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."
Disclaimer: We hope you find OUT-LAW’s content useful. It’s prepared by the lawyers at Pinsent Masons. Please remember, though, that it’s intended as general information only. It’s not legal advice. If that’s what you’re seeking, please
contact us. See also: our
full disclaimer
