French Football League draws on domain name recuperations

The French Professional Football League, the Ligue de Football Professionnel (LFP), recently attempted recuperation of two domain names corresponding to the designation of the main French football competition, the Ligue 1, using the Uniform Domain Name Dispute Resolution Policy (UDRP); while it managed to score ‘ligue1.biz’, its shot passed wide of the goal for ‘ligue1.org’.

Even though the domain names in question were extremely similar and the LFP essentially relied on the same arguments in both cases, both the facts and the position of the respondents in each case were relatively different, which led the panellist who ruled on both matters, Martine Dehaut, to adopt substantially different approaches to the requests.

In order to be successful under the UDRP, a complainant has to establish that:

1. The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
2. The respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.

In both cases, the LFP presented the panel with the same set of arguments.

Firstly, to establish the identity between the domain names and the protected trademarks, the LFP relied on a set of two LIGUE 1 marks, one covering France, the other being an international registration (the scope of which was not specified in the decisions).  Both trademarks were registered on April 15 2002.

Secondly, the LFP argued that the registrants of ‘ligue1.biz’ and ‘ligue1.org’ had no rights or legitimate interests in the domain names, essentially stating that neither registrant had any trademarks covering the expression ‘Ligue 1’, that they had registered the domain names after the trademarks had been registered and that no licence had been granted to exploit the trademarks in question. The LFP also pointed out that it had no relationship with either of the registrants which would justify any registration or use of the domain names, that the registrants were not usually known by the term ‘Ligue 1’ and that no good-faith offering of good or services was associated with the domain names.

Thirdly and finally, it was presented to the panel that the domain names had been registered and were being used in bad faith because of the well-known character of the LIGUE 1 trademarks in France (where both registrants were established). In this respect, the LFP also argued that the fact that neither of the domain names was pointing to an active website was also indicative of bad faith since the registrants could not have ignored the existence of the LFP's trademarks.

Neither Mr Mourad Hartout (the registrant of ‘ligue1.biz’) nor Mr Patrick Thioux (the registrant of ‘ligue1.org’) filed any formal response to the complaints.

Nevertheless, in the early stages of the procedure, the registrant of ‘ligue1.biz’ sent a communication to the case administrator, the Mediation and Arbitration Centre of the World Intellectual Property Organisation, indicating that he consented to the transfer of the domain name to the LFP. The LFP, however, indicated that it did not wish to resolve the matter amicably.

This allowed the panel to rely on the respondent's "unilateral, authentic and unequivocal" consent to transfer the domain name and simply rule in favour of the LFP without having to set out its reasoning.

In the absence of any response from the registrant of ‘ligue1.org’, one could have expected an easy score for the LFP. However, that would have been counting out the panel's right to conduct limited investigations.

In this case, the panel did not take the LFP's arguments for granted. Obviously, the identity between the domain name and the LFP's trademarks was not questionable.

The matter of the registrant's potential rights or legitimate interests in the domain name was also solved rapidly: in the absence of any response from the registrant, the LFP's statement that the respondent had no rights or legitimate interests in the domain name was upheld in accordance with standard UDRP case law.

Where the LFP's stance came under pressure was when it came to establishing the registrant's bad faith. In essence, the LFP's position regarding the ‘ligue1.org’ registrant's bad faith relied on the fame of the LIGUE 1 trademark. However, the panel noted that the LFP had failed to provide evidence demonstrating the well-known character of its LIGUE 1 marks. Accordingly, it was deemed appropriate that a "minimal search" be conducted on the Internet both on the expression ‘Ligue 1’ and on the expression ‘Ligue 1’ associated with the name of the registrant of ‘ligue1.org’.

The results of the first search proved to be mainly related to the LFP, thereby pointing towards the well-known character of its LIGUE 1 trademark. However, the second search revealed the existence of a Ligue 1 competition of radio-guided miniature cars in which the respondent participated.

Taking these elements into consideration, the panel questioned the LFP's position, especially considering the fact that the domain name had been registered more than 10 years prior to the complaint, at a time when it was not established that the LIGUE 1 trademark was already well known.

To further evaluate the situation, the panel went on to check, using the "Internet Archive" service, whether the domain name had previously pointed to any active website. The panel's further research revealed that, on several occasions, a website relating to the Ligue 1 radio-commanded cars competition had been associated with the domain name.

The panel therefore considered that the domain name had not been registered with intent to damage the LFP's interests. Consequently, bad-faith registration was not deemed established and it was not necessary for the panel to go on and consider the question of bad faith use. As a result, the request for transfer of the domain name was denied.

The ‘ligue1.org’ decision is interesting in particular in that it demonstrates that certain UDRP panels will perform limited independent research in order to be sure of making the right decision when there is an element of uncertainty. However, it would usually be unwise for either party to rely on the panel doing this, and in this case the respondent was very lucky that the panel went the extra mile and eventually denied the complaint, given his failure to file a response.

David Taylor and Lionel de Souza, Hogan Lovells LLP, Paris