This article is aimed at lawyers and non-lawyers protecting the trademarks of players, teams, clubs, sponsors, broadcasters, associations, federations, and confederations. There are leads on the football situation in the face of cybersquatting based on extrajudicial decisions (about 200 listed) rendered at the request of the various brand owners. What may be the legitimate rights or interests of the respondent? What are the practices of cybersquatters? Furthermore, how to prevent disputes? These are the questions we ask intending to contribute to improving the management of domain name portfolios in the football world.
1. Issues
1. Cybersquatting
2. Dispute settlement methods
3. UDRP
4. Limits of the UDRP
5. Recurring targets
2. The legitimate rights/interests of the respondent
6. Aberrant arguments
7. “Aficionados”
8. “Aficionados”: <culers.com>
9. “Aficionados”: <madridistas.com>
10. “Aficionados”: a question of circumstances
11. “Aficionados”: <trademark.fan>
12. Reasons for rejecting the transfer request
3. The respondent’s bad faith
13. Evidence of bad faith
14. Usual evidence
15. Impersonation/Infringement
16. Email address/Phishing
17. Temporal aspects
4. Preventing disputes
18. Failure to renew the domain name
19. “Park the bus!” or preventive recordings
20. Specialized top-level domains
21. Outsourcing
- Recovering a domain name
22. Interception
23. Mercato
24. “Arbitrator”
1. Issues
Cybersquatting. — Cybersquatting refers to the act of deliberately registering a domain name similar or identical to a trademark without the authorization of the owner of this trademark. The notion of cybersquatting, therefore, includes two facets: one objective, the other subjective. The objective facet concerns the confusion between the trademark and the domain name. The subjective facet concerns the intention of the domain name registrant, guided by profit or belligerent tendencies.
Dispute Resolution Methods. — There are many methods for resolving disputes relating to domain names: the judicial system and several extrajudicial routes. Beyond the traditional processes of mediation and conciliation (little used in domain names), extrajudicial means are mainly characterized by the so-called UDRP procedure for “Uniform Domain Name Dispute Resolution Policy”. This procedure, which has its source in the contract, is of an adjudicatory nature in that it involves a third party who states the law, settles the dispute, and modifies the parties’ assets. The UDRP procedure, whose scope covers generic top-level domains (or gTLDs for generic Top-level Domains), has strongly inspired many other procedures applicable exclusively to a single geographical top-level domain (or ccTLD for country code Top Level Domain). These dispute resolution mechanisms, for the most part, should not be confused with arbitration. One of the reasons for rejecting the qualification of arbitration is the non-exclusive nature of the procedure: the dispute can be brought before a UDRP panel and/or a judicial court. Except in rare cases (for example, in Polish law), these UDRP and similar procedures have a severe drawback: the trademark owner who has won the case cannot claim compensation for his loss, nor even reimbursement of the costs incurred to the needs of the procedure. Two reasons are most often cited: on the one hand, the speed of the procedure and, on the other hand, the impossibility of systematically identifying the respondent. Regarding speed, it must be recognized that the extrajudicial procedure must imperatively be expedited so as to put an end to a non-authorized (and sometimes illicit) situation as soon as possible. As for the identification of abusively registered domain name holders, the argument is weaker. It would suffice, for example, to impose on registration entities an obligation to identify their customers, to prohibit the use of anonymous payment cards, and to involve banking institutions in the fight against cybersquatting. Meanwhile, these extrajudicial procedures remain acclaimed for their speed and efficiency.
UDRP. — UDRP is a model for resolving domain name disputes, so UDRP terms are found in most national mechanisms (e.g., itDRP for Italy and esDRP for Spain) or regional (in particular euDRP, known as “A.D.R.”, for the European Union). To obtain the transfer of the domain name, the trademark owner must prove: i) to be the owner of a trademark; ii) that the disputed domain name is similar or identical to this mark; iii) that the holder of the domain name (the respondent) does not have any right or legitimate interest in the sign and iv) that he registered the domain name in bad faith and, finally, v) that he also use in bad faith.
Limits. — The UDRP was created to allow parties to a simple dispute to resolve it quickly and inexpensively. Given its nature and its objectives, the UDRP cannot do everything. Third-party decision-makers have a duty of promptness, which considerably limits their power to examine relatively complex disputes. The precise nature of the UDRP was thus recalled during an intra-family dispute concerning, among other business signs, the domain name <marcet.academy>. The panel found that it did not have jurisdiction to resolve this dispute (OMPI D2022-1790, Marcet Trade S.L., Marcet Knowledge S.L., Fundación Marcet c. Silvia Martín Martínez / Pablo Marcet Bonel, España, 19 de julio de 2022).
