The Domain Name Game

September 9, 2008

Brand New Losers

Retailers and brands in the retail sector have recently been hit with a string of losses under the Uniform Domain Name Dispute Resolution Procedure (UDRP), which was designed to offer brand owners a quick and relatively inexpensive way of resolving domain name disputes.

In the case, Swissbikes Vertriebs GmbH (the owner of the ‘RALEIGH’ trade marks for bicycles) was unsuccessful in having the name transferred to it as, although the domain name was held to be confusingly similar to the RALEIGH trade marks, the owner of the name was using it for a non-commercial forum site for fans of Raleigh bikes and therefore there was no proof that the name was registered or was being used in bad faith.

The second case was brought by Cosmos European Travels AG (‘Cosmos’), the operators and promoters of travel tours, and involved the domain name, which is a Chinese Web site providing hotel accommodation and travel related services, with more than 600 travel agent users in China. Again the domain name was held to be confusingly similar to the Cosmos trade mark for ‘COSMOS’ and certain other trade marks. However, in this case the UDRP panel declined to transfer the name to Cosmos on the grounds that the name incorporates part of the registrant’s corporate name, and Cosmos could not prove that the Chinese owner of the name had Cosmos in mind when it started using the domain name. This was despite Cosmos providing a decision of the US courts stating that Cosmos had a worldwide reputation in the Cosmos trade mark, and also despite Cosmos providing figures showing that (i) Cosmos tours and holidays have generated annual sales in excess of US$2.6bn and (ii) in the past four years Cosmos and its licensees have spent over US$35m on advertising and promoting the Cosmos brand.

A third failure hit Agnès B, the well known fashion designer and retailer that sells clothing, jewellery and other accessories and cosmetic products under the ‘Agnès b.’ name worldwide. She failed in having domain name transferred to her. Despite the domain name being held to be confusingly similar to her ‘AGNES B.’ trade mark, Mrs Agnès B did not provide any evidence that the owner of the domain name (a Polish individual) would be more likely than not to know of Angès B.’s activities and could not prove that the individual registered the domain name with knowledge of her use of the ‘Agnès B.’ name. The panel noted that Angès B. does not appear to have a store in Poland. In addition, the owner of the name claimed that she is known as ‘Agnes Bi’ and had released a number of songs under this name and the name ‘Agnes’. Finally, there was nothing on the Web site to suggest that the owner sought to capitalise on the reputation of Agnès B in the fashion world.

These three cases highlight the importance of gathering as much evidence as possible to prove that (a) the owner of the name has no legitimate rights or interests in the name and (b) that the name was registered and is being used in bad faith. If there are any doubts on either of these two points then particular care will need to be taken when drafting a complaint under the UDRP otherwise, however well known their brands are, decisions may well end up going against them.

Premier League

The unsuccessful brand owners mentioned above may console themselves with the thought that winning before a tribunal is not the end of the story – as the Football Association know only too well.

A ‘Mr Marko Oleksiy’, who is apparently falsely using an Isle of Man postal address while presumed to be based in the Ukraine, may be in contempt of court after a WIPO tribunal ruled that the domain name be transferred to its rightful owner, The Football Association Premier League.  Since that decision at the end of May decision, however, the offending Web site appears not to have been taken down.

The May ruling followed a High Court case brought by the Premier League in late 2007 against the owners of three websites, one of which was operated under the domain name  The Premier League has operated a website at to support its football competition known as ‘Barclay’s Premiership’.  The Premier League alleged that by allowing subscribers to view unauthorised peer-to-peer streaming of Premier League matches from various overseas broadcasts, they were infringing the Premier League’s copyrights and in some cases also their trade marks.

In February 2008, the High Court injuncted the owner and operator of the website from using the Premiershiplive name to stream Premier League football matches over the internet, and ordered him to transfer the domain name to the Premier League. However, before the injunction was granted, ownership of the domain name changed hands twice, going from an individual based in the UK to one based in the Ukraine, and ending up in the hands of an entity based in the Isle of Man called Premiershiplive. This meant that the court order requiring the previous owner of the domain name to transfer it to the Premier League could not be enforced.
A month later, in March 2008, the Premier League filed a complaint to WIPO requesting the transfer of the domain name from the Isle of Man entity. In order for their complaint to be successful, the Premier League had to prove three points:
• that the domain name was identical or confusingly similar to a trade mark of the Premier League
• that the owner of the domain name had no rights or legitimate interests in respect of the domain name
• that the domain name was registered and was being used in bad faith.
In upholding the Premier League’s complaint, the WIPO panellist relied heavily on the High Court order from February 2008. That order made it clear that the use of the name ‘Premiershiplive’ infringed the Premier League’s rights in its Barclays Premiership trade mark, and on that basis the domain name must be confusingly similar to the Barclays Premiership trade mark. In addition, as the High Court had previously held that the peer-to-peer streaming service was unlawful, and that use was continuing at the date of the complaint, it was clear that the owner could not have rights or legitimate interests in respect of the domain name.
Finally, any use of a domain name which has been held by a court to be infringement of trade mark rights can only be use in bad faith, and as the owner of the name must have known of the Premier League’s rights in its Barclays Premiership trade mark at the time that it registered the name due to it being so well known, the final point relating to bad faith had also been proved.

Ravi Mohindra is a Partner at Clarke Willmott specialising in IP & Sport, having most recently held senior in-house positions including at Vodafone’s global HQ: