Manchester City Football Club obtains transfer of 'mcfc.com'
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In Manchester City Football Club Ltd v Peeris (Case D2009-0686, October 2 2009), a World Intellectual Property Organization (WIPO) panellist has ordered the transfer of the domain name 'mcfc.com' to Manchester City Football Club Ltd, despite the involvement of the registrant in a community sports club called the Mutwal Community Football Club.
In 2007 Vincent Peeris acquired the domain names 'