The French professional football league, the Ligue de Football Professionnel (LFP), recently attempted to recover two domain names corresponding to the designation of the French main football competition, the Ligue 1, using the Uniform Domain Name Dispute Resolution Policy (UDRP). While it managed to score 'ligue1.biz', its shot passed wide of the goal for 'ligue1.org'.
Although the domain names in question were extremely similar and the LFP essentially relied on the same arguments in both cases, the facts and the position of the respondents in each case were relatively different. This led the panellist who ruled on both matters, Martine Dehaut, to adopt substantially different approaches to the requests.
In order to succeed under the UDRP, a complainant must establish that:
- the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
In both cases the LFP presented the panel with the same set of arguments.
First, to establish the identity between the domain names and the protected trademarks, the LFP relied on a set of two trademarks in the term LIGUE 1 - one covering France and the other an international registration (whose scope was not specified in the decisions). Both trademarks were registered on April 15 2002.
Second, the LFP argued that the registrants of 'ligue1.biz' and 'ligue1.org' had no rights or legitimate interests in the domain names. It maintained that:
- neither registrant had any trademarks covering the expression LIGUE 1;
- the registrants had registered the domain names after the trademarks had been registered; and
- no licence had been granted to exploit the trademarks in question.
The LFP also pointed out that:
- it had no relationship with either registrant which would justify any registration or use of the domain names;
- the registrants were not usually known by the term LIGUE 1; and
- no bona fide offering of goods or services was associated with the domain names.
Finally, the LFP argued that the domain names had been registered and were being used in bad faith because of the well-known character of the LIGUE 1 trademarks in France (where both registrants were established). In this respect, the LFP also argued that the fact that neither domain name was pointing to an active website was also indicative of bad faith, since the registrants could not have ignored the existence of the LFP's trademarks.
Neither Mourad Hartout (the registrant of 'ligue1.biz') nor Patrick Thioux (the registrant of 'ligue1.org') filed any formal response to the complaints.
Nevertheless, in the early stages of the procedure, the registrant of 'ligue1.biz' sent a communication to the case administrator, the Mediation and Arbitration Centre of the World Intellectual Property Organisation (WIPO), indicating that he consented to the transfer of the domain name to the LFP. The LFP, however, indicated that it did not wish to resolve the matter amicably.
This allowed the panel to rely on the respondent's "unilateral, authentic and unequivocal" consent to transfer the domain name and simply rule in favour of the LFP without having to set out its reasoning.
In the absence of any response from the registrant of 'ligue1.org', one might have expected an easy win for the LFP. However, that would be discounting the panel's right to conduct limited investigations; in this case, the panel did not take the LFP's arguments at face value.
Obviously, the identity between the domain name and the LFP's trademarks was not in question. The issue of the registrant's potential rights or legitimate interests in the domain name was also quickly resolved: in the absence of any response from the registrant, the LFP's statement that the respondent had no rights or legitimate interests in the domain name was upheld in accordance with standard UDRP case law.
However, the LFP came under pressure with regard to establishing the registrant's bad faith. In essence, the LFP's position relied on the fame of the LIGUE 1 trademark; but the panel noted that the LFP had failed to provide evidence demonstrating the well-known character of its LIGUE 1 trademarks. Accordingly, it was deemed appropriate that a "minimal search" of the Internet be conducted in relation to both the expression LIGUE 1 and the expression LIGUE 1 associated with the name of the registrant of 'ligue1.org'.
The results of the first search related to the LFP, thereby supporting the well-known status of its LIGUE 1 trademark. However, the second search revealed the existence of a Ligue 1 competition for radio-guided miniature cars, in which the respondent participated.
Taking these elements into consideration, the panel questioned the LFP's position, especially since the domain name had been registered more than 10 years prior to the complaint, at a time when it was not established that the LIGUE 1 trademark was already well known.
To further evaluate the situation, the panel went on to check, using an internet archive service, whether the domain name had previously pointed to any active website. This further research revealed that on several occasions, a website relating to the Ligue 1 radio-guided car competition had been associated with the domain name.
The panel therefore considered that the domain name had not been registered with intent to damage the LFP's interests. Consequently, bad-faith registration was not deemed established and it was not necessary for the panel to go on to consider the question of bad-faith use. As a result, the request for transfer of the domain name was denied.
The ligue1.org decision is particularly interesting as it demonstrates that certain UDRP panels will perform limited independent research in order to ensure they are making the right decision when there is an element of uncertainty. However, it would usually be unwise for either party to rely on the panel doing this; in this case the Respondent was lucky that the panel went the extra mile and eventually denied the complaint, given his failure to file a response.
For further information on this topic please contact Lionel De Souza or David Taylor at Hogan Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (email@example.com or firstname.lastname@example.org).The Hogan Lovells International LLP can be accessed at www.hoganlovells.com.