Recurring targets. — The extrajudicial decisions reveal that the European teams (particularly Liverpool FC and the Real Madrid) and the confederations (including FIFA and UEFA) seem to be the most active in protecting their brands against cybersquatting. However, this does not mean that players or other stakeholders are exempt from it. There are a few decisions concerning player names (Pelé : WIPO, D2010-1533,Montag Divulgaçao Ltda. v. Robert Szegedy / 1 & 1 Internet, Inc., November 30, 2010 ; Ronaldinho: OMPI D2006-0524, D. Ronaldo de Assis Moreira v. Eladio Garcia Quintas, 14 de Julio de 2006; Kylian Mbappé: Forum, FA1708001745425, Mr. Kylian Mbappe Lottin v. k al, September 20, 2017; Kew Jaliens: DomJur 2011-654, Kew Jaliens v. [gedaagde], 22-03-2011 or Wayne Rooney: Nominet, DRS 03844, Stoneygate 48 Limited and Wayne Mark Rooney –v– Mr. Huw Marshall, October 5, 2006, 15).
The published decisions only reflect the tip of the iceberg. Indeed, domain names registered and misused do not systematically give rise to legal proceedings. Several reasons can explain this situation, starting with ignorance of the existence of domain names constituting acts of cybersquatting, which can be remedied by setting up surveillance. It can also be the result of a strategy defined in such a way as to fight only the acts of cybersquatting considered to be the most dangerous according to a predetermined level of risk (on this point, see, for example: iptwins.com, 2021-09-29). By way of illustration, the use of a domain name to display a copy of the official FIFA website (WIPO, D2009-1372, Fédération Internationale de Football Association (FIFA) v. Javier Perez, November 26, 2009), broadcast matches (WIPO, D2019-2019, The Football Association Premier League Limited v. Robert Opanisga, October 18, 2019) sell tickets (WIPO, D2019-3150, Paris Saint-Germain Football v. Registration Private, Domains By Proxy, L.L.C. / Alex Temple, February 21, 2020) or goods (WIPO, D2017-0515, F.C. Bayern Muenchen AG v. Giordano Matthew, May 9, 2017) are undeniably more alarming threats than a parking page, even if such page contains commercial links infringing the rights resulting from the trademark and the image of the latter.
In general, any brand involved in the football economy is exposed to the risk of cybersquatting, including those of players, clubs, federations, equipment manufacturers, sponsors, broadcasters, or reward associations (OMPI D2022-1959, Les Editions P Amaury v. Privacy Service Provided by Withheld for Privacy ehf / Rosie Lynch, July 25, 2022). In this regard, it must be noted that one of the broadcasters of the 2022 World Cup, namely BEIN Sports, had to initiate several procedures during the course of 2022 (WIPO D2022-3431, beIN Media Group L.L.C. v. ahmed, maknes, October 30, 2022; WIPO DME2022-0019, beIN Media Group L.L.C. v. Ahmed Ali, November 8, 2022; WIPO D2022-3472, beIN Media Group L.L.C. v. Bouya Samir, November 8, 2022; WIPO D2022-3472, beIN Media Group L.L.C. v. Bouya Samir, November 8, 2022), thus recalling the need to add to media exposure, on the one hand, an audit of trademark and domain name portfolios and, on the other hand, monitoring of new domain names.
2. The legitimate rights/interests of the respondent
Aberrant arguments. — Out-of-court decisions in domain name disputes are notorious for displaying frivolous arguments. The holder of the domain name <liverpoolfc.com> claimed that the acronym “F.C.” did not refer to “Football Club”, but to “Fashion Club”. However, two years after the registration of the domain name, the holder of the domain name was still struggling to show the slightest sign of activity in the field of fashion (WIPO, D2002-0046, The Liverpool Football Club and Athletic Grounds Public Limited Company and the LiverpoolFC.TV Limited v. Andrew James Hetherington, April 4, 2002). More eccentrically, the holder of the domain name <fifa.tv> stated that “FIFA” stood for “Forests (or Forestry) International Forum of Australia”. However, according to the panel, there were ” strong indications that originally the Domain Name directed users to a site containing sport scores including soccer scores” (WIPO, DTV2001-0031, FIFA v. Andy Muffy, February 27, 2002). More legally, in case D2021-0467, the respondent, residing in Singapore, replied to FIFA that his eponymous trademark, although registered in Singapore, did not target hospitality services (WIPO, D2021-0467, Fédération Internationale de Football Association (FIFA) v. Kenneth Berger, Bleukei Pte. Ltd., April 27, 2021). Finally, note the case DAU2018-0001 in which the ephemeral president of a club had registered a company called “Melbourne Red Bulls Football Club Pty Ltd.” and registered the domain name <melbourneredbullfc.com.au> with a view, according to the interested party, on the one hand, to draw the attention of the Red Bull company to the advisability of investing in the construction of a new stadium in Melbourne and, secondly, to prevent improper registration by third parties (WIPO, DAU2018-0001, Red Bull GmbH v. Melbourne Red Bulls Football Club Pty Ltd, March 2, 2018). A month earlier, following a UDRP procedure also initiated by the company Red Bull, the creator of the company Melbourne Red Bulls Football Club Pty Ltd. had been stripped of 25 domain names, some of which reproduced the “Red Bull” trademark associated with words or acronyms such as “Melbourne” and “F.C.” (WIPO, D2018-0021, Red Bull GmbH v. Daniel Cobb, CobbCorp Pty Ltd., February 28, 2018).
“Aficionados”. — Given that football unleashes passions, the question of the legitimacy of supporter or fan sites arises. As early as 2001 (i.e. a little over a year after the entry into force of the UDRP), Juventus of Turin had initiated a UDRP procedure to obtain the domain name transfer <juventus.net> used by a fan. The website was non-commercial, and there was a disclaimer stating that it was not affiliated with the famous football club. As a result, the transfer request was rejected, albeit reluctantly. Indeed, the panel was skeptical of the need for a supporters’ site to use a domain name identical to the trademark (WIPO, D2001-0260, Juventus F.C. S.p.A. v. Claudio Sacco Interactive, April 18, 2001). Since then, panelists have forged case law that is more advantageous for the trademark owner and more predictable for the Internet user or consumer. Indeed, according to case law, for a fan site to be considered legitimate, it must meet four conditions: i) it must be active; ii) non-commercial; iii) clearly distinctive from the official website, and iv) not reproducing the trademark identically (para. 2.7 WIPO Jurisprudential Overview 3.0). The decision on the domain name <uefa.es> is a good example of this fourth condition. Indeed, the domain name was used to distribute information to supporters interested in competitions organized by the Union of European Football Associations (UEFA). After recalling the fundamental nature of freedom of expression, the panel considered that third parties could not appropriate a domain name identical to a trademark, even to designate a site for supporters (WIPO, DES2006-0012, Union des Associations Europaenes de Football (UEFA) v. Angel de la Fuente Lascorz, 14 de septiembre de 2006). However, there are counterexamples, and, as such, the D2021-1412 case concerning the domain name <culers.com> is questionable.
“Aficionados”: <culers.com> — The holder of the domain name <culers.com>, identical to the CULERS trademark (which designates Barça supporters), had held it passively for twenty years. On the day of the complaint, the domain owner used it to display a parking page. The panel found that the respondent was not in bad faith for two reasons. First, the complainant failed to demonstrate the notoriety of the CULERS trademark. Secondly, it was considered that the respondent could have been unaware of this trademark on the day of registration of the domain name (WIPO, D2021-1412, Fútbol Club Barcelona v. Oriol Gifra Durall, June 22, 2021). This decision is based on an unfortunate contradiction. On the one hand, the respondent acknowledges that he had considered the publication of a site dedicated to Barça supporters, the “Culers”; on the other, it is judged plausible that the respondent did not know about the CULERS trademark. However, it matters little that the domain name holder is not aware of the nature and legal regime of the “CULERS” sign. In addition, it is up to anyone considering the registration of a domain name to carry out a prior search, which is apparent from article 2 of the UDRP principles (Uniform Domain Name Dispute Resolution Policy: icann.org). In other words, here is a domain name: i) identical to a trademark of which the respondent has demonstrated that he had perfect knowledge; (ii) over which the respondent can demonstrate no use for twenty years, nor any right or legitimate interest; and iii) which is used to generate sponsored links. The rejection of the transfer request is questionable.
