WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002
Case No. D2000-0034
1. The Parties
The First Complainant is ISL Marketing AG ("ISL"). The Second Complainant is The Federation Internationale de Football Association ("FIFA"), a non-profit association organized in accordance with Article 60(ff) of the Swiss Civil Code. ISL and FIFA collectively are referred to herein as "the Complainants".
The First Respondent is Mr. Ji Young Chung ("Chung"), and individual of In Chon, Korea. The Second Respondent is Worldcup2002.com, the legal status of which is not clear. The Third Respondent is W Co., the legal status of which is not clear. The Fourth Respondent is Worldcup 2002, the legal status of which is not clear. The First Respondent, the Second Respondent, the Third Respondent and the Fourth Respondent collectively are referred to herein as "the Respondents".
2. The Domain Names and Registrar
The domain names the subject of this Complaint are:
For ease of reference, at various points throughout this Decision identification of each of these domain names is made by way of the number associated with it in the above list.
The Registrar of each of these domain names is Network Solutions, Inc of Herndon, Virginia, USA.
3. Procedural History
Issuance of Complaint
On February 3, 2000, the Complainants submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). The Complainant concerned the domain names (1)-(3) inclusive.
A Supplement to the Complainant was submitted by the Complainants to the WIPO Center on February 14, 2000. This Supplement concerned domain names (4)-(15) inclusive.
Confirmation of Registration Details
A Request for Registrar Verification in relation to all the domain names the subject of this Complaint was dispatched by the WIPO Center to the Registrar by email on February 15, 2000. By emails to the WIPO Center on February 16 and February17, 2000, the Registrar in relation to each of the domain names confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain names; identified and provided contact details for the current registrant, the Administrative Contact, the Technical Contact and the Billing Contact of those domain names; and informed that the status of each of the domain names is "active". The registrant, Administrative Contact and Record Created date for each of these domain names is as follows:
Worldcup 10 Promotions
Worldcup 2002 News
Worldcup 2002 Update
Worldcup 2010 Online
Worldcup 2010 Promotions
Ji Young Chung
By an email to the WIPO Center on March 24, 2000, the Registrar confirmed that the "record created" date is the date on which the domain name was first registered.
By emails to the WIPO Center on February 16, and February 17, 2000, the Registrar also confirmed in relation to each of the domain names that either 4.0 Service Agreement or 5.0 Service Agreement is in effect. Amongst other things, both 4.0 Service Agreement and 5.0 Service Agreement provide that the registrant agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into those Agreements is the Uniform Policy. The language of these registration Agreements is English. The case before this Administrative Panel was conducted in the English language.
Notification to Respondents
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondents on February 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding, to the postal, facsimile and email contact details of the Respondents, as provided by the Registrar. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.
Records show that the facsimile transmissions to Chung and to the Technical and Zone Contacts for the domain names were received by them. Records show that the email transmissions to many of the email addresses given by the Registrar as being the contact email addresses of the registrant or of the Administrative, Technical or Zone Contact of the domain names, were not received, the addresses having "permanent fatal errors". By virtue of the fact that the facsimile transmissions to Chung and to the Technical and Zone Contacts for the domain names were received by them, and the fact that Administrative Contact of all of the domain names, Chung, filed a response to the Complaint, this Administrative Panel finds that, for each of the domain names the subject of this dispute, the WIPO Center has discharged its responsibility under rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
On March 9, 2000, the WIPO Center received from the First Respondent, Chung, a Response dated March 6, 2000. This Response was not expressed to be made on behalf of Chung alone. The tenor of the Response (which is discussed further in section 5, below) is to the effect that the Response is made on behalf of the First, Second, Third and Fourth Respondents.
Constitution of Administrative Panel
On March 8, 2000, the WIPO Center issued to the prospective sole Panelist, Dr. Andrew Christie, a request for Declaration of Impartiality and Independence. On March 13, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On the same date the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christies appointment and that, absent exceptional circumstances, a decision would be provided by this Administrative Panel by March 26, 2000. This Administrative Panel found that exceptional circumstances existed which required the projected date of decision to be extended. These circumstances included the fact that there are a large number of domain names the subject of the Complaint, the fact that there are multiple Complainants and Respondents, the fact that there was filed a Supplement to the Complaint, and the fact that there was some question whether the Complaint complied with the formalities of the Uniform Policy and Uniform Rules (as discussed below).
