ISL Worldwide; The Federation Internationale de Football Association v. ActFit.com Inc.; Lasermedia Comm. Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

ISL Worldwide

and The Federation Internationale de Football Association v. ActFit.com Inc.

Case No.

D2001-0424

1. The Parties

1.1 The Complainants

are (acting jointly) ISL Worldwide ("ISL") of Grafenauweg 2,

P.O. Box 4433, CH-63-4, Zug, Switzerland and The Federation Internationale

de Football Association ("FIFA") of Hitzigweg 11, P.O. Box 85,

8030 Zurich, Switzerland acting jointly.

1.2 According

to the information in the WHOIS database of Network Solutions, the Respondent

is Lasermedia Comm. Inc. of 11 Charlotte St., Toronto, On M5V2H5. An email

from Jennifer Zuwala to David Gill of ISL exhibited to the Complaint suggests

that ActFit.com is the new name for LaserMedia Inc. According to the information

revealed by a further WHOIS search, ActFit.Com Inc. has the same address

as that registered for Lasermedia Comm. Inc. For the purposes of this

Decision, the Respondent will be called ActFit.Com Inc.

2. The Domain Name

and Registrar

The domain name upon which this Complaint is based is <fifaworldcup.net>.

The registrar of the domain name as at the date of the Complaint is Network

Solutions, Inc, ("NSI").

3. Procedural History

3.1 The Complaint

was made pursuant to the Uniform Domain Name Dispute Resolution Policy

approved by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 (the "Policy"), in accordance with the Rules

for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN

on October 24, 1999 (the "Rules"), and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy in effect as of

December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint

was received by the WIPO Arbitration and Mediation Center (the "Center")

by email on March 26, 2001, and in hard copy on March 28, 2001. The fees

prescribed under the Supplemental Rules have been paid by the Complainant.

The Complaint stated that a copy of the Complaint had been sent or transmitted

to the Respondent in accordance with paragraph 2(b) of the Rules and that

a copy of the Complaint had been sent or transmitted to the Registrar

of the domain name in dispute, NSI.

3.3 On March 27,

2001, the Center sent the Complainant an Acknowledgment of Receipt of

Complaint.

3.4 The Center

sent a Request for Registrar Verification to NSI on March 28, 2001, by

email. NSI responded to the Center’s request by email, stating:

(a) that

NSI was in receipt of a copy of the Complaint sent to it by the

Complainant;

(b) that

NSI was the registrar for the domain name in dispute;

(c) that

Lasermedia Comm. Inc. was the current registrant of the domain name

in dispute;

(d) that

the domain name in dispute was active in status;

(e) Lasermedia

Comm. Inc’s contact details; and

(f) that

the NSI Service Agreement Version 5 was in effect.

3.5 The Center

sent the Notification of Complaint and Commencement of Administrative

Proceeding on April 3, 2001, to the Respondent by post/courier, facsimile

and email, and to the Complainant by email.

3.6 A Notification of Respondent

Default was sent by the Center to the Respondent and the Complainant by email

on April 26, 2001, at 9.44 am. This notified the Respondent that it had failed

to comply with the relevant deadline for the submission of its Response in the

domain name dispute. Although the Notification of Complaint and Commencement

of Administrative Proceeding made specific reference to the 20 calendar day

period within which the Respondent was entitled to submit a Response to the

Complaint, no Response has been received from the Respondent at any time prior

to the Panel commencing its deliberations.

3.7 Two emails

in response were received by the Center on April 26, 2001. At 6.04 pm

an email in reply, embedding the Center’s earlier email, was received

from Mazdak Rezvani as follows:

"A transfer

request has been put through. 3-5 business days are required for this

to take effect".

At 7.27 pm a second

email from Mazdak Rezvani stated:

"dom expires

on May 6, 2001 -- approx. one week from now. we have no plans for

renewing. please take it freely".

3.8 The Center

sent a Notification of Appointment of Administrative Panel and Projected

Decision Date to the Respondent and the Complainant’s representative on

May 9, 2001.

3.9 The Center sent a transmission

of case file to the Panel on May 9, 2001. The documentation was received in

hard copy by the Panel on May 14, 2001, in Sydney, Australia.

3.10 All other

procedural requirements appear to have been satisfied.

4. Factual Background

4.1 Activities

of the Complainant (FIFA)

The following information

is asserted as fact in the Complaint and remains uncontested.

FIFA is the world

governing body of the sport of Association Football, commonly known throughout

the world as soccer or football, comprising the National Football Association

of 203 countries around the world. FIFA is the originator and organiser

of a number of world and European soccer championships, including, in

particular, the world famous soccer championship known as the FIFA World

Cup, but also organises the Olympic Football Tournament, the FIFA World

Youth Championship, the FIFA U-17 World Championship, FIFA/Confederations

Cup, the FIFA Women’s World Cup, the FIFA Futsal World Championship and

the FIFA Club World Championship.

