Fiji Rugby Union v. Webmasters Limited

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Fiji Rugby Union v. Webmasters Limited

Case No. D2003-0643

1. The Parties

The Complainant is Fiji Rugby Union, of Suva, Fiji, represented by Fiona Ey,

Samoa.

The Respondent is Webmasters Limited, of Suva, Fiji, represented by Sheridan

Ross, P.C., United States of America.

2. The Domain Name and Registrar

The disputed domain name <fijirugby.com> is registered with Tucows Inc,

of Toronto, Ontario, Canada

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on August 15, 2003. On August 15, 2003, the Center transmitted

by email to Tucows a request for registrar verification in connection with the

domain name at issue. On August 18, 2003, Tucows 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,

billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively

deficient, the Complainant filed an amendment to the Complaint on August 21, 2003,

the Center verified that the Complaint together with the amendment to 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 September 4, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response September 24, 2003.

The Response was filed with the Center September 24, 2003. On September 30, 2003,

the Respondent requested if it could file a supplementary submission.

The Center appointed Clive Elliott, Andrew Brown QC and Richard Hill as Panelists

in this matter on October 21, f3. The Panel finds that it was properly

constituted. Each member of 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.

On making its own review of the evidence and in particular viewing extracts

from the disputed domain name at "www.archive.org" the Panel issued

a Procedural Order seeking further submissions from the Complainant and Respondent.

In particular, this was directed to the Respondent’s claims to have registered

the domain name "at least as early as 1999" when in fact the contemporaneous

extracts on "www.archive.org" showed use by a party apparently associated

with the Complainant.

On November 20, 2003, the Complainant filed a supplementary submission

and on November 27, 2003, the Respondent filed its supplementary submission.

The Panel felt that, after considering the Respondent’s supplementary response

that there were still some questions about the alleged use of the Respondent’s

site after November 15, 2000, because the archived records of the

site immediately after that date showed that it resolved to use by MSI Lodging

Systems Inc., which appeared to have nothing to do with Fiji Rugby or indeed

the Respondent. The Panel also wished to receive further information on when

the Respondent first used the domain name <fijirugby.com> and whether

this was before or after it received notice of the Complainant’s allegations

of rights in the domain name and/or the complaint itself.

The Panel also felt that it was at least a possibility that there was arguable

bad faith in the way that the Respondent is or was using the <fijirugby.com>

domain name to divert traffic to its "wwwfijilive.com" site – even

though this had not been argued by the Complainant.

As a result and an Administrative Panel Procedural Order was issued on December 3, 2003,

in the following terms:

The Panel is currently considering the above matter. It notes that:

1. Respondent asserts that it registered the disputed domain name prior to

November 15, 2000.

2. According to web archives at "www.archive.org", during 2001, the

disputed domain name was used by or for "MSI Lodging Systems", which doesn't

seem to have any relation to either Complainant or Respondent.

In accordance with Rule 12, we request the President, Chief Executive Officer,

Principal, or equivalent officer of Respondent to file an affidavit (not further

submission or argument) sworn under penalties of perjury within 7 (seven) days

of notification of this order responding to the questions below:

a) To the best of your personal knowledge, who owned the disputed domain name

during 2001?

b) If it is the Respondent, why was Respondent using the disputed domain

name for purposes, which appear to be completely unrelated to Fiji and/or Rugby?

c) If the Respondent was using the disputed domain name during 2001 to promote

"MSI Lodging Systems", at what date and why did it change the website

at the disputed domain name to refer to rugby in Fiji?

d) If Respondent did not own the disputed domain name during 2001, then at

what date, from whom, and for what reason did it acquire the disputed domain

name?

e) Did Respondent register or acquire the disputed domain name primarily for

the purpose of selling, renting or otherwise transferring the domain name registration

to the Complainant for valuable consideration in excess of the Respondent’s

out-of-pocket expenses incurred directly in relation to the domain name?

f) By using the domain name, has Respondent intentionally attempted to attract,

for commercial gain, Internet users to its 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 its website or location

or of a product or service on its website or location?

In accordance with Rule 14(b), in case of default with respect to this request,

the Panel may draw such inferences there from as it considers appropriate."

On December 10, 2003, the Respondents submitted an affidavit sworn

by Mr. Yashwant Gaunder. That affidavit asserted that to the best

of his knowledge and belief, the Respondent had acted properly and had not used

the domain name <fijirugby.com> to intentionally attempt to attract for

commercial gain, Internet users to its website or to engage in a conduct complained

of.

4. Factual Background

The Complainant is a sporting body established in 1913, to administer rugby

in Fiji. The Complainant comprises 36 affiliated unions and associations with

more than 600 member clubs in total. Rugby is the leading sport throughout Fiji

with an estimated 60,000 senior players and 20,000 school-aged players out of

a total population of approximately 750,000 people.

The Complainant is the owner of six registered trademarks in a range of countries.

All these marks concern a composite word and design mark being a football shaped

oval containing a palm tree and the words "FIJI RUGBY" emblazoned

across the bottom. The Complainant’s first registration, in Fiji, is dated October 9, 1998.

The Complainant claims that it has operated as a professional sporting body

since August 2001.

The Respondent is an Internet content provider, which provides website hosting,

development and maintenance services. It provides on-line content on multiple

subjects related to the Republic of Fiji, as well as the Pacific Islands and

also offers its hosting, development and website maintenance services to others

Around 1998, the Respondent registered approximately 20 domain names for use

in connection with its services (the "Domain Names") including, among

others, <fijirugby.com>, <pacificfootball.com>, <fijiescape.com>,

<hellofiji.com>, <fijiclassfieds.com>, and <pacificrealtors.com>.

5. Parties’ Contentions

A. Complainant

The Complainant states that the words FIJI RUGBY and the Complainant’s logo

are used extensively in association with rugby matches in Fiji. They are used

on all newspaper advertisements for upcoming matches and on all match tickets

for games controlled by the Complainant in Fiji including Test matches, and

national and provincial competitions. These games number more than 80 in total

for each season across the country and involve the sale of approximately 350,000

tickets each year. The words FIJI RUGBY and the Complainant’s logo are also

used on the match balls used by teams in all matches controlled by the Complainant.

As part of its brand strategy and move into the era of professional rugby,

the Complainant began activities to register trademarks in 1997. Pursuant to

that it filed a number of trademark applications in 1997 and 1998.

The Complainant claims that at one stage the Respondent offered to provide

it with sponsorship payments and IT services in kind to the value of FJD325,

000 over three years. The value in kind was proposed to be provided as computer

equipment and support and the creation and management of a website to be a rugby

portal using the domain name <fijirugby.com>. Negotiations between the

parties broke down in August 2002. The Complainant made approaches to the

Respondent in written correspondence dated December 11, 2002, February 24, 2003,

and March 25, 2003, seeking the transfer to the Complainant of the

<fijirugby.com> domain name. The Respondent evidently failed to respond

to any of these letters.

The Complainant notes that the Respondent has registered at least 14 domain

names with Tucows Inc. and that it has not made any use of any of these domain

names to host websites.

The Complainant makes particular mention of what it calls an "unsolicited

approach" to the Complainant with a proposal for use of the domain name

<fijirugby.com>. The proposal was evidently that the Respondent’s representative

proposed to allow the Complainant to use the domain name if the Complainant

gave the Respondent certain things in the context of a sponsorship package.

B. Respondent

The Respondent states that after it registered the Domain Names they were later

transferred from the Network Solutions registrar to the Tucows registrar on

November 15, 2000. It asserts that while the Whois record currently available

indicates that the Domain Names were registered on November 15, 2000,

this record was created only as a result of Webmaster’s change of registrars.

Webmasters owned the <fijirugby.com> domain name, as well as the other

Domain Names, well prior to this change of registrars

The Respondent states that it originally registered the Domain Names with the

intent of developing individual content sites for each domain and initially

used most of the Domain Names in that fashion. It asserts that to save website

maintenance costs, however, and because of the collapse of the "dot-com"

boom, the Domain Names were eventually redirected and integrated into two Webmaster’s

content sites at "www.fijilive.com" and "www.hellopacific.com."

It also asserts that the domain name <fijirugby.com> was used at least

as early as 1999, to display news and highlights from all levels of rugby in

Fiji. Later, the domain name was used to point to "www.hellofiji.com"

rugby section, which also displayed a broad range of rugby news and highlights.

It also states that eventually, "www.hellofiji.com" was integrated

into <fijilive.com> and today the <fijirugby.com> domain name points

to the rugby content section of "www.fijilive.com."

