Union des associations europeennes de football (UEFA) v. Chris Hallam

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Union des associations européennes de football (UEFA)

v. Chris Hallam

Case No. D2001-0717

1. The Parties

Complainant is Union des associations européennes de football (UEFA),

Route de Genève 46, 1260 Nyon, Switzerland. Complainant’s authorised

representatives are Mr. Yvan Merlotti and Mrs. Isabelle Hoang, Lawyers, Cabinet

Juridique Merlotti, Boulevard Helvétique 15, P.O Box 3447, 1211 Geneva

3, Switzerland.

Respondent is Mr. Chris Hallam, 34 Sykes Meadow, Edgeley, Stockport. SK3 9RJ,

England, United Kingdom. Respondent is represented by Mr. Andrew Fields (Solicitor)

Hewitson Becke and Shaw Solicitors, Shakespeare House, 42 Newmarket Road, Cambridge

CB5 8EP, England, United Kingdom.

2. Domain Name and Registrar

The domain name at issue is <uefa2004.com>. The Registrar is Network

Solutions, Inc. Herndon, Virginia, United States.

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center

(the Center) received a Complaint from Complainant in e-mail form on May 31,

2001, and in hardcopy form on June 5. On June 1, 2001, the Center issued an

Acknowledgement of Receipt of the Complaint.

Having issued a Request for Registrar Verification to the Registrar, the Center

received a Verification Response on June 4, 2001. According to that Response:

a) Network Solutions is in receipt of the Complaint sent to it by Complainant.

b) Network Solutions is the Registrar of the domain name at issue.

c) Registrant is "CRH, 29 Buxton Road Chinley, High Peak, sk23 6dj,

UK".

d) The domain name is <uefa2004.com>.

e) Administrative Contact Billing Contact is "Hallam,Chris" with

the same address as mentioned under c).

f) Technical Contact is "NamesDirect.com Support".

g) The NSI Service Agreement Version 5 is in effect, and,

h) The domain name registration is in active status.

Having verified that the Complaint complied with the formal requirements, the

Center issued, on June 7, 2001, a Notification of Complaint and Commencement

of Administrative Proceeding, which was notified to Respondent and to Complainant

as well as to the Registrar and to ICANN.

On June 26, 2001, the Center received a Response in e-mail form from Respondent’s

representative which was also received in hardcopy form on June 28, 2001. On

June 26, 2001 the Center issued an Acknowledgement of Receipt of the Response,

which was communicated to the Parties.

The Center invited Mr. Henry Olsson to serve as Sole Panelist and received,

on July 4, 2001, Mr. Olsson´s Statement of Acceptance and Declaration of Impartiality

and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist

and issued a Notification of Appointment of Administrative Panel and Projected

Decision Date, which was duly communicated to the Parties. The Projected Decision

Date was July 17, 2001.

The Sole Panelist considers that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and the WIPO Supplemental Rules.

4. Factual Background

Complainant in this case, Union des associations européennes de football

("UEFA"), is the governing body of European football. Complainant

is a non-profit association organised in accordance with Article 60 and following

of the Swiss Civil Code. It has its registered seat and headquarters in Nyon,

Switzerland. It consists of 51 European National Football Associations and it

organises a number of European football events, such as UEFA CHAMPIONS LEAGUE

every year and UEFA EUROPEAN FOOTBALL CHAMPIONSHIP (EURO) every fourth year,

for European national teams.

According to information available, Respondent is a private person.

In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to

submit, only with respect to any challenge that may be made by Respondent to

a decision by the Administrative Panel to transfer or cancel the domain name

that is the subject of the Complaint, to the jurisdiction of the Courts where

the principal office of the concerned Registrar is located, i.e. Herndon, Virginia,

United States.

5. Parties Contentions

A. Complainant

General Background

Complainant contends as a general background that, as of 1984, the UEFA EUROPEAN

FOOTBALL CHAMPIONSHIP, commonly known as the EURO, has been identified by trademarks

comprised of the term "EURO" coupled with the year of the event. Thus,

for instance, the competitions in England in 1996 were designated by the trademark

"EURO 96" and the competitions in Benelux in 2000 by the trademark

"EURO 2000" The next competitions in Portugal in 2004 will correspondingly

be designated inter alia by the trademark "UEFA EURO 2004"

The EURO competitions have become extremely popular and widely broadcast and,

for instance, the EURO 2000 had a total cumulative audience of over 7 billion

individuals; the final tournament generated by itself a total of 329 million

viewers worldwide. In addition, Complainant has a substantial presence on the

World Wide Web through its official website <uefa.com> and the websites

constructed especially for each EURO competition. For instance, the website

<euro2000.org> had more than one billion hits. Complainant has submitted

a comprehensive documentation in support of these contentions.

Complainant contends that, in view of the wide broadcast of the EURO 2000 in

England – where Respondent actually lives – it seems impossible that Respondent

was not aware of Complainant’s event at the time of the registration of the

domain name at issue, which occurred during the same competition. In the view

of Complainant, Respondent could not have ignored the problems which Complainant

had in relation to the registration of the domain name <euro200.com> by

a third party; it is in fact probable that Respondent registered the domain

name at issue in order to try to create similar problems for Complainant in

view of the forthcoming competition in 2004. Also in respect of these contentions

Complainant has submitted a number of documents, such as posters, copies of

press releases, copies of TV ratings and printout of the www.euro2000.org website.

As a basis for the Complaint Complainant invokes that, in accordance with Paragraph

3(b)(vii) of the Rules, it is the owner of all intellectual property rights

in and to the trademark "UEFA EUROPEAN FOOTBALL CHAMPIONSHIP" which

is the complete name of its prestigious competition commonly known as the EURO.

It is registered under the Madrid Agreement and Protocol for a number of countries,

including the United Kingdom, in international classes 1, 3, 4, 5, 6, 8, 9,

10, 11, 12, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 35, 36, 38,

39, 41 and 42. Complainant has used the trademark in connection with entertainment

services, that is, the organisation of sporting events, such as football competitions.

Complainant has submitted a copy of the international registration in question.

In addition, Complainant has licensed the trademark to the Local Organising

Committee as well as to official sponsors and partners and also to suppliers

for use on a wide variety of products and services.

Furthermore, according to Complainant, the trademark is also and has been used

on Complainant’s official web site <uefa.com> in connection with information

on and promotion for the competition, as well as on the specific competition’s

websites.

Complainant is also the owner of numerous other trademarks related to the notion

"EURO", which are registered in the United Kingdom, Switzerland and

Benelux. Also, for instance, the mark EURO 2000 as an emblem is subject to an

international registration covering also the United Kingdom.

In accordance with past practice also the trademark "UEFA EURO 2001"

as a word mark has been registered under the Madrid Agreement and Protocol in

a great number of classes, with a view of the forthcoming competition in Portugal

in 2004. In addition, the mark "PORTUGAL EURO 2004" as a word mark

and as a device mark has been registered internationally in class 41. The marks

will be used in connection with entertainment events and could be licensed to

the Local Organising Committee, official sponsors and partners as well as suppliers.

Complainant has submitted a number of registration certificates relating to

those registrations.

Identity or Confusing Similarity

According to Complainant, the domain name at issue incorporates the above-mentioned

valuable name and trademark of Complainant as well as the two distinctive elements

of Complainant’s trademark "UEFA EURO 2001", that is "UEFA"

and "2004" which are protected especially in view of the upcoming

EURO 2004. Thus there is, in the opinion of Complainant no doubt that the disputed

domain name is identical or confusingly similar to Complainant’s trademarks

"UEFA" and "UEFA EURO 2004. The fact that the terms "UEFA"

and "2004"are associated in the domain name must be considered as

an unsubstantial change of Complainant’s trademarks. The mere fact of adding

a number (2004) to Complainant’s trademark UEFA cannot render the domain name

different from Complainant’s trademark. Furthermore, the fact that "EURO"

is not used in the domain name should not be considered as a substantial change

of the trademark "UEFA EURO 2004."

Complainant has referred to a letter of November 24, 2000, to Complainant’s

counsel, where Respondent admits that the domain name at issue was in fact registered

in view of Complainant’s forthcoming EURO competition in 2004.

Complainant furthermore asserts that it has never licensed Respondent for the

use of the trademarks "UEFA" and "UEFA EURO 2001" or any

of its other trademarks, nor has it authorised or approved the Respondent to

use the trademarks or domain name in any manner.

Rights or Legitimate Interests

Complainant contends that Respondent has not yet developed any website under

the domain name at issue and has not used that domain name in any bona fide

manner; the domain name is merely pointing at the hosting webpage of a company

called <yournamefree.com> together with a message informing visitors that

the webpage <www.uefa2004.com> is under construction. To support this,

Complainant has submitted a printout of the hosting page mentioned.