4.2 The Complainant’s

(FIFA’s) trade marks

The Complainant also

asserts without challenge that:

FIFA is the owner

of all intellectual property rights in and to the trade names and trade

marks "FIFA", "WORLD CUP" and "FIFA WORLD CUP".

The Complaint lists

the numerous international, United States and European trade mark registrations

in virtually all international classes for the trademarks "FIFA",

"WORLD CUP" and "FIFA WORLD CUP" (the "FIFA Marks").

FIFA’s trademark

registrations for the FIFA Marks were issued well prior to the registration

date of the domain name in dispute. FIFA’s registration certificates are

prima facie evidence of the validity of the FIFA Marks and FIFA’s exclusive

rights to the FIFA Marks.

Having been widely

promoted among members of the general public, including in Canada and

the United States, and having exclusively identified FIFA as well as its

famous international soccer championship for about a century, the FIFA

Marks symbolise the tremendous goodwill associated with FIFA and represent

a property right of incalculable value. It is unquestionable that FIFA

has acquired common law trademark rights in and to the FIFA Marks, considering

its extensive use that can be traced back to almost the beginning of the

20th century. Furthermore, due to its wide and substantial international

use, the FIFA Marks and associated marks enjoy unquestionable fame and

notoriety.

FIFA also owns the

registration for the domain name <fifaworldcup.com>, which, since

February 15, 2001, constitutes the address for the official 2002 FIFA

World Cup web site, where consumers may get information and order their

football tickets on-line. This web site and the services provided through

it has a tremendous success, as evidenced by the fact that the web site

is sometimes not accessible due to server overload.

4.3 Activities

of the Respondent

No Response to the

Complaint has been filed and no information has been made available by

the Respondent to the Panel concerning the activities of the Respondent.

The Complainant states that it appears from the Respondent’s web site

that the Respondent is active in the sports and fitness market.

The Panel has visited

the Respondent’s web site at www.ActFit.com, according to which:

"ActFit.com (ActFit) is a developer of software applications and

network services for the health and fitness consumer and commercial markets.

ActFit is divided into two divisions. The first being the commercial division

(CLUBsite Internet Network), providing business to business Internet based

software and network solutions to the health and fitness club industry.

The second is the consumer division (Active Trainer Interactive Software

Group), providing interactive Internet and CD ROM based software to the

sport and fitness training market."

5. The Complainant’s

contentions in the Complaint

5.1 The Complainant

contends, by way of providing background to the dispute, that the domain

name in dispute was registered on May 6, 1999. The Complainant states

that at the end of 1999 it noticed fifaworldcup.net being used

for a web site which was infringing upon FIFA’s trademarks and copyrights,

through the prominent display of the Complainant’s word mark and trophy

and device trademark "FIFA WORLD CUP", as well as through the

display of videos and pictures found on the official <fifaworldcup.com>

web site. The Complainant also states that although this site was managed

by a person called Jan Alsos, it appears that the domain name in dispute

was already owned by the Respondent, and the Complaint quotes an extract

from a page of the infringing <fifaworldcup.net> web site

stating "Actfit offered a very generous deal…". The Complainant

states that now the domain name dispute is not connected to an existing

web page on the Internet, and the Panel can confirm that the domain name

does not currently resolve to an active web site.

5.2 The Complainant states

that on February 16, 2000, it sent a communication to the Respondent requesting

the transfer of the disputed domain name to FIFA and offering to pay the Respondent

the costs of registration and transfer of the domain name. The Complaint states

that on the same day Jennifer Zuwala of the Respondent responded and agreed

that the domain name was to be transferred to FIFA. The Complaint states that

the Respondent consequently prepared the transfer form and sent it to the Complainant,

but it appeared that the prepared form was a Registrant Name Change Agreement

for a Legal Name Change, instead of a Registrant Name Change Agreement for Transfers,

and therefore NSI refused to process the transfer of the domain name. The Complainant

also alleges that the Respondent did agree to execute the proper document but

since then the Complainant has been trying to contact the Respondent without

success, and was obliged firstly to send to it a cease and desist letter, and

then to launch the present Complaint.

5.3 The Complaint

asserts that each of the elements specified in paragraph 4(a) of the Policy

have been satisfied.

5.4 In reference

to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges

that it is incontestable that the domain name in dispute is identical

to the "FIFA WORLD CUP" trademark, and that it confusingly similar

to the trademarks "FIFA" and "WORLD CUP". The Complainant

also alleges that the domain name in dispute is confusingly similar to

the Complainant’s domain name <fifaworldcup.com>.

5.5 In reference

to the element in paragraph 4(a)(ii) of the Policy, the Complaianant alleges

that the Respondent has no rights or legitimate interest in the domain

name in dispute because, inter alia, the Complainant has not licensed

or otherwise permitted the Respondent to use its trademarks or to apply

for or use any domain name incorporating its trademarks; the Respondent

has never been commonly known under the disputed domain name, as a legal

entity or otherwise, nor has he acquired any trademark or other rights

to the domain name; and, in its communications with the Complainant, the

Respondent agreed to transfer the disputed domain name to the Complainant.