Compliance with the formalities of the Uniform Policy and the Uniform Rules
This Administrative Panel notes that pursuant to rule 1 of the Uniform Rules, the "Respondent" means "the holder of a domain-name registration against which a complaint is initiated", and that pursuant to rule 3(c) of the Uniform Rules, "the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder". This Administrative Panel acknowledges three points in relation to the Complainants naming of the Respondents to this Complaint: (i) the First Respondent, Chung, is not the registrant of any of the domain names; (ii) the domain names are not all registered by the same domain name holder; and (iii) the registrants of domain names (4), (5), (7)-(12) inclusive, (14) and (15) are not named as Respondents.
Nevertheless, it is the case that the First Respondent, Chung, is the Administrative Contact for each of the domain names. In addition, the precise legal status (including whether they in fact exist) of many of the registrants - in particular, the registrants of domain names (4), (5), (7)-(12) inclusive, (14) and (15) - is not clear. Further, in his Response Chung states that he "has been maintaining a relationship with" and has "influence over" the registrants of those names, and "may be said to be the virtual owner of" some of them. Finally, in his Response Chung did not challenge the validity of any aspect of the formalities of the Complaint. In light of these facts, it appears to this Administrative Panel that Chung is the person responsible for and beneficially entitled to the registration of each of the domain names in issue. Taking into account the general principles underlying the Uniform Policy and the Uniform Rules, this Administrative Panel finds that in substance the appropriate Respondents have been named in relation to all of the domain names the subject of the Complaint.
Accordingly, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint as supplemented by the Supplement to the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
The Complainants asserted, and generally provided evidence in support of, the following facts. Except where stated in section 5 below, the Respondents did not challenge these facts. Except where stated otherwise, this Administrative Panel finds these facts established.
FIFA, founded in Paris in 1904, is the world governing body of the sport of "association football" (commonly known throughout the world as soccer or football). FIFA is comprised of the National Football Association of 203 countries around the world, and is the originator and organizer of a number of world soccer championships, including, in particular, the widely known quadrennial world football championship known as the World Cup. In 2002, FIFA will sponsor, and Korea and Japan will co-host, the first World Cup championship to be held outside of Europe and/or the Americas. The 2002 World Cup championship has attracted substantial attention and generated significant independent press coverage throughout Asia and the remainder of the world. FIFA maintains a significant presence on the Internet through its website located at www.fifa.com.
ISL is the exclusive marketing agent for FIFA, charged with the commercial exploitation and protection of FIFAs intellectual property rights including, in particular, the <WORLD CUP> mark and properties.
FIFA, or an entity whose name includes the letters ISL, is the owner of numerous trademark registrations for the <WORLD CUP> mark and variations thereof in countries throughout the world, including the following:
a. Swiss Trademark Registration No. 431340 for the WORLD CUP mark covering goods in the following International Classes: 3 (cosmetics and cleaning preparations); 4 (lubricants and fuels); 6 (metal goods); 8 (hand tools); 9 (electrical and scientific apparatus); 11 (environmental control apparatus); 12 (vehicles); 14 (jewelry, precious metals); 16 (paper goods and printed matter); 18 (leather goods); 20 (furniture and articles not otherwise classified); 21 (housewares and glass); 24 (fabrics); 25 (clothing); 28 (toys and sporting goods); 29 (meats and processed foods); 30 (staple foods); 32 (light beverages); 33 (wine and spirits); 36 (insurance and financial services); 38 (communications services); 39 (transportation and storage services); 42 (miscellaneous services). A copy of the FIFAs registration certificate is attached as Exhibit 4 to the Complaint.
b. Swiss Trademark Registration No. 403353 for the mark WORLD CUP JAPAN 2002 covering goods in the following International Classes: 3, 4, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 32, 33 (See descriptions provided in paragraph above); and International Classes 1 (chemicals); 5 (pharmaceuticals); 26 (fancy goods); 27 (floor coverings); 31 (natural agricultural products); and 34 (smoker's articles). A copy of ISL Football AGs registration certificate is attached as Exhibit 5 to the Complaint.
c. International Trademark Registration No. 678511 for the mark WORLD CUP for goods falling in International Classes: 3, 4, 6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 32, 33, 36, 38, 39, 40, 41, 42. A copy of FIFAs registration certificate is attached as Exhibit 6 of the Complaint.
