Tuesday, May 19, 2009

Football clubs kick off together

A number of England's top football clubs have combined in order to win a ground-breaking domain name dispute at the World Intellectual Property Organisation (WIPO).

Fulham, Liverpool, Manchester United, Tottenham Hotspur and West Ham joined forces to make a claim under the Uniform Domain Name Dispute Resolution Policy. The WIPO panel stated 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 panel considered an earlier ruling: "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,"

It went on: "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 clubs were complaining over various domain names that were linked to websites selling tickets to their football matches for example official-liverpool-tickets.com. This was considered to fall under the second option above i.e. the clubs were the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion.

"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,"

It should be pointed out the Nominet (the body handling disputes over .uk domains) explicitly allows multiple claimants. It seems a sensible step forward for WIPO as cyber squatters etc tend to direct very similar activities at a number of victims and by banding together these victims can make substantial savings as to legal costs.

For more details of domain disputes please see: http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/5147-Cyber-Squatting.htm

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