“Aficionados”: <madridistas.com>. — Faced with almost similar facts, the panel called upon to rule in the <madridistas.com> case (WIPO D2022-1542) adopted a contrary, but more conventional and consensual approach: ” Whatever use the disputed domain name has been put to, the Panel cannot escape that the Respondent (an admitted fan and club member) registered it in the full knowledge of the Complainant and its rights, and would have been aware that doing so would interfere with the same” (WIPO D2022-1542, Real Madrid Club de Futbol v Whois Agent (346986033), Whois Privacy Protection Service, Inc. / M. Gonzalez, Castellana Holding Inc., June 27, 2022).
“Aficionados”: a question of circumstances. — Although necessary, the four conditions may be insufficient. On the one hand, despite compliance with the four conditions, the panel remains free to consider, in view of the circumstances of the case, that the site in question is only a pretext to obtain an undue advantage (para. 2.7 WIPO Jurisprudential Overview 3.0). On the other hand, in the presence of parties domiciled or headquartered in the United States, the third-party decider may invoke the First Amendment of the Constitution, which guarantees freedom of expression (ibid.), which can limit the chances of success of a UDRP procedure.
“Aficionados”: <trademark.fan>. — As part of examining the risk of confusion between the trademark and the domain name, the rule of principle is solid: the top-level domain (TLD) must not be considered (paras. 1.11.1 and 1.11.2, WIPO Jurisprudential Overview 3.0). On the other hand, the panel must integrate the nature of the TLD into the analysis of the second element in order to determine the rights and legitimate interests that the holder of the domain name has or believes he has on the latter (para. 1.11.2, WIPO Jurisprudential Overview 3.0). In this regard, the .sucks and .fan extensions are particularly affected. However, the sole use of one of these TLDs is insufficient to establish a legitimate right or interest. The decisions concerning domain names registered with .sucks attest to this (iptwins.com, 2021-08-10). To our knowledge, the .fan extension has not, to date, given rise to any extrajudicial proceedings. In the presence of a TLD such as .fan, the question of maintaining the case law according to which the choice of a domain name identical to the trademark is abusive could be called into question. Indeed, on the one hand, the respondent is in the position to argue that the nature of the TLD eliminates the confusion. On the other hand, the complainant has every interest in insisting on the risk of confusion arising from the apparent affiliation between the owner of the trademark and the holder of the domain name. In any case, the panel will inevitably have to make a decision concerning all the circumstances (including the content of the site and its commercial or not commercial nature). In general, prudence and courtesy require anyone who plans to create and use a domain name similar or identical to a trademark to request the prior and express consent of the owner of the concerned trademark.
Reasons for rejecting the transfer request. — It is rare for an out-of-court procedure to result in a rejection decision. However, the prior existence of a homonymous sign or the weakly distinctive character of the trademark may be sufficient to defeat the transfer request. For example, the Ligue de Football Professionnel (France) came up against the domain name <ligue1.org>, which was registered prior to the branding operation consisting in substituting “Première division” by “Ligue 1”. This domain name was used in connection with radio-controlled cars prior to the creation of the “Ligue 1” trademark (WIPO, D2014-0014, Professional Football League (L.F.P.) against Patrick Thioux, Ligue 1, February 26, 2014). In the same vein, the request for transfer of the domain name <pao.com>, claimed by Panathinaikos Athlitikos Omilos, was rejected based on two grounds. On the one hand, its holder had registered it in 1994, i.e., before the registration of the trademark “1908 PANATHINAIKOS A.O. P.A.E.” (which dates from 1995). On the other hand, the domain name, consisting of a three-letter acronym, was not used in connection with football. Therefore, the Greek club was not in a position to exclude the respondent’s use of the domain name <pao.com> (WIPO, D2008-0044, Panathinaikos Athlitikos Omilos – Football Société Anonyme, Green Team S.A. v. Internet Pennsylvania Inc., March 19, 2008). Similarly, the transfer request for the domain name <thfc.co.uk> was rejected, the complainant, owner of the trademark “THFC” (for Tottenham Hotspur Football Club), having failed to demonstrate the bad faith of a company formally called “Trentholme Limited” but which was about to be renamed “The Health Food Company” at the time it received the UDRP complaint (Nominet, DRS 02426, Tottenham Hotspur P.L.C. V Trentholme Limited, September 14, 2005). These last two examples, concerning the domain names <pao.com> and <thfc.co.uk>, confirm the weakness of requests based on acronym trademarks. Choosing an acronym brand requires a demanding domain name portfolio management strategy (on this point, see iptwins.com, 2019-04-14).
