The Complainant is The All England Lawn Tennis Club (Championships) Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kerman & Co. LLP, United Kingdom.
The Respondent is Ticketfinders international LLC of Wilmington, Delaware, United States of America (“United States”).
The disputed domain names <wimbledontickets2016.com>, <wimbledontickets2017.com>, <wimbledon2016.net>, <wimbledon2017.net>, <wimbledon2018.net>, <wimbledon2019.net>, <wimbledon2020.net>, <wimbledon2021.net> and <wimbledon-ticket.net> are registered with Tucows Inc.
(the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. The Response was filed with the Center on August 9, 2016.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 15, 2016. 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.
The Complainant is the owner and organizer of the Wimbledon Tennis Championships, and the associated WIMBLEDON trademark. In this proceeding, Complainant relies upon its European Union Trade Mark (“EUTM”) No. EU 01115841 for the word mark WIMBLEDON (filing date September 3, 2012, registered on January 8, 2013). Since 1877, Complainant has been staging the Wimbledon Championships, and claims a substantial reputation and common law rights in the WIMBLEDON name.
The Respondent Ticketfinders International LLC is a reseller of tickets for a variety of sporting events and other activities. Respondent’s Director, Michael Cook, has been involved in ticket reselling for many years, and was one of the earliest resellers to actively market “debenture” tickets for Wimbledon matches. A fuller description of the nature of the trade in debenture tickets is set out below. Respondent has registered nine different domain names which include the word “Wimbledon” in combination with the word “ticket/s” and various years from 2016-2021. The disputed domain names were registered between August 19, 2011 and July 2016. Only two of these domain names revert to active websites - <wimbledon2016.net> and <wimbledon-ticket.net>. The disputed domain name <wimbledon2016.net> redirects to the Respndent’s website <ticketfindersinternational.com>.
The Complainant contends that it owns registered rights and common law rights in the trademark WIMBLEDON, relying upon the European Union Trade Mark recited above, and on a significant worldwide reputation in the WIMBLEDON name. The Respondent’s disputed domain names are alleged to be confusingly similar to the mark WIMBLEDON because each disputed domain name incorporates the entire WIMBLEDON mark, along with descriptive subject matters such as years of upcoming tournaments and the word “ticket(s)”.
With respect to rights or legitimate interests, the Complainant relies on the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In particular, the Complainant states that the Respondent fails to satisfy the following requirements: (1) restricting sales only to the trademarked goods; (2) full disclosure of the Respondent’s relationship to the trademark owner; and (3) no attempt to “corner the market” in domain names that reflect the trademark.
Finally, with respect to bad faith, the Respondent is alleged to have adopted the disputed domain names with full knowledge of the Complainant’s trademark rights. The Complainant points to a pattern of conduct whereby the Respondent has registered a number of domain names connected to other event organizers, without authorization. The Complainant submits that this conduct all represents a bad faith attempt to confuse users into believing the Respondent’s websites are sponsored, endorsed or affiliated with the event organizers.
The Respondent does not contest the fact of Complainant’s registration of the WIMBLEDON mark, or the reputation of the Tournament.
The Response is founded on the argument that the resale of Wimbledon debenture tickets is a lawful commercial undertaking, which has been recognized as a licensed activity by the Complainant itself. The Respondent submits that it therefore holds a legitimate interest in using the “Wimbledon” name, and that its conduct cannot be viewed as bad faith.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Complainant owns registered and common law rights in the trademark WIMBLEDON, based on many decades of use, and widespread recognition of the tournament among an international audience. The disputed domain names all contain as their most prominent element the WIMBLEDON mark itself. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s WIMBLEDON trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Respondent has argued that it holds rights or legitimate interests in the disputed domain names because the nature of its business activity - i.e. the reselling of Wimbledon tournament tickets - has received the blessing of the Complainant itself. The Respondent traces the history of its reselling business back to 1970 when its director, sent letters to Wimbledon debenture holders, offering to purchase their tickets. In order to raise funds for capital expenditures, the Complainant issues debentures, and associated tickets for Centre Court and Court No. 1 which are allocated to debenture holders for the championship each year. On its website, the Complainant recognizes that these debenture tickets are “freely transferable and can be sold on the open market.” The Complainant also acknowledges that “there has long been a legitimate, but unofficial market for the sale of debenture tickets to agencies and hospitality outlets.” (emphasis added). Within the resale market, the Respondent has been actively selling debenture tickets for many years (although it has only recently started using the WIMBLEDON-formative disputed domain names for this purpose).
As the onus in this proceeding is on the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names, the Respondent argues that the legitimate nature of its business (and the related websites) is established by the Complainant’s own language: since the Complainant itself describes the reselling as “legitimate”, how can it be permitted to resile from that position in these proceedings?
Although the Respondent’s argument is somewhat appealing, it does not support all the conclusions the Respondent wishes to draw. This proceeding must consider whether a party holds a right or legitimate interest in particular domain names, and not simply whether a specific business or enterprise is itself legitimate or not. The Panel may well be convinced that the resale of Wimbledon debenture tickets is a legitimate commercial exercise, but that conclusion is not determinative of the principal question, which relates to the recently adopted disputed domain names themselves.