d. Japanese Trademark Registration No. 4012048 for the mark WORLD CUP for the following goods and services: unworked or semi-worked glass (except building glass); pans; non-electric coffee-pots (not of precious metal); Tetsubin (cast iron kettles); kettles; tableware (not of precious metal); ice pails; household whisks (non-electric); portable cold boxes; strainers; pepper pots; sugar bowls; salt shakers (not of precious metal); trays (not of precious metal); toothpick holders (not of precious metal); rice chests; bamboo bowls; shakers; rice scoops; hand-operated coffee grinders and hand-operated pepper mills; funnels; glass preserving jars; drinking flasks; wooden pestles; earthenware mortars; dining trays/stands; bottle openers; graters; tart scoops; pan-mats/trivets; chopsticks; chopstick cases; ladles/dippers; sieves/sifters; chopping boards; insulating flasks/vacuum bottles; rolling pins; grills; toothpicks; lemon squeezers; non-electric waffle irons; cleaning or laundry equipment; tub brushes; metal brushes; brushes for pipes; industrial brushes; ship scrubbing brushes; pig bristles for brushes; clothes brushes; packaging containers of glass or ceramic; troughs for livestock; poultry rings; feeding vessels for pets; brushes for pets; chewing pacifiers for dogs; flower pots; hydroponic instruments for home gardening; cinder sifters for household use; boxes of metal for dispensing paper towels; boot jacks; bird cages; bird baths; watering cans; chamber pots; coal scuttles; soap dispensers; piggy banks (not of metal); toilet paper holders; mouse traps; fly swatters; bath water stirrers; bathroom stools; bathroom pails; candle extinguishers and candlesticks (not of precious metal); vases (not of precious metal); upright signboards of ceramic or glass; koro (incense burners); flower bowls (not of precious metal); wind chimes. A copy of ISL Properties Aktiengesellschafts registration certificate is attached as Exhibit 7 of the Complaint.
e. Korean Trademark Registration No. 348097 for the mark WORLD CUP for goods in International Class 6 (beers and ales). A copy of FIFAs registration certificate is attached as Exhibit 8 of the Complaint.
f. Japanese Trademark Registration No. 320598 for the mark WORLD CUP JAPAN 2002 for the following goods and services in Class 9: batteries; glasses; electrical communication machines and apparatus; records; metronomes; applied electronic machines and instruments; electric irons; electric hair-curlers; electric wax polishers; electric cleaners; electric buzzers; cinematographic films; transparencies; slide film mounts pre-recorded video discs and video tapes; toys for television games for home use. A copy of FIFAs registration certificate is attached as Exhibit 9 of the Complaint.
g. Japanese Trademark Registration No. 320598 for the mark WORLD CUP JAPAN 2002 and Device for the same goods identified in the paragraph above. A copy of FIFAs registration certificate is attached as Exhibit 10 of the Complaint.
h. Korean Trademark Registration No. 339323 for the mark 2002 WORLD CUP KOREA and Device for the following goods in Class 52: non-music recorded tapes; phone cards; pictorial postcards; calendars; pamphlets; credit cards; card keys; motion picture films; slide films and photographs. A copy of FIFAs registration certificate is attached as Exhibit 11 of the Complaint.
i. International Trademark Registration No. 482138 for the mark FIFA WORLD CUP Trophy and Device for the goods and services in International Classes 6, 14, 25, 28. A copy of FIFAs registration certificate is attached as Exhibit 12 of the Complaint.
According to the documentation provided by the Complainants, the trademarks identified in (b) and (d) above are registered in the name of ISL Football AG, and ISL Properties Aktiengesellschaft, respectively. The Complainants have not provided any evidence of the connection, if any, between these two entities and the Complainants. Accordingly, this Administrative Panel makes no finding, for the purpose of this Complaint, that the Complainants own the trademark registrations alleged in paragraphs (b) and (d) above.
With the apparent exception of trademark registration (c) above, each of the trademark registrations which this Administrative Panel finds is owned by the FIFA was issued on a date before the earliest date of registration of any of the domain names in issue (namely August 26, 1997, for domain name (3)).
FIFA has used the <WORLD CUP> mark in connection with the promotion of its World Cup event via its Internet website located at www.fifa.com. In addition, FIFA has used the <WORLD CUP> brand to promote its international football championship for nearly a century. The <WORLD CUP> brand name symbolizes the substantial goodwill associated with FIFA. Furthermore, due to its wide and substantial international use, the FIFA <WORLD CUP> mark and associated marks enjoy significant fame.
Prior to the issuance of this Complaint, at a time not specified by the Complaints, Chung established web sites at http://www.worldcup2002.net and http://www.worldcup2002.org, each of which resolve to the homepage located at http://www.worldcup2002.com ("Chungs web site"). As at January 20, 2000, this web site framed content from FIFAs official web sites (including, in particular, FIFAs official web site, the official web site of FIFAs Japan Organizing Committee, and the official web site of FIFAs Korean Organizing Committee) without the Complainants authorization or authority beneath a horizontal banner listing the disputed domain names (1)-(3) inclusive (Exhibits 15 and 16 of the Complaint). Chungs web site also included news releases taken in their entirety, and without permission, from FIFAs official website. These articles were included in a link on Chungs web site titled <Media News> (Exhibits 23, 24 and 25 of the Complaint).