5.6 In reference

to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant

alleges that as the disputed domain name incorporates the famous trade

mark "FIFA WORLD CUP" and the separate trade marks "FIFA"

and "WORLD CUP", the Respondent clearly knew of the Complainant,

it’s activities and of the FIFA World Cup. The Complainant states that

the Respondent could have provided information about soccer events including

the FIFA World Cup by using a domain name that was not identical or confusingly

similar to the Complainant’s trade marks. The Complaint alleges that the

use of the disputed domain name by the Respondent is deceptive as it suggests

that the services and information provided are provided by FIFA or with

its consent, and this demonstrates bad faith.

5.7 The Complainant

alleges that the domain name in dispute creates a likelihood of confusion

with the Complainant and its trade marks because Internet users have been

and will continue to be misled into believing that the domain name is

operated and registered by the Complainant or with its permission or authorization.

The Complaint further alleges that by using this domain name the Respondent

has intentionally attempted to attract for commercial gain Internet users

to the web site to which the domain name formerly resolved.

6. Discussion and

Panel Findings

This section is structured

by reference to the elements required by paragraph 4(a) of the Policy. In

order to be successful, the Complainant has the burden of proving, on the

balance of probabilities, that all three elements are present.

6.1 Domain Name

identical or confusingly similar to Complainant’s trade mark

The domain name in

dispute is <fifaworldcup.net> The Complainant has numerous registrations

of the trade marks ‘FIFA WORLD CUP", "FIFA" and "WORLD

CUP". These marks are clearly well known with regard to FIFA’s international

football championships and represent the goodwill FIFA has in these.

The domain name in

dispute incorporates the words "FIFA" and "WORLD CUP",

and is identical to the trade marks owned by the Complainant, the only

difference being the gTLD suffix ".net" and the lack

of spaces between the words. In the view of the Panel these differences

are incapable of differentiating the domain name in dispute from the Complainant’s

trade marks, and the Panel therefore finds that the domain name in dispute

is identical to the Complainant’s marks.

Accordingly, the

Panel finds that Complainant has proven paragraph 4(a)(i) of the Policy.

6.2 The Respondent

has no rights or legitimate interests in the Domain Name

As noted, above,

the Complainant asserts that the Respondent has no rights or legitimate

interests in the disputed domain name because, inter alia, the

Complainant has not licensed or otherwise permitted the Respondent to

use its trademarks or to apply for or use any domain name incorporating

its trademarks.

The Respondent has

not submitted a Response and has therefore not contested any of the contentions

made by the Complainant. The Respondent has failed to assert any circumstances

which might demonstrate its rights or legitimate interests in the domain

name. Certainly there is no evidence before the Panel that any of the

circumstances described in paragraph 4(c) of the Policy apply in this

case, and the responses to the Center’s Notice of Respondent Default (see

paragraph 3.7 above) are inconsistent with the Respondent asserting any

rights or interests in the domain name.

The Panel finds that

the Respondent has no rights or legitimate interests in the disputed domain

name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the

Policy.

6.3 Domain Name

has been registered and is being used in bad faith

The Panel notes that

paragraph 4(a)(iii) of the Policy requires both registration in bad faith

and use in bad faith. Paragraph 4(b) of the Policy provides:

"The following

circumstances, in particular but without limitation, if found by the

Panel to be present, shall be evidence of the registration and use

of the domain name in bad faith".

Although the domain

name in dispute no longer resolves to an active web site, the Complainant

provides at Exhibit 22 of the Complaint excerpts from the "first

infringing FIFA World Cup web site", being pages which appear to

have been printed from a web site, the URL of which is http://www.fifaworldcup.net.

The Panel is therefore satisfied that the Respondent has used the disputed

domain name, although it may not be using it at present.

The Panel accepts

the assertions made in the Complaint, in respect of the requirement of

paragraph 4(a)(iii) of the Policy, and considers that the Respondent has

registered and used the domain name in bad faith. Paragraph 4(b) of the

Policy states:

"…the following

circumstances…if found by the Panel to be present, shall be evidence

of the registration and use of a domain name in bad faith:…

(iv) by

using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your web site or location of a product or service on your web

site or location."

In the Panel’s

opinion, the Respondent registered the domain name with the intention

of attracting Internet users for commercial gain to its website by creating

a likelihood of confusion with the Complainant’s trade mark.

The Panel is of the

view that the domain name in dispute was registered and was being used

in bad faith by the Respondent at least at the time of the Complaint.

Accordingly, the Panel finds that the Complainant has proven paragraph

4(a)(iii) of the Policy.

7. Decision

The Panel has found that

all of the requirements of paragraph 4(a) of the Policy have been proven by

the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the

Policy, the Panel orders that the domain name <fifworldcup.net> be

transferred by NSI to the Complainant.

Philip N.

Argy

Sole Panelist

Dated: May

30, 2001

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