Complainant contends that it seems to follow from various letters exchanged

between Respondent and its counsel and Complainant’s counsels that Respondent

has registered the domain name at issue in order to set up a chat forum for

fans during Complainant’s EURO 2004 competition. Complainant stresses that no

evidence of such use or of any other bona fide use of the domain name has been

produced by Respondent in any of its correspondence. In the view of Complainant,

Respondent has not proved that it is making a legitimate non-commercial or fair

use of the domain name without any intent for commercial gain misleadingly to

divert consumers or to tarnish the trademark of Complainant. Furthermore, Respondent

has not shown any evidence that such a website will actually be constructed

or is under preparation. To support its contentions in this respect, Complainant

has submitted copies of various letters relating to Respondent’s activities

concerning the domain name at issue.

Complainant furthermore contends that the domain name at issue is not and could

not be contended to be a name or a nickname of Respondent or other members of

his family or in any other way identified with or related to a legitimate interest

of Respondent.

Complainant stresses that, as a consequence, there is no evidence of Respondent’s

use of, or demonstrable preparations to use, the domain name at issue in connection

with a bona fide offering of goods or services and there is also no evidence

that Respondent as an individual, business or other organisation has been commonly

known by the domain name at issue.

According to Complainant, Respondent’s registration of the disputed domain

name is preventing Complainant from registering the domain name for providing

information on and promoting the EURO 2004 competition in Portugal. It is, in

the view of Complainant, obviously a potential platform for "ambush"

because a website constructed under the domain name at issue operated by Respondent

but containing information about Complainant’s event could easily constitute

an infringement of Complainant’s rights and mislead the public as to the connection

between Respondent’s potential website and Complainant and its competition.

Complainant underlines that Complainant’s trademarks are among the most famous

in professional sport worldwide and are among its most valuable assets; the

importance of those trademarks has been achieved through many years of work

and considerable investments. In particular, Complainant’s use of its trademarks

on the Internet has expanded considerably over the last years; those trademarks

are now widely present on the Internet. All information on Complainant and on

its competitions have always been and will be provided by Complainant through

its official website "www.uefa.com" and the specific websites related

to the various websites of the UEFA competitions. It should be mentioned, according

to Complainant, that Complainant’s trademarks have been registered worldwide

in class 38 in order to protect those trademarks against unauthorised use by

third parties on websites and for domain name registrations.

Registration and use in bad faith

Complainant contends that, as follows from the correspondence between the Parties,

Respondent has not made any bona fide registration and use of the domain name

and no evidence has been shown to that end; Respondent has simply alleged its

intention to create a chat forum for football fans in relation to the EURO 2004

event. Complainant also stresses that Respondent has declared its intention

not to trade on the website "www.uefa2004.com" to be constructed and

has always maintained that it has not infringed Complainant’s rights, without,

however, providing any evidence in that respect.

Complainant contends that Respondent registered its domain name almost two

years ago but as up to now no website or any "under construction"

website exists. This is in the view of Complainant evidence of bad faith. Any

construction of a website containing information about Complainant’s 2004 event

could easily constitute an infringement of Complainant’s rights and mislead

the public as to a connection between Respondent and Complainant and its competition

in 2004. The domain name at issue is clearly making reference to Complainant

and its event and this is a further evidence of bad faith registration and use

of the domain name at issue.

Moreover, according to Complainant, the registration and use of the domain

name prevents Complainant from reflecting its trademarks in a corresponding

domain name in connection with the 2004 event. Respondent has not, in the view

of Complainant, shown any valid interest to legitimate such obstruction. As

has been found in other cases the passive holding of the registration of a domain

name can be a ground for a finding of registration and use in bad faith.

Remedy requested

In accordance with Paragraph 4(i) of the Policy and for the reasons described

in the Complaint, Complainant requests that the Administrative Panel issue a

decision to the effect that the domain name be transferred to Complainant.

B. Respondent

General observations

First, Respondent basically leaves undisputed Complainant’s contentions as

regards the factual circumstances and accepts that the Complaint is based on

the registered trademarks referred to by Complainant. On the other hand, Respondent

disputes Complainant’s three allegations about identity/confusing similarity,

about absence of rights and legitimate interests and about registration and

use in bad faith. Respondent contends that Complainant has failed to show any

of the three limbs set out in Paragraph 3(b)(ix) of the Rules – let alone all

three of those – and that therefore Complainant’s request for the transfer of

the disputed domain name should be unconditionally rejected.