The Complainants assert that Chungs web site included advertisements from competitor companies to FIFAs official WORLD CUP 2002 corporate sponsors, and that Chung likely collects advertising revenues and profits from these activities. Attached as Exhibit 26 of the Complaint is an alleged screen shot of Chungs web site displaying a VISA advertisement beneath the disputed domain names (1)-(3) inclusive. Attached as Exhibit 27 of the Complaint is an alleged screen shot of the full VISA advertisement obtained by clicking on the VISA button advertisement on Chungs web site. The Complainant states that contrary to the implication left by Chungs web sites, MASTERCARD, not VISA, is the official corporate sponsor (for financial services) of WORLD CUP 2002.
This Administrative Panel notes that the VISA advertisement in Exhibit 26 appears to be superimposed over, rather embedded within, the page of Chungs web site. Further, this Administrative Panel notes that Exhibit 27 of the Complaint is in fact a screen shot of Chungs web site displaying a list of songs which may be listened to using <Real Player>. Also, in his Response Chung asserts that "the affiliated web site Japan.CC, not this website, used to have a VISA card ad". In light of the fact that this issue is contested by the Respondents, and that the evidence of the Complainants on this issue is at best ambiguous, for the purpose of this Complaint this Administrative Panel does not find that Chungs web site included advertisements.
On December 24, 1999, Chung sent an email to Christoph P. Malms, Chairman of ISMM, the parent company of ISL (a copy of which is Exhibit 13 of the Complaint). The subject line of this email is "WORLDCUP2002.COM NET ORG". The substantive contents of this email are:
I am the owner of the above three domain names.
I understand your company is going to make a website for wo.
May I ask whether the above names cud be used as your website?
If you are interested in any of the names, I am willing to sell it to your company.
Worldcup2002.com is now in operation on the web although its contents are not so rich at the moment.
Please visit if you have any time.
5. Parties Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to each of the domain names the subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainants contend that each of the domain names are confusingly similar to FIFAs <WORLD CUP> mark. In particular, the Complainants contend that the domain names "incorporate, both fully and in abbreviated form, FIFAs trademark WORLD CUP and significantly incorporate each of FIFAs marks WORLD CUP, WORLD CUP JAPAN 2002, WORLD CUP KOREA JAPAN 2002, and WORLD CUP KOREA 2002".
In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complainants contend that Chung does not have rights or legitimate interests in the domain names "by virtue of the fact that FIFAs WORLD CUP mark(s) are distinct and famous, and Chungs use of FIFAs marks is unauthorized". Further, the Complainants contend that none of the three circumstances identified in paragraph 4(c) of the Uniform Policy apply to Chungs activities.
In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainants contend that evidence of bad faith registration and use is established by circumstances of the sort identified in paragraphs 4(b)(i), (ii) and (iv) of the Uniform Policy. In relation to paragraph 4(b)(i) circumstances, the Complainants point to Chungs December 24, email to Christoph P. Malms. In relation to paragraph 4(b)(ii) circumstances, the Complainants point to Chungs registration of 15 domain names containing or abbreviating the mark <WORLD CUP>. In relation to paragraph 4(b)(iv) circumstances, the Complainants point to the fact that Chungs web site framed the content of FIFAs web site, slavish copied the content of FIFAs press releases, and used FIFAs trademarks in a manner unlawfully suggesting a sponsorship or association which does not exist. In addition, the Complainants contend that bad faith on the part of the Respondents is evidenced by the fact that Chung "deliberately registers domain names under fictitious organizations, in breach of his contract with NSI, to disguise his individual connection to and evade his legal responsibility for the registration of his domain names".
Complainants Request under Rule 12
In their Supplement to the Complaint, the Complainants requested the Panel under rule 12 of the Uniform Rules:
to compel Chung to produce a full list of his domain names associated with his NIC handles JYC6 and JC11182, and any other NIC handles registered to Chung.
The reason for this request was stated as follows:
NSI will provide, via email, reports listing all domains registered to a particular NIC contact handle. Because NSI does not respond to informal discovery requests and NSI will only send these reports to the email address listed for the NIC contact handle, Plaintiff cannot obtain a list of all trademark-related domain names currently registered by Chung.
The Respondents in general terms contend that none of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to any of the domain names the subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Respondents contend that the compound phrase <worldcup2002> "is neither identical nor similar to FIFAs world cup as registered" by it. In addition, the Respondents contend their use of the domain names does not create any confusion with the Complainants, because Chungs web site "clearly states in large letters on its front page that it is not FIFAs official website".
In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Respondents contend that they have rights or legitimate interests in respect of the domain names, by virtue of the circumstances identified in paragraph 4(c). In particular, the Respondents contend that Chungs web site "had already been in use for bona fide offering of online service before the notice of dispute. It has increasingly been known as such."
Further, the Respondents contend that Chung "has been making a legitimate non-commercial or fair use of <worldcup2002.com>". The substance of this contention is best elaborated by quoting (necessarily at some length) from the Response, as follows:
At the moment, worldcup2002.com is providing several links with world cup-related websites and some information about Korea and Japan without any purpose of getting commercial gain. The intent is to provide an integrated and more convenient world cup 2002-related website for the world cup soccer fans around the world. This is motivated by [Chungs] dissatisfaction with the conventional world cup related websites. [Chung] strongly believes that there should be a fresher (in idea) and more convenient world cup website regardless of money matters. And [Chung] does not believe that FIFA or some other big corporations should be the only media of communication exchange among soccer lovers of the world.
[Chungs web site] is based on the belief that anyone, whether individual or corporate, who has worthwhile information and ideas, opinions should be given the opportunity to freely share them with his contemporary citizens of the world. We do not believe that FIFA should be the only entity to talk about or provide information about 2002 FIFA World Cup Korea/Japan.
It is also generally believed that one of the positive functions of the internet, which is one of the greatest human heritages, is that it provides room for anyone to freely exchange their ideas, knowledge, information, opinions beyond their national boundaries, thus contributing to the accumulation of global wealth of knowledge.
In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Respondents generally contend that "the issue of bad faith cannot exist fundamentally". The general thrust of the Response on this issue is to the effect that there cannot be bad faith registration and use where the domain name is used as the address of a web site which provides a non-commercial source of information about an event of great public interest. Further, the Respondents contend that the compound phrase <worldcup2002> is not the Complainants exclusive property. In particular:
the word "world cup" is widely used by many organizations all around the world. Many official international sports games, other than soccer, are held under the name of "world cup".
The Respondents took issue with the Complainants contention that bad faith was evidenced by Chungs offer to sell domain names (1)-(3) inclusive. In particular, the Respondents state:
This website [the one to which domain names (1)-(3) resolve] is not offered for sale for a significant amount of money. It is needless to say that it is absolutely possible in any free market society to ask a question of anybody whether they are interested in buying any privately-owned thing. It was once considered a good idea to sell this website to an entity, who has better financial and technical resources to improve it, for the low price of recovering its cost. But, at the present moment, this website is not being put up for sale at any price.
The Respondents also took issue with the Complainants contention that bad faith was evidenced by Chungs deliberate registration of domain names under fictitious organizations. The Respondents claim that:
Those registered names are not fictitious names, but actual groups engaged in world cup fan club activities. It is the common practice and reality in Korea that fan clubs, art-related entities or small-scale neighborhood stores do perform their respective functions without registering their presence. [Chung] happens to be their admin contact due to his influence over them. As [the Response] mentioned earlier, if there had been any intention to use fictitious names, [Chung] would have used different contact names and addresses. There is no bad faith here.
Respondents reply to Complainants Request under Rule 12
The Respondents resisted the Complainants request under rule 12 of the Uniform Rules for this Administrative Panel to compel Chung to produce a full list of his domain names associated with his NIC handles JYC6 and JC11182, and any other NIC handles registered to Chung. The Respondents contended that such a request "may constitute an undue infringement upon [Chungs] privacy".
6. Discussion and Findings
Complainants Request under Rule 12
Rule 12 of the Uniform Rules provides as follows:
In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
The sensible reading of this rule is that it permits a Panel to request further information that is relevant to the Complaint as filed by the Complainant. It is not directed towards obtaining further information that might be relevant to some other Complaint that the Complainant, or some other party, might at some time in the future wish to file.
There may be some Complaints for which it is relevant to know all the domain names registered by the Respondent. In relation to this Complaint, however, the Complainants have not shown how knowing the identity of all of Chungs domain name registrations is relevant to the Complaint filed by them. In the absence of demonstrable relevance, this Administrative Panel will not request the Respondents to provide this information under rule 12. Accordingly, the Complainants request under rule 12 is refused. Should it subsequently become known that Chung has registered other domain names that allegedly are identical or confusingly similar to the trademarks or service marks of Complainants or some other party, and that these registrations allegedly occurred in circumstances where the other requirements of paragraph 4(a) of the Uniform Policy are satisfied, then the correct course is for the Complainants, or that other party, at that time to file a Complaint under the Uniform Policy.