In the supplementary evidence supplied, the Respondent recognizes that it has

no documentary evidence establishing its claim of ownership of the <fijirugby.com>

domain name before 2000, and that it has been forced to rely in large part on

its memory. It asserts that any inconsistency between the Respondent’s memory,

the archive.org records and the assertions in the Complainant’s supplementary

submission is no indication, however, that Webmasters in any way attempted to

mislead this Panel. In fact, Webmasters contends that it fully appreciates that

its claim of ownership of the disputed domain name prior to November 15, 2000,

was based solely on Webmasters’ memory.

In terms of the alleged use of the <fijirugby.com> domain name the Respondent

asserts as follows:

"The domain name fijirugby.com was used at least as early

as 1999 to display news and highlights from all levels of rugby in Fiji."

It also asserts that:

"Fiji Rugby Football Union did not change its name to "Fiji Rugby

Union" until late in 2001. The identity change occurred long after Webmasters

had registered and was using the descriptive name in question.

Finally, in terms of the allegation as to notice it asserts that:

"Webmasters was using the domain name fijirugby.com well before this date"

In response to the allegation about a meeting with Fiji Rugby it states that

at no point during these discussions did Webmasters offer or agree to sell the

<fijirugby.com> domain name to the Complainant by itself for any amount

of money or any other consideration. Indeed, it asserts that the sale of the

domain name was never part of the discussions at all.

It submits that the <fijirugby.com> domain name was not chosen to cause

confusion or tarnish the trademark of the Complainant but rather it was registered

while the Complainant was operating as Fiji Rugby football Union and well before

the Complainant had filed any trademark applications for the Fiji Rugby and

design mark.

Finally, it submits that since Webmasters registered its <fijirugby.com>

domain name before the Complainant received its trademark registrations, the

Complainant cannot establish bad faith.

6. Discussions and Findings

The Panel finds that:

(a) the domain name is identical or confusingly similar to a trademark in which

the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in the domain name;

and

(c) the Respondent registered and has used the domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has registered a composite word and design mark, which includes

the words "FIJI RUGBY" across the bottom. This trademark has been

registered in a number of countries. The earliest registration is in Fiji and

dates back to February 18, 1998 in relation to clothing, footwear

and headgear in Class 25. The trademark registration states: "This registration

gives no right to the exclusive use of the word "Fiji" and "Rugby".

This appears to be a disclaimer of the individual words, thereby recognizing

the registrant’s rights in the combination.

The Complainant has also registered its trademark in Australia, New Zealand,

Europe, the USA and Japan.

These registrations give the Complainant a proprietary right in a trademark

which incorporates the words "Fiji Rugby", of relevance, in the home

country of both the Complainant and the Respondent. Further, the Complainant

is a sporting body, which was established in 1913, and has used the Fiji Rugby

name since then. There is clear evidence of both long-standing and substantial

use of the name Fiji Rugby sufficient to provide the Complainant with a significant

reputation in at least Fiji.

The Respondent does not seriously dispute the Complainant’s use and registration

of the trademark/name Fiji Rugby. However, it argues that the term "Fiji

Rugby" is descriptive and generic in relation to both rugby and rugby league

in Fiji and that the Complainant does not have protectable rights in the name/trademark.

This argument fails to take into account the existence of the trademark registrations

and the evidence filed by the Complainant that it has taken steps to either

authorize or license third parties who use the Fiji Rugby name (or derivatives

of it) in that country. Likewise, in relation to the game of rugby league, the

evidence clearly indicates that this code is known by its title "Fiji National

Rugby League" (emphasis added by Panel) or similar designations.

The Panel notes that the Respondent, as a significant organization in Fiji,

must have been well aware of the importance of the game of rugby in Fiji and

of the Complainant’s assertion of rights in the name/trademark, an issue dealt

with below.

Accordingly, the Panel finds that the Complainant has rights in the Fiji Rugby

name/trademark and the domain name is identical and certainly confusingly similar

to a trademark in which the Complainant has rights.

Accordingly, the first ground is made out.

B. Rights or Legitimate Interests

The Respondent alleges that it has a legitimate interest in using and indeed

had used the <fijirugby.com> domain name well before the Complainant sought

trademark registrations for the "Fiji Rugby" and design mark.