Identity or confusing similarity

In this respect Respondent first contends that the domain name at issue was

registered about 8 months before Complainant filed an application for registration

of the trademark "UEFA EURO 2004" and thus during a considerable period

of time there was no trademark in relation to which identity or confusing similarity

could exist. As a matter of principle, according to Respondent, a person cannot

be expected to foresee what trademarks a third party may or may not choose to

register or – in the case of unregistered trademarks – may or may not start

to use in the future.

Respondent furthermore submits that the domain name at issue is not identical

to any of the 23 trademarks referred to by Complainant.

In addition, Respondent submits that the domain name at issue is not confusingly

similar to any of the trademarks referred to by Complainant. None of the 23

trademarks contains the word UEFA followed by a number/year and Complainant

has not produced any evidence that it has registered as a trademark the word

UEFA followed by the year of any of its EURO football competitions (e.g. UEFA2000,

etc). Respondent also submits that Complainant has not sought to register UEFA2004

as a trademark and Respondent could not have objected to such a registration,

as it is not itself trading under that name. The posters submitted by Complainant

do not contain any reference to UEFA followed by the year of the competition.

The same applies to the websites set up by Complainant for the football competition

in 2000; nowhere did the word UEFA followed by the year 2000 appear. The statistics

provided by Complainant concerning the number of hits to its websites show,

in the opinion of Respondent, that it is obvious that Internet users know exactly

how Complainant markets and promotes its football competitions. Respondent submits

that Complainant has never marketed its football events as UEFA followed by

the year of the event and Complainant’s own statistics show that the football

community clearly knows that EURO followed by the number of the year of the

event is the address to Complainant’s website.

Finally Respondent states that it is obvious that a domain name registered

for the purpose of setting up a fans discussion forum will have some kind of

connection to the football competition to which the forum relates. In the view

of Respondent, Complainant has failed to show that such a registration is identical

or confusingly similar to a trademark or a service mark in which Complainant

has rights.

Rights or legitimate interests

Respondent contends that the reason why no use has been made of the domain

name at issue is the fact that the event to which it refers - in Portugal in

2004 - is three years away. Respondent has no plans to develop the site until

well after the FIFA World Cup football championships in Korea and Japan in 2002.

The absence of any activity by Respondent in this respect should not prejudice

Respondent’s case, the more so that there is no evidence that Complainant has

started to develop its own website for its EURO 2004 championships.

Respondent has in its correspondence with Complainant made it clear which the

plans are for the site, i.e. to set up a discussion forum for fans for the forthcoming

EURO football competition in Portugal in 2004. That site will be non-commercial.

As in another case Complainant failed to establish that Respondent’s website

was for commercial use and therefore failed to show that Respondent was not

making a legitimate non-commercial use of the domain name. It is not for Respondent

to prove that it has rights or legitimate interests in respect of the domain

name at issue but it is for Complainant to prove that it has not. As regards

the assertion that Respondent has no right to use the domain name or any other

domain name containing Complainant’s trademarks Respondent remarks that a person

only requires permission or license to the extent that he is trading under that

mark. Respondent has no plans in this direction and in any case the domain name

"uefa2004" is not registered as a trademark by Complainant.

Respondent has no intention to mislead the public as to a connection between

Respondent’s potential website and Complainant, and Respondent is prepared to

undertake to Complainant that is in no way connected or endorsed or associated

with Complainant or its competitions. Respondent is even prepared to insert

a direct hyper/image link to Complainant’s website for its EURO football competitions.

Respondent finally asserts that the domain name at issue is not preventing

Complainant from registering and using the said domain name for providing information

etc. on the EURO 2004 competition, as Complainant’s behaviour in the past has

been to use a domain name containing the word EURO with the number of the actual

year.

Registration and use in bad faith

Respondent disputes that Complainant has proved that no bona fide registration

or use has been made. As mentioned above, Respondent has made its intentions

as regards the domain name and the website absolutely clear to Complainant.

The domain name could not have been registered in bad faith as the registration

occurred on October 25, 1999, i.e. more than eight months prior to Complainant’s

registration of the trademark "UEFA EURO 2004." Furthermore, Respondent’s

development of the website can not be evidence of bad faith as it would be "ludicrous"

to develop such a website at a point in time which is three years away from

the event in question, also taking into account that Complainant has not yet

set up its own website for the competition in 2004.

Respondent submits that Complainant’s assertion that Respondent’s registration

prevents Complainant from using the domain name "in the same way it has

done for former EURO competitions" is misleading, as Complainant has never

before used domain names such as <uefa1996.com>.

Finally, Complainant submits that Complainant has submitted no evidence of

bad faith as mentioned in Paragraph 4(b) of the Policy and as required under

Paragraph 3(b)(ix)(3) of the Rules.

6. Discussions and Findings

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on

the basis of the statements made and documents submitted and in accordance with

the Policy, these Rules and any rules and principles of law that it deems applicable.

The Service Agreement relating to the domain name registration at issue incorporates

the Policy which is consequently applicable to this case.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the

following:

- that the domain name registered by Respondent is identical or confusingly

similar to a trademark or a service mark in which Complainant has rights,

- that Respondent has no rights or legitimate interests in the domain name

and,

- that the domain name has been registered and is being used in bad faith.

In the following parts of this decision, the Panel discusses each of those

elements.

Identity or Confusing Similarity

In this respect Complainant has, according to Paragraph 4(a)(i) of the Policy,

to prove that the domain name at issue is identical or confusingly similar to

a trademark or a service mark in which Complainant has rights.

The domain name at issue is <uefa2004.com>.

Complainant is the owner of a number of trademarks relating to its football

activities. Of particular interest in this case is trademark "UEFA" owned by

Complainant, which is included in the domain name. It is also known that the

organisation of the football event UEFA EUROPEAN FOOTBALL CHAMPIONSHIP (EURO)

takes place every fourth year. Therefore, the addition of the year 2004 is not

sufficient as to avoid confusion.

In the view of the Panel, the domain name is confusingly similar to the trademarks

in which Complainant has rights.

Rights or Legitimate Interests

In this respect Complainant has, according to Paragraph 4.a(ii) of the Policy,

to prove that Respondent has no rights or legitimate interests in the domain

name.

It is clear in this case that Respondent has informed Complainant about its

intentions concerning the domain name, namely to create a non-commercial discussion

forum relating to the forthcoming football event in 2004, the reason being that

Mr. Hallam is – as it is put in the letter of November 24, 2000, to Complainant´s

counsel – a "fanatic supporter of football". Respondent has submitted

that the website has not yet been created because the event lies almost three

years ahead.

The Panel cannot neglect the explanations given by Respondent, the more so

as Complainant has not itself prepared its own websites relating to the same

event. The Panel recognises that it may be difficult for a Complainant to prove

the absence of something on the part of Respondent but it is nevertheless Complainant

who has to prove that Respondent has no rights or legitimate interest in the

domain name at issue. In view of the explanations given by Respondent in this

case, the Panel cannot find that Complainant has produced sufficient evidence

in this respect.

Registration and Use in Bad Faith

In this respect Complainant has, according to Paragraph 4(a)(iii) of the Policy,

to prove that the domain name has been registered and is being used in bad faith.

The Panel notes that the domain name at issue was registered some months before

Complainant registered its trademark "UEFA EURO 2004". Even if it

is conceivable that Respondent did know about Complainant’s plans concerning

the event planned for 2004 when it registered the domain name, the fact is that

the trademark in question was obviously not registered or otherwise protected

at that time. Therefore, in the view of this Panel, it has not been proved that

Respondent registered the domain name at issue in bad faith.

As then regards use in bad faith a certain importance must be attached to Respondent’s

explanation why it has not developed a website relating to the domain name,

namely that the event to which it refers lies some years ahead.

The Panel has noted Complainant’s contention that the registration of the domain

name at issue prevents Complainant from using the same domain name in the same

way as it has done in previous EURO competitions. This is of course true, even

if it would seem that the domain names used for former competitions have been

"EURO" together with the number of the year rather than "UEFA"

followed by a corresponding number.

In view of Respondent’s explanations the Panel cannot find that the circumstances

invoked by Complainant constitute sufficient evidence about Respondent’s use

of the domain name in bad faith.

Conclusion

In the light of the foregoing, the Panel finds that it has been established

a) that Respondent’s domain name is confusingly similar to Complainant’s trademarks;

however, it has not been established b) that Respondent has no rights or legitimate

interests in the domain name or c) that the domain name at issue has been registered

and is being used in bad faith.

Accordingly, Complainant’s request for transfer of the domain name <uefa2004.com>

shall be denied.

7. Decision

The Administrative Panel denies Complainant’s request for transfer of the domain

name <uefa2004.com> to it.

Henry Olsson

Sole Panelist

Dated: July 10, 2001

More cases by this complainant

• Union des associations europeennes de football (UEFA) v. Parmjit Chokar — D2001-0688 · uefaeuro2004.com · Transfer · 10 Jul 2001
• Union des associations europeennes de football (UEFA) v. Funzi Furniture — D2000-0710 · championsleague.com · Transfer · 22 Oct 2000