Complainants Contentions under Paragraph 4(a)
It is a close question whether the Complainants have made out their case under paragraph 4(a) of the Uniform Policy. The Respondents joined issue on each of the three elements which need to be established for a remedy to be available. The contentions of both the Complainants and the Respondents on a number of issues are finely balanced.
Identical or Confusingly Similar Domain Names
This Administrative Panel finds that domain names (1)-(13) inclusive are confusingly similar to FIFAs registered trademark <WORLD CUP>. FIFAs 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 domain names (1)-(13) inclusive 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.
Because the Complainant has succeeded, in relation to domain names (1)-(13) inclusive, in its contention that paragraph 4(a)(i) of the Uniform Policy is satisfied by virtue of those domain names being confusingly similar to FIFAs registered trademark <WORLD CUP>, it is not necessary for this Administrative Panel to consider whether that paragraph of the Uniform Policy is also satisfied by virtue of those domain names being confusingly similar to FIFAs other registered trademarks. Accordingly, this Administrative Panel makes no finding on those matters.
This Administrative Panel finds that domain names (14) and (15) are not confusingly similar to any of FIFAs registered trademarks, and are not confusingly similar to the registered trademarks identified in (b) and (d) of paragraph 4.4 above. Domain name (14) contains the numbers <2002>, which most probably would be understood by most people as being a reference to the year 2002. Domain name (15) contains the numbers <02>, which arguably might be considered by a number of people to be an abbreviation of the year 2002. However, neither domain name contains the key words <WORLD CUP>.
The fact that domain names (14) and (15) both contain the letters <WC> is insufficient to satisfy the requirement of paragraph 4(a)(i) of the Uniform Policy. Whilst it can be argued that <WC> is an abbreviation of <WORLD CUP>, this Administrative Panel does not consider that this is the likely meaning which most people would give to these letters. These letters are open to being interpreted as meaning any number of things, as well as meaning nothing at all. There is nothing in the context of the use of these letters in the domain names that suggests they are an abbreviation of anything. Even if the context of their use did make clear that the letters <WC> were an abbreviation, it is quite likely many native speakers of the English language would consider they were an abbreviation either for "water closet" (and hence an allusion to "toilet") or "West Central" (see Concise Oxford English Dictionary, entry for "WC"), or for "without charge" (see Merriam-Websters Collegiate Dictionary, entry for "WC"). As for how native speakers of other languages using the Romanised alphabet would most likely interpret these letters as an abbreviation, this Administrative Panel is unable to decide. In short, the letters <WC>, even in conjunction with the year <2002> or the year abbreviation <02>, do not likely suggest <WORLD CUP>, and hence domain names (14) and (15) are not confusingly similar to any of the trademarks referred to in paragraph 4.4 above.
Respondents Rights or Legitimate Interests in the Domain Names
The Complainants case in relation to the second aspect of paragraph 4(a) of the Uniform Policy is less clear. The Complainants contend that Chung does not have rights or legitimate interests in the domain names "by virtue of the fact that FIFAs WORLD CUP mark(s) are distinct and famous, and Chungs use of FIFAs marks is unauthorized". Whilst this Administrative Panel accepts that FIFA has not authorized Chung to use the <WORLD CUP> mark, it does not consider this mark to be particularly distinctive. Even (or perhaps particularly) when the context of use is limited to sporting events, the words <WORLD CUP> are not inevitably associated only with FIFA. According to Encyclopedia Britannica CD 98 Standard Edition, there are at least 16 sports in addition to association football which have a World Cup competition. These sports include Alpine Skiing (awarded since 1967), three-cushion Billiards, Cricket (both Womens, since 1973 and Mens, since 1975), Fencing, Field Hockey, Golf (since 1967), Rugby League, Rugby Union, Rugby Sevens, Snooker, Swimming, Wrestling, and various gymnastic, track and field sports. It may be, therefore, that any number of sporting organizations who conduct a competition under the name <World Cup> could argue that they have a right or legitimate interest in respect of domain names containing those words. However, the Respondents are not such an organization.
