Fiji Rugby Union scores in split UDRP decision

International

In Fiji Rugby Union v Webmasters Limited, the majority of a World Intellectual Property Organization (WIPO) panel has ruled that the domain name 'FijiRugby.com' infringed the trademark rights of the Fiji Rugby Union (FRU). Accordingly, it ordered the transfer of the domain name.

The FRU was established in 1913 to administer rugby in Fiji. It comprises 36 affiliated unions and associations with over 600 member rugby clubs. Rugby is the most popular sport in Fiji, played by an estimated 80,000 people out of a total population of 750,000.
Webmasters Limited - a Fijian internet content provider - approached the FRU to offer to provide it with (i) sponsorship payments, and (ii) IT services in kind to the value of F$325,000 ($190,500) over three years in connection with the creation and management of a rugby portal website at 'FijiRugby.com'. The negotiations subsequently broke down and the FRU's letters requesting the transfer of 'FijiRugby.com' remained unanswered.

The FRU filed a complaint with WIPO against Webmasters on August 15 2003, claiming infringement of its trademark and logo FIJI RUGBY. After the FRU had corrected a deficiency in its complaint, WIPO sent notice to Webmasters, which filed its response on September 24 2003. Both sides submitted supplemental filings in response to research conducted by the panel showing that a party apparently unassociated with either the FRU or Webmasters had used the domain name after Webmasters claimed it had registered it.

On December 3, the panel invoked Rule 12 of the Uniform Domain Name Dispute Resolution Policy (UDRP) and requested that an officer of Webmasters file an affidavit sworn under penalty of perjury in response to a series of questions concerning the ownership and use of the disputed domain name by that mysterious party in 2001. Webmasters filed its affidavit on December 10 2003.

The majority of the panel accepted the FRU's evidence that it had registered the FIJI RUGBY trademark in Australia, Europe, Fiji, Japan, New Zealand and the United States, and used it since 1913 to promote rugby in national and provincial competitions. The majority of the panel found that (i) the disputed domain name was identical and confusingly similar to the FIJI RUGBY mark, and (ii) Webmasters had no rights or legitimate interests in the domain name. In particular, the majority found that the timing of Webmasters' offer to provide sponsorship and technology services to the FRU in exchange for the rugby portal at 'FijiRugby.com' prior to the start of the 2003 Rugby World Cup indicated that Webmasters had registered and used the domain name in bad faith.

However, panellist Richard Hill filed a dissenting opinion, arguing that Webmasters had not registered and used the domain name in bad faith. While Hill agreed with the majority that Webmasters "could have been more forthright in its pleadings, [he found] that [the FRU] has not presented adequate evidence to prove that [Webmasters] acted in bad faith".

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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