The Complainant has relied upon the reasoning in the decision Oki Data Americas, Inc. v. ASD, Inc., supra, to provide an analytical framework for the determination of legitimate interests in domain names in the context of reselling. The Panel accepts that the criteria outlined in Oki Data (summarized in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) provide a useful measuring stick to evaluate the evidence in this case, in terms of rights or legitimate interests.
For purposes for this analysis, the Panel will focus on two criteria identified in Oki Data: the requirement that a reseller/distributor using a brand owner’s mark must (1) only use its website to promote and sell the wares/services of that brand owner, and not other products, and (2) clearly identify the capacity and relationship in which it stands with the brand owner. Both of these factors ultimately relate to the possible deception of users, who may otherwise fall prey to a “bait-and-switch” scenario, or be led to believe that the reseller/distributor has been authorized, sponsored or endorsed by the brand owner.
The facts, as they appear in the brief evidentiary record filed in this proceeding, indicate that the Respondent has failed on both counts.
The active website associated with the disputed domain name <wimbledon2016.net> reverts to the Respondent’s principal commercial website at “www.ticketfindersinternational.com”. The evidence shows that the Respondent’s website actively promotes tickets for events other than the Wimbledon Championships. The disputed domain name <wimbledon-ticket.net> resolves to a website featuring the Respondent’s logo and which fails to clarify its relationship with the Complainant.
With respect to the need for an explicit disclaimer to inform users of the Registrant’s actual capacity and relationship (if any) to Complainant, the evidence discloses that the Respondent offers an explanation on the associated websites in the following terms:
“The Wimbledon Championships, was founded in 1877, and is played at the All England Lawn Tennis and Croquet Club in the London suburb of Wimbledon and remains the oldest and most prestigious tennis tournament in the World. Played over the last week of June and the first week of July, Wimbledon is the only remaining grand slam championship still played on grass. Wimbledon’s continued traditional approach maintains a strict dress code for competitors, the eating of strawberries and cream by the spectators, and Royal patronage. Wimbledon is also notable for the absence of sponsor advertising around the courts. Wimbledon Tickets – Debentures Wimbledon debentures are issued by the All England Club every 5 years to facilitate capital expenditure and in exchange investors receive a pair of tickets for the entire of the Championships over the 5 year term. Wimbledon debentures are transferrable by the holder and as such are the only tickets freely traded. Ticketfinders are the original pioneers of the Wimbldeon Debenture ticket market and were the first company to trade Wimbledon debentures whole sale, to both the ticket trade and general public. Ticketfinders have unparalleled experience and knowledge in the sale of Wimbledon tickets and use this knowledge to get the very best for its clients. Call or email us to secure you Wimbledon tickets today”.
Although this explanation does contain some detailed information about the Wimbledon Championships, and its tickets, it reads primarily as a promotional description to encourage users to make purchases from the Respondent, and it does not disclose the fact that the Respondent has not been authorized or endorsed by the Complainant to use its trademark or provide the ticket reselling service. A clear statement to this effect does not appear on any of the Respondent’s websites.
As a result, the Panel finds that the Complainant has shown that the Respondent has not satisfied the criteria set out in Oki Data.
Regarding the remaining inactive disputed domain names, the Respondent has not made any claims or submitted any evidence to establish rights or legitimate interests in accordance with paragraph 4(c) of the Policy. In this regard, while the Panel considers it unnecessary to make a determination on this point, it notes the Respondent’s pattern of registering domain names incorporating the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The evidence on the record clearly shows that the Respondent was fully aware of the Complainant’s long-established rights and reputation in the WIMBLEDON trademark, and that it was intentionally adopting and using the disputed domain names to attract users to its websites through the reputation of the “Wimbledon” name. The Panel accepts that the use of the disputed domain names will create a likelihood of confusion with the WIMBLEDON marks as to the source, sponsorship or endorsement of the Respondent’s activities. The Panel also notes that the Respondent has engaged in a pattern of conduct by registering multiple names including the nine disputed domain names, and other domain names relating to the French Open and Roland Garros. See Fédération Française de Tennis (FFT) v. Ticketfinders International LLC, WIPO Case No. D2013-0287. All these circumstances support a finding of bad faith.
The Panel wishes to make it clear that the sole subject of this decision is the use and registration of the disputed domain names; nothing in this decision is intended to suggest that the reselling business conducted by the Respondent is unlawful or improper, or to suggest that the Respondent should be prevented from making reference to “Wimbledon” or other events, in describing or identifying the subject matter of its resale tickets, as it appears to have done for many years before adopting the disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <wimbledontickets2016.com>, <wimbledontickets2017.com>, <wimbledon2016.net>, <wimbledon2017.net>, <wimbledon2018.net>, <wimbledon2019.net>, <wimbledon2020.net> <wimbledon2021.net> and <wimbledon-ticket.net> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: September 2, 2016