Nevertheless, the Respondents contend that they have a right or legitimate interest in the domain names the subject of this Complaint by virtue of the circumstances identified in paragraph 4(c) of the Uniform Policy. This claim is founded on the assertion that, prior to notice of the dispute, Chung used domain names (1)-(3) inclusive as the address of a web site which provided a bona fide offering of an on-line service (an alternative source of information about the FIFA World Cup 2002), that Chungs service has become "increasingly known" by such domain names, and that this use constituted a legitimate non-commercial use of the domain names. This Administrative Panel notes that this claim does not relate to domain names (4)-(13) inclusive, and so cannot found a right or legitimate interest in those domain names. Because no other evidence of a right or legitimate interest in those domain names was provided by the Respondents, and because the Complainants asserted that the Respondents were not authorized to use FIFAs registered trademark <WORLD CUP> in these confusingly similar domain names, this Administrative Panel finds that the Respondents have no right or legitimate interest in domain names (4)-(13) inclusive.
In relation to domain names (1)-(3) inclusive, this Administrative Panel does not find that Chungs web site offered a bona fide on-line service. As stated in paragraph 4.9 above, the Complainants have established that Chungs web site framed content from FIFAs official web sites (including, in particular, FIFAs official web site, the official web site of FIFAs Japan Organizing Committee, and the official web site of FIFAs Korean Organizing Committee) without the Complainants authorization or authority, and included news releases taken in their entirety, and without permission, from FIFAs official website. This is not a bona fide offering of on-line services.
This does not, however, resolve the issue. It will be sufficient for the Respondents to succeed in this Complaint in relation to domain names (1)-(3) inclusive if they can establish, as they claim, that they are making a legitimate non-commercial or fair use of these domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks or service marks of FIFA. Is Chungs use of these domain names as an address for his web site such a use as contemplated by paragraph 4(c)(iii) of the Uniform Policy? The parties dispute whether Chungs web site is commercial. For the reasons stated in paragraph 4.10 above, this Administrative Panel did not find that Chungs web site contained the advertisement alleged by the Complainants. Since the Complainants did not allege any other commercial activity at the web site, it follows that this Administrative Panel finds that Chungs use of the domain names as the address of his web site is a non-commercial use. However, the question remains whether this non-commercial use is legitimate or in any event is a fair use.
The Respondents contention is that their non-commercial use of domain names (1)-(3) inclusive as addresses for Chungs web site is legitimate and a fair use, because it provides alternative news and information about the forthcoming FIFA World Cup in 2002. As a matter of principle, this Administrative Panel agrees with the general sentiments expressed by the Respondents, extracted in paragraph in 5.9 above. However, it finds that the actual use made of the domain names is rather different from the high ideals espoused therein. The evidence of the Complainants establishes that Chungs web site framed and slavishly copied content from FIFAs official World Cup web site. This is hardly an example of a "a fresher (in idea)" offering. It is one thing to provide alternative news and information about, or even commentary and criticism on, a matter of public interest; it is another thing altogether to appropriate someone elses news and information and provide it in circumstances suggesting the provider is the creator of it, or at least is authorized to supply it. The former may well be a legitimate or fair use, but the latter is generally not. In this case, the Respondents use of domain names (1)-(3) inclusive as the address of Chungs web site, even though non-commercial, was not a legitimate or fair use.
In light of the above facts, this Administrative Panel finds that the Respondents do not have a right or legitimate interest in domain names (1)-(13) inclusive.
Domain Names Registered and Used in Bad Faith
This Administrative Panel does not accept the Complainants contention that bad faith is established, under paragraph 4(b)(i) of the Uniform Policy, by virtue of Chungs offer to sell domain names (1)-(3). Chungs offer to sell the domain names was rather understated. Further, it occurred more than two years after the domain names were registered, and after Chung had established the web site which used them as its address. In addition, no sale price was mentioned in the communication in which the domain names were offered for sale. These facts do not establish that the intended consideration of the sale was in excess of Chungs documented out-of-pocket costs directly related to the domain names. Indeed, these facts do not even establish that Chung acquired the domain names primarily for the purpose of selling them to the Complainant.
This Administrative Panel does accept, however, the Complainants contention that the fact of Chungs registration of 13 similar domain names, and the circumstances of his use of three of them, are both evidence that, prior to the filing of this Complaint, the domain names have been registered and were being used in bad faith. If Chungs true motive in this case was to provide a bona fide alternative forum for fresh news and information about the FIFA World Cup 2002, why register 13 similar names? Would not one domain name be sufficient to achieve the purpose of providing a location for alternative news and information about the FIFA World Cup competition? The Respondents assert that each of the registrants of domain names (1)-(13) inclusive is "an actual fan club for world cup 2002 [that does] not have to be publicly registered under Korean law", with which Chung has "been maintaining relationship" and which has "asked [Chung] to obtain domains for them and manage their websites under his full responsibility". However, the Respondents did not state the name or even the address of the individuals, in charge of these fan clubs, whom had asked him to obtain the domain names and set up web sites under them. Also, it is noteworthy that many of the domain names were registered on the same day, and almost all were registered within two weeks of each other. It is unlikely in the extreme that 11 different fan clubs gave Chung instructions to register a domain name for them in the space of such a short time.