3. Bad faith of the respondent
Evidence of bad faith. — The complainant must demonstrate that the respondent registered and is using the domain name in bad faith. In other words, the complaint’s challenge is to demonstrate the bad faith of a third-party he knows nothing or little about (probatio diabolica). To face this difficulty, the recourse to the notions of fame or notoriety is useful, at least when it is demonstrated (see WIPO, D2021-1412, Fútbol Club Barcelona v. Oriol Gifra Durall, June 22, 2021, in which Barça failed to demonstrate the notoriety of its CULERS trademark). Indeed, the prodigiously wide distribution of national, regional, and international football events ensures a certain degree of notoriety to trademarks exposed in the media (organizers, teams, players, sponsors, broadcasters, advertisers, etc.). In almost all cases, the strong reputation of the trademark is enough to conclude that the respondent, the holder of the domain name, could not have been unaware of its existence on the registration day. In other words, this act, the registration of the domain name, is undoubtedly the culmination of a resolute desire to take advantage of the reputation of the cybersquatted brand.
In addition, WhoIs data, in some cases, can reveal the geographical proximity of the complainant and the respondent, which makes it even more indisputable whether the latter knows the concerned trademark (v., e.g., Nominet, DRS 04596, Ricoh Company Limited and Arena Coventry Limited v. Paul Edwards, May 25, 2007; WIPO, DTV2007-0009, De Vereniging Amsterdamsche Football Club “Ajax” / A.F.C. Ajax NV v. R. de Monchi, 10 augustus, 2007; WIPO, D2014-2037, Real Madrid Club de Futbol v. Manuel Mateo Peñalver, January 6, 2015; WIPO, D2015-1973, A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Mr. Marco Violi, December 28, 2015; WIPO, D2018-1831, The Brighton and Hove Albion Football Club Limited v. Dave Bantock, October 18, 2018). However, and fortunately, such a geographical proximity, sometimes helpful, is not essential. For example, Real Madrid was able to obtain the transfer of domain names registered by Greek and Chinese residents (WIPO, D2017-2006, Real Madrid Club de Futbol v. Vladimir Tamasi, December 27, 2017; WIPO, D2020-0540, Real Madrid Club de Futbol v. Lee Charles (黄登通), May 7, 2020). On the other hand, in the presence of a brand whose reputation is limited, the geographical proximity may prove to be more decisive (Nominet, D.R.S., D00010830, Keats Engineering Ltd and Pontefract Collieries F.C. v. Mr Nigel Moxon, April 11 2012).
Usual evidence. — First of all, it should be remembered that the absence of a website (passive holding) may be enough to establish the bad faith of the respondent, which is easier when the trademark is well-known (see, for example WIPO, D2006-0785, Asian Football Confederation v. PARSWEB, c/o Nik Rayaneh, October 1, 2006; WIPO, D2009-0686, Manchester City Football Club Limited v. Vincent Peeris, Renown SC, October 2, 2009; WIPO, D2012-0916, The Football Association Premier League Limited v. Billettkontoret AS, June 19, 2012; WIPO, D2016-2310, Fédération Internationale de Football Association (“FIFA”) v. Whois Privacy Shield Services / Winsum Wong, January 24, 2017; WIPO, D2018-0380, Madrid Club de Futbol v. 深圳市弗兰广告装饰有限公司, April 17, 2018). It can be said that the passive retention of a domain name similar or identical to a well-known mark is automatically considered as an act of bad faith (section. 3.3, WIPO Jurisprudential Overview). The same applies when the domain name, similar or identical to a well-known trademark, designates a parking page (WIPO, D2004-0827, Ronaldo de Assis Moreira v. Goldmark – Cd Webb, December, 3, 2004; WIPO, D2006-0916, Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, October 6, 2006; WIPO, D2019-0902, La Française des Jeux v. Yunkook Jung, June 10, 2019; WIPO, D2020-2356, Paris Saint-Germain Football v. Relativ Hosting, October 30, 2020). The offer to sell the domain name obviously constitutes an indication of bad faith (WIPO, D2000-0230, ISL Marketing AG, and the Union des Associations Européennes de Football v. The European Unique Resources Organisation 2000 B.V., July 5, 2000; WIPO, D2000-0710, UEFA and Funzi Furniture, October 22, 2000; WIPO, D2003-0363, Tottenham Hotspur plc v. Kirsch Securities Ltd, June 23, 2003; WIPO, D2018-1831, The Brighton and Hove Albion Football Club Limited v. Dave Bantock, October 18, 2018; WIPO, D2020-0540, Real Madrid Club de Futbol v. Lee Charles (黄登通), May 7, 2020). Likewise, the mere request for consideration in exchange for the domain name also reveals the bad faith of the respondent (WIPO, D2014-1189, Futbol Club Barcelona c. B.P, 22 de agosto de 2014). In this respect, unusually, the holder of the domain names <brightonseagulls.co.uk> and <brightonseagulls.uk> had published the offer for sale on a vehicle by reproducing the semi-figurative trademark of a football team (Nominet, D.R.S., D00020494, The Brighton & Hove Albion Football Club and Mr Dave Bantock, October 21, 2018).
