Football teams club together to win groundbreaking WIPO domain name case

The World Intellectual Property Organisation offers an arbitration service that uses the Uniform Domain Name Dispute Resolution Policy (UDRP) to settle disputes. The case involving Liverpool, Manchester United, Fulham, Tottenham Hotspur and West Ham football clubs was the first to allow companies to band together to make a claim under the UDRP.

The WIPO panel that ruled on the case said that a WIPO panel administering the Australian domain name rules had allowed for a multiple-company claim, but said that "little (if any) substantive consideration has previously been given by a UDRP panel concerning the circumstances in which it might be appropriate to permit a consolidated complaint involving multiple complainants and multiple domain names against a single domain name registrant".

The complaints were about domain names which led to a website selling tickets to football matches. The addresses included the names of the clubs, such as official-liverpool-tickets.com, or official-westham-tickets.com.

WIPO's rules do not mention multiple claimants, but they do not ban them, the WIPO panel said. It looked at the ruling in the case of National Dial A Word in Australia case for guidance on when multiple claimants should be allowed.

"In the National Dial A Word case the panel held that the consolidation of multiple complaints in a single complaint should be permitted if the complainants:
(i) have a common grievance against the respondent; and
(ii) it would be equitable and procedurally efficient to permit the consolidation of complaints," said the WIPO ruling.

"With regard to the first limb of the test, to establish a common grievance against the respondent the panel in the National Dial A Word case held that multiple complainants must:
(i) have a common legal interest in the trade mark rights on which the complaint is based; or
(ii) be the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion."

The panel said that the football clubs did not have a common legal interest because they did not share interest in one trade mark and were not part of the same corporate group. It said, though, that they were targets of common conduct by the company that had registered the domain names, Domains By Proxy Inc.

"The [football clubs] have established that [Domains By Proxy] has engaged in common conduct which has affected their legal rights in a similar fashion. Indications of such common conduct on the part of the Respondent include:
(i) the fact that the Disputed Domain Names share readily identifiable commonalities. When each of the [football clubs'] trade marks are disregarded for the purposes of comparison, the Disputed Domain Names contain the identical generic terms 'official' and 'tickets';
(ii) the fact that the Disputed Domain Names have all apparently been registered on the same day points to a clear pattern of registration;
(iii) the fact that the Disputed Domain Names apparently all resolve to an identical web site selling unauthorised Premier League tickets points to a clear pattern of use of all the Disputed Domain Names for the same purpose," said the ruling.

The WIPO panel said that it was efficient to treat the disputes in one case because their cases were identical; the arguments they were making were the same; and the clubs had appointed a single representative.

The UDRP hands control of domain names to companies if the name is identical or confusingly similar to that company's trade marks; if the person holding the name has no rights to the name; and if it is registered and used in bad faith.

Domains By Proxy did not respond to the case and the WIPO panel found that the football clubs had satisfied all three conditions. The domain names were handed to the football clubs.

Nominet, which handles disputes over domain names ending in .uk, explicitly allows multiple organisations to band together to take a case against a single company or person.

"Multiple complainants must all be named on the complaint form [to take a multiple complaint]," said its explanation of its policies. "You must specify one of the complainants to act as the lead. The lead complainant will receive all correspondence on behalf of all complainants."