The only plausible conclusion to draw from these facts is that Chung intended to warehouse for his own use a large number of domain names using the words <world cup>. The effect of this warehousing is to prevent the Complainants from reflecting their trademark <WORLD CUP> in a corresponding domain name. The "pattern of such conduct" required by paragraph 4(b)(iii) is provided by the sheer volume of names registered. Accordingly this Administrative Panel finds that the Respondents have registered and used domain names (1)-(13) inclusive in bad faith. In relation to domain names (1)-(3) inclusive, this finding is supported by the established facts that the actual use to which these domain names were put was as an address to Chungs web site which framed and slavishly copied, without authorization, content and material of FIFA and its affiliates.
The Complainants requested this Administrative Panel to require the Registrar to transfer the domain names to FIFA. In light of the fact that FIFA has proved it is the owner of many trade mark registrations for <WORLD CUP>, it is clear that FIFA is the appropriate party to whom the domain names (1)-(13) inclusive should be transferred, if it is considered that transfer is the appropriate remedy in this case. The fundamental issue is whether a transfer of domain names is in fact the appropriate remedy in the circumstances of this case.
Cancellation of a domain name under the Uniform Policy does not amount to an exclusion of the domain name. Once the registration is cancelled, it is possible for any person to re-register that domain name. This Administrative Panel notes that, to date, in none of the previous decisions of Administrative Panels appointed by the WIPO Center has cancellation been ordered as the appropriate remedy. In a number of the decisions of Administrative Panels appointed by the National Arbitration Foundation, cancellation has been ordered. In none of those decisions, however, was a rationale given for this remedy over the remedy of transfer to the Complainant.
As discussed in paragraph 6.8 above, there are a number of other sports which have a World Cup competition, and hence there may be a party other than the Complainants who would wish to register and, having registered, could claim a right or legitimate interest in, some or all of the domain names the subject of this Complaint. It might be thought that, in such a situation, the appropriate remedy is cancellation rather than transfer, because cancellation leaves open the possibility for such other party to obtain registration. Against this view, however, is the fact that the remedy of cancellation leaves open the possibility for anyone - including the Respondent or a party related to the Respondent - to subsequently obtain registration of the domain name following the cancellation. An outcome in which a Respondent to a successful Complaint subsequently reapplied for and obtained registration of the just cancelled domain name would frustrate the intent of the Uniform Policy. Even if the unsuccessful Respondent did not do this, there is no guarantee that another party without a right or legitimate interest in the domain name would not subsequently register and use the domain name in bad faith, in which case the Complainant would need to bring another Complaint, this time against that other party. Of course, a Complainant might seek to avoid these outcomes by registering in its own name the domain name the subject of the cancellation. If that were to occur, the outcome is the same as if the domain name had been transferred to the Complainant.
As was stated in WIPO Case No. D2000-0044:
By requesting transfer of the domain name to itself, Complainant has effectively requested registration of the "toefl.com" domain name. Although there might be other legitimate users of the domain name that would seek registration subsequent to a cancellation of Respondents registration, Complainants request for registration should reasonably take precedence under a general first-in-time principle applicable to legitimate requests for registration.
This Administrative Panel agrees with that statement of principle. Further, a decision of an Administrative Panel under the Uniform Policy to transfer a disputed domain name to a Complainant does not mean that the Complainant obtains an invulnerable domain name registration. It remains open to any party to bring an action against a former Complainants holding of a domain name. Thus, an order of transfer should not prejudice the position of a third party who wishes to impugn the holding of a domain name registration obtained by way of an Administrative Panels order of transfer.
For all of the above reasons, this Administrative Panels considers that the appropriate remedy in this case is that domain names (1)-(13) inclusive be transferred to FIFA.
This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to each of the domain names (1)-(13) inclusive the subject of this Complaint. This Administrative Panel also decides that the Complainant has not proven all of the three elements in paragraph 4(a) of the Uniform Policy in relation to both of the domain names (14) and (15) the subject of this Complaint.
Pursuant to paragraph 4(i) of the Uniform Policy and rule 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc, transfer to the Second Complainant, The Federation Internationale de Football Association, the following domain names:
Andrew F. Christie
Dated: April 3, 2000