Impersonation/Infringement. — More rarely, but more alarmingly, some cybersquatters link the domain names to sites reproducing or imitating that of the brand’s official site (WIPO, D2000-0034, ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, April 3, 2000; WIPO, D2009-1372, Fédération Internationale de Football Association (FIFA) v. Javier Perez, November 26, 2009; WIPO, D2014-1222, The Football Association Premier League Limited v. c/o Woistrustee.com Limited / Domain Administrator, Beyond the Dot, September 22, 2014; WIPO, D2015-1396, Paris Saint Germain Football v. Ai Si Ai Si, ma guobao, Yin Lin, Mi Ni Mi Ni, October 17, 2015; CRDD, A.S. Roma S.p.a. v. sig. Marco Violi, 16 febbraio 2016; WIPO, D2017-0516, F.C. Bayern Muenchen AG v. Pamella Krapf, bayernmunichfcproshop.com / Whoisguard Protected, Whoisguard, Inc., May 9, 2017; WIPO, D2020-1848, Manchester United Football Club Ltd. v. whitted john and WhoisGuard Protected, WhoisGuard, Inc. / Didi Dimtroff, September 28, 2020). In several cases, the imitation serves the sale of goods (WIPO, D2017-0516, F.C. Bayern Muenchen AG v. Pamella Krapf, bayernmunichfcproshop.com / Whoisguard Protected, Whoisguard, Inc., May 9, 2017). Obviously, the mere association of the domain name with the sale of sporting goods is sufficient to establish bad faith (CRDD, U.S. Città di Palermo s.p.a. v. Free Time Management Group s.r.l., 27 ottobre 2007; CRDD, Adidas AG. v. Paolo Luppi, 15 novembre 2008; WIPO, D2008-1334, Adidas AG v. Paolo Luppi, October 17, 2008; WIPO, D2015-1242, Chelsea Football Club Limited v. hai le, September 17, 2015; WIPO, D2016-0060, F.C. Bayern München AG v. Reed Rick, luwei duichengduo, March 7, 2016; WIPO, D2016-2282, F.C. Bayern Muenchen AG v. Whoisguard Protected, Whoisguard, Inc. / Name Redacted, December 26, 2016; WIPO, D2017-0515, F.C. Bayern Muenchen AG v. Giordano Matthew, May 9, 2017; WIPO, D2017-1490, Decathlon v. Name Redacted, October 2, 2017; WIPO, D2019-0503, Decathlon v. Domain Administrator, See PrivacyGuardian.org / Xiao Jian, April 22, 2019; WIPO, D2019-3157, Union des Associations Européennes de Football (UEFA) v. Whois Agent, Domain Protection Services, Inc. / Sports & Events Hospitality Group Ltd and Sport Games 2020, February 28, 2020; WIPO, D2020-2345, Paris Saint-Germain Football v. Ayoub Ifraden, October 15, 2020). This reasoning also applies to ticket sales (WIPO, D2001-0070, ISL Worldwide and The Federal Internationale de Football Association v. Western States Ticket Service, March 23, 2001; WIPO, D2008-0842, The Arsenal Football Club Public Limited Company v. Official Tickets Ltd, July 22, 2008; WIPO, D2008-1574, Chelsea Football Club Limited v. Official Tickets Ltd, December 23, 2008; WIPO, D2009-1372, Fédération Internationale de Football Association (FIFA) v. Javier Perez, November 26, 2009) and event broadcasting (WIPO, D2015-1973, A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Mr. Marco Violi, December 28, 2015; WIPO, D2019-1841, The Football Association Premier League Limited v. Joso Silva, September 30, 2019; WIPO, D2019-2019, The Football Association Premier League Limited v. Robert Opanisga, October 18, 2019; WIPO, D2020-2639, Television Francaise 1 v. Nicolas Courtier, Channelstream, November 26, 2020).
