing such trouble and confusion that eventually the Complainant would be obliged to buy the domain names from the Respondent.

It also seems likely to the Panel that the Respondent registered and has used the domain names with the intention that this would prevent the Complainant from reflecting the FIBA marks in a corresponding domain name and that the Respondent engaged in a pattern of such conduct by registering and using the two domain names.

Such conduct also clearly comes within the provisions of paragraph 4(b)(iv) of the Policy. That is so because what the Respondent has done is to use the Complainant’s trademarks to attract internet users to the websites to which the domain names are linked, by creating confusion with the Complainant’s marks as to whether those websites are sponsored or affiliated with the Complainant.

Indeed, not only has the Respondent created this confusion by using the FIBA trademarks in its domain name, but it has chosen the Complainant’s name specifically because it is so well - known and has traded on it in the hope that internet users will use the domain names to find their way to an official FIBA website and buy goods and services purportedly endorsed by FIBA when the Respondent knows that they are not so endorsed.

Moreover, it is difficult to conceive that the Respondent registered the domain names and used them in this manner for any reason other than a commercial one.

The result is that with respect to both domain names, the Complainant has made out the third of the three elements that it must establish.

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 names <fibaworldcupturkey.com> and <fiba2010.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Date: March 27, 2007