The Respondent stated that its first knowledge of any dispute regarding the

domain name was on December 12, 2002, and that Webmasters was using

the domain name ‘well before’ this date.

The Respondent’s main contention is that it was entitled to use the <fijirugby.com>

domain name because it was first in time and of course because it questioned

the Complainant’s rights in the name. In its verified response, which the Managing

Director of Webmasters Ltd, stated was "true and correct" to

the best of his knowledge and belief, it is asserted that the first use of the

domain name <fijirugby.com> was "at least as early as 1999".

The Respondent’s supplementary response, this time certified as correct by counsel,

supplies selected articles purporting to show use of the <fijirugby.com>

domain name but which are in fact archives from <fijilive.com/rugby>.

In any event, much of the purported evidence relates to rugby league which,

as noted above, is clearly identified as Fiji National Rugby League or the like.

Finally, following the request for further evidence in the Administrative Panel

Procedural Order of December 3, 2003, Respondent’s representative

in a sworn statement dated December 10, 2003, stated that to the best

of his knowledge Webmasters Ltd registered the <fijirugby.com> domain

name at least as early as November 15, 2000, and has used the domain

name to link to Webmasters Ltd’s main site at <fijilive.com> since at

least as early as 2001.

It is troubling to the Panel that the Respondent has chosen, in a verified

statement, to assert use of the disputed domain name as early as 1999, when

there was firstly no evidence of such use, only to state under oath and when

expressly asked to do so, that the earliest use was in fact "since at least

as early as 2001". Given the importance of timing and illustration of a

purported legitimate interest in the domain name, this inconsistency is of concern

to the Panel. It is of more concern given that the Panel, through its own inquiries

by viewing the site at "www.archive.org", was only able to find use

of the domain name in 2001, but by a company, which on the evidence has no relation

to either the Complainant or Respondent.

The Panel is not in a position to resolve these factual questions. It is however

left with a clear impression that it has not been provided with the full picture,

notwithstanding having given the Respondent ample opportunity on two occasions

to support its position with evidence. It is indeed surprising that a professional

website developer such as the Respondent is not able to come up with firm evidence

as to its registration and early use of the domain name, <fijirugby.com>.

As a result of the changes of evidence over the Response, the Supplementary

Response and Supplementary Evidence, the Panel is left with the distinct impression

that the Respondent has been less than frank and it is forced to draw appropriate

inferences from such conduct.

Negotiations between the parties, following the Respondent’s unsolicited approach

to the Complainant, seem to have broken down in August 2002. By a letter dated

December 11, 2002, from the Chief Executive Officer of the Fiji Rugby

Football Union it was asserted that there was no site at the domain name <fijirugby.com>

and he assumed that there would be no usage for it going forward. Given the

Complainant’s assertion of rights in the domain name and a request for its hand-over,

this date is relevant in terms of ascertaining legitimate interest.

The Panel is unable to find any reliable evidence of use of the domain name

<fijirugby.com> by the Respondent before this date.

(a) In its Supplementary Response the Respondent put forward to the Panel claimed

evidence of legitimate use in 2000, and subsequently. But the later supplementary

affidavit from the Respondent then stated that its first use was "since

at least as early as 2001". On the Respondent’s own evidence, the material

from 2000 is no evidence of legitimate use even though it was put forward as

such;

(b) None of the evidence submitted shows use on <fijirugby.com>. It is

all on <fijilive.com>.

Accordingly, on the basis of the evidence before the Panel we find that there

is no reliable evidence of legitimate use of the domain name by the Respondent,

at least prior to being put on notice by the Complainant. Accordingly we find

that the Complainant succeeds on this ground.

C. Registered and Used in Bad Faith

We note that Respondent’s representative approached the Complainant in July 2002,

with the business proposal referred to above. The timing is perhaps significant

in that this was in the lead up to the latest Rugby World Cup in 2003. The approach

was also unsolicited and the Respondent does not deny that it did the running

in this regard. While there is no evidence that the purpose of the discussion

was to sell the domain name to the Complainant, it appears from the evidence

that the domain name featured in the discussions in that the Respondent offered

to develop and host a website, using its own registration of <fijirugby.com>

in return for or at least as part of providing hosting services, obtaining signage

rights at rugby games and the like.

The majority of the Panel is prepared to infer that, under the circumstances,

the Respondent was thereby utilizing the domain name to assist its negotiations

and while this in itself does not necessarily exhibit bad faith, it is a factor

when considered in the context of this case - particularly the unsatisfactory

position as to the Respondent’s claimed evidence of use.

The majority of the Panel recognizes that rugby is the national game of Fiji

and the Respondent would have been well aware of this. However it acquired the

domain name (this remaining unclear to the Panel) and whenever it first used

it, it appears that the Respondent used the domain name as part of its business

strategy to attract new business.

Further, while the Respondent disputes damaging the trademark of the Complainant,

it is clear that the domain name is being used to divert Internet users to the

Respondent’s other websites. Given the importance of rugby in the country of

Fiji, particularly around the World Cup period, it is found that this amounts

to the deliberate diversion of custom for the benefit of the Respondent. While

this conduct was not relied on by the Complainant in its Complaint, it was foreshadowed

in the Procedural Order of December 3, 2003, thereby giving the Respondent

the opportunity to respond. The majority of the Panel finds that this amounts

to bad faith use of the trademark in all the circumstances of this case.

Finally, in terms of registration of the domain name, there can hardly be any

argument that the Respondent was well aware of the Complainant’s long-standing

use of the "Fiji Rugby" name/trademark. The Respondent is based in

Fiji, was closely involved in reporting on and promoting the game of rugby in

Fiji through its <fijilive.com> site and must have actual knowledge of

this fact.

In conclusion, while we find that this case is a finely balanced one, in the

final analysis the majority of the Panel concludes that the Complainant has

done sufficient to establish all three grounds. We also draw inferences from

the manner in which the Respondent has argued its case, retreated from formal

statements of fact and generally been less than forthcoming.

Accordingly, the majority of the Panel finds that the third ground is made

out as is the complaint as a whole.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the majority of the Panel orders that the domain name <fijirugby.com>

be transferred to the Complainant.

Clive Elliott

Presiding Panelist

Andrew Brown QC

Panelist

Dated: December 24, 2003

DISSENT

This panelist would like to commend the majority for the thoroughness of its

analysis of the facts and its legal reasoning. While this panelist does agree

with much of the majority's decision, he must, respectfully, disagree with respect

to the issue of bad faith registration and use.

As the majority correctly points out, this case is finely balanced. Unlike

the majority, this panelist finds that the Complainant has not satisfied its

burden of proving, in accordance with 4(a) of the Policy, that the Respondent

registered AND used the disputed domain name in bad faith.

As the majority correctly points out, it isn't clear from the evidence submitted

on what date the disputed domain name was redirected towards the Respondent's

website at <fijilive.com>. What is clear, is that the Respondent utilized

the disputed domain name to assist its commercial negotiations with the Complainant.

As the majority correctly points out, such behavior cannot in and of itself

necessarily be characterized as bad faith under the Policy.

Indeed, the purpose of the Policy is to correct blatant cases of cyber-squatting,

not to adjudicate disputes between parties who have competing rights to a trademark.

The closest equivalent to a legislative history for the Policy can be found

in the April 30, 1999 Final Report of the WIPO Internet Domain Name

Process, which formed the basis for the Policy. This report states at paragraph

135(i):

" ... the scope of the procedure is limited so that it is available only

in respect of deliberate, bad faith, abusive, domain name registrations or "cybersquatting"

and is not applicable to disputes between parties with competing rights acting

in good faith"

The same is repeated at paragraphs 153 and 166. And paragraph 160 states:

"... the procedure would apply only to egregious examples of deliberate

violation of well-established rights."

Paragraph 172 states:

" ... the behavior of innocent or good faith domain name registrants is

not to be considered abusive. For example, a small business that had registered

a domain name could show, through business plans, correspondence, reports, or

other forms of evidence, that it had a bona fide intention to use the name in

good faith. Domain name registrations that are justified by legitimate free

speech rights or by legitimate non-commercial considerations would likewise

not be considered to be abusive. And, good faith disputes between competing

right holders or other competing legitimate interests over whether two names

were misleadingly similar would not fall within the scope of the procedure."

Again, while this panelist agrees with the majority that the Respondent could

have been more forthright in its pleadings, this panelist finds that the Complainant

has not presented adequate evidence to prove that the Respondent acted in bad

faith.

As a consequence, this Panelist respectfully dissents from the majority decision.

Richard Hill

Dissenting Panelist