Finally, brand owners must be aware of frauds or attempted fraud by which cybersquatters use schemes, for example, to impersonate event organizers to defraud third parties, including sponsors (WIPO, D2019-0390, Fédération Internationale de Football Association (FIFA) v. Moussa Riffi, April 19, 2019; D2019-2697, Galatasaray Mağazacılık Ve Perakendecilik A.Ş. v. Blanco Blanco, Blanco L.L.C., December 30, 2019; WIPO, D2020-2505, Fédération Internationale de Football Association (FIFA) v. Tae Sung Park, November 18, 2020). In the D2019-0390 case, the respondent had published a call for sponsorship on the site designated by the disputed domain name, namely <fifa2022.com>: “FIFA2022.com proudly shows the multinational companies that support FIFA 2022 World Cup in Qatar. Only qualified Sponsors can be added to FIFA2022.com site. For any requirements regarding Sponsor add, please use our contact box” (WIPO, D2019-0390, Fédération Internationale de Football Association (FIFA) v. Moussa Riffi, April 19, 2019). These facts fall under criminal law. However, such legal qualification does not deprive the panel of its competence to decide on the domain name transfer.
Email address/Phishing. — Some cybersquatters show determined fraudulent ambition. This is the case when the disputed domain name is instrumentalized in such a way as to use email addresses (see, for example WIPO D2022-0081, Paris Saint-Germain Football v. Alexander Wiredu, 8. März 2022et WIPO D2022-1145, The Liverpool Football Club and Athletics Grounds Limited v. Privacy service provided by Withheld for Privacy ehf / Egzy Gomez Jr, June 27, 2022). This practice must be monitored to detect phishing campaigns or all kinds of fraud.
Temporal aspects. — Contrary to what happened in the <ligue1.org> case, (WIPO, D2014-0014, Ligue de Football Professionnel (L.F.P.) contre Patrick Thioux, Ligue 1, 26 février 2014), the anteriority of the domain name vis-à-vis the trademark does not systematically cause the rejection of the transfer request. This is so in the presence of trademarks designating recurring and foreseeable events. Thus, UEFA was able to obtain the transfer of the domain name <uefa2004.com>, despite the priority of the latter on its “UEFA 2004” trademark (WIPO, D2001-0717, Union des associations européennes de football (UEFA) v. Chris Hallam, July 10, 2001).
The abusive registration of domain names often coincides with a media event which can be, for example, the change of the corporate name of a football club (WIPO, D2020-3424, A.C. Monza S.p.A. v. Marco Scarpis, February 3, 2021; CRDD, Venezia F.C. S.r.l. v. Proxy Service Ltd., 21 dicembre 2017) or the remarkable achievement of a player (Forum, FA1708001745425, Mr. Kylian Mbappe Lottin v. k al, September 20, 2017; WIPO, D2002-0134, Francesco Totti v. Jello Master, April 4, 2002).
Finally, it is worth mentioning the case of the Dutch player Kew Jaliens who, while preparing his professional retraining, registered the “Kew Jallens” trademark and noticed that a third party had been operating the domain names <kewjaliens.nl> and <kew-jaliens.nl> for several years. Despite the priority of the domain names, Mr. Jaliens won his case (DomJur 2011-654, Kew Jaliens v. [gedaagde], 22-03-2011).
4. Preventing disputes
Failure to renew the domain name. — The analysis of extrajudicial decisions reveals, in a limited number of cases, a certain casualness in the management of the domain name portfolio. Characteristic examples are those of failure to renew, inadvertently (WIPO, D2002-0134, Francesco Totti v. Jello Master, April 4, 2002) or due to a change in personnel (WIPO, DTV2007-0009, De Vereniging Amsterdamsche Football Club “Ajax” / A.F.C. Ajax NV v. R. de Monchi, 10 augustus 2007; Nominet, D.R.S., D00010830, Keats Engineering Ltd and Pontefract Collieries F.C. v. Mr Nigel Moxon, April 11 2012). It is essential to emphasize the fact that, in certain situations, exploitation prior to the failure to renew is not sufficient to tackle the new domain name holder who could have competing legitimate rights or interests (WIPO, DTV2007-0009, De Vereniging Amsterdamsche Football Club “Ajax” / A.F.C. Ajax NV v. R. de Monchi, 10 augustus 2007; WIPO, D2014-1189, Futbol Club Barcelona c. B.P., 22 de agosto de 2014).
In addition, athletes’ entourages may not pay enough attention to intellectual property issues. Thus, the Dutch player Kew Jaliens, when he left the football field as a player, registered the trademark “Kew Jaliens” in 2010 and realized that an unauthorized third party had been abusing the two domain names <kewjaliens.nl> and <kew-jaliens.nl> since 2006 (DomJur 2011-654, Kew Jaliens v. [gedaagde], 22-03-2011). To avoid such inconveniences, it is necessary to make players’ representatives (including agents and lawyers) more aware of intellectual property issues, particularly those related to trademarks and domain names. In addition, stakeholders must be aware of the existence of digital tools and legal savoir-faire to detect abuse and put an end to it.
- “Bus in front of goal” or preventive registrations. — “The best defense is attack!” Preventive registration consists of reserving domain names identical to the trademark in all vital TLDs, i.e.:
- historical (.com, .net, .org, .info);
- sectorial (e.g., .coach, .football, .sport or .shop), the decision WIPO D2021-4132, concerning the domain name <liverpoolfc.coach> being a good example (WIPO D2021-4132, The Liverpool Football Club and Athletic Grounds Limited v. Darren Mills, Mills NZ, March 5, 2022); and
- geographical areas corresponding to the territories in which the brand is present or intended to become so.
Preventing registrations are highly recommended for weak trademarks: acronyms and generic words. Indeed, securing these domain names is even more crucial when the brand is made up of an acronym, making it vulnerable to the risk of homonymy and, consequently, to the competing rights of third parties. For example, the request of the Tottenham football club to obtain the transfer of the domain name <thfc.co.uk> was rejected at first instance and then on appeal because the respondent, Trent-Holme Funding Consultants Limited, was asserting rights on this acronym (Nominet, D.R.S., D00002426, Tottenham Hotspur P.L.C. v. Trent-Holme Funding Consultants Ltd., June 9 2005 and, on appeal, Nominet, D.R.S., D00002426, Tottenham Hotspur P.L.C. v. Trentholme Ltd., September 14 2005).
Specialized TLDs. — There are thousands of extensions available (including blockchain TLDs). Ideally, all should be monitored. In any case, there are some specialized TLDs that must be registered, at least for preventive purposes. For example, preventive registrations are not optional for TLDs such as .football, .futbol and .soccer. Failure to ensure control of such domain names is tantamount to leaving the goals without a gatekeeper. Other interested TLDs could be .coach, .fan, .fans, .fitness, .game, .games, .museum, .shop, .sport, .store, .tickets, .training, .tv, .video, .vip or.win. CityTLDs can also be used (.Barcelona, .London, .Melbourne, .Paris, etc.).
Outsourcing. — To avoid the inconvenience associated with managing domain name portfolios, it is wise to use the services of third parties with legal and technical expertise to defend a brand, in particular by conducting audits and digital monitoring, if it is not continuous, at least at regular intervals and, in particular, on the occasion of significant media events.
5. Recovering a domain name
Interception. — The first way to obtain a domain name controlled by a third party is to intercept it at the precise moment when it becomes available again. The interception (or backorder) requires using a domain name registration entity offering this service.
“Mercato”. — In some situations, depending on the brand owner’s strategy and budget (both of which are interdependent), recovering the domain name by simple buyout can be successful, especially when the cost of operation is less than that of a judicial or extrajudicial proceeding. In some cases, the intervention of an anonymous intermediary can help achieve this objective.
“Arbitrator”. — When the situation requires it, the recovery of the domain name will be carried out via an extrajudicial procedure (see above, nos. 2 and 3), which means that the decision will be rendered by an “arbitrator” (although legally speaking, the term “arbitrator” is not appropriate). This procedure, known as “UDRP” for generic extensions (itDRP if it is an Italian domain name or esDRP if it is a Spanish domain name, etc.) is expeditious, and its cost is relatively limited compared with the cost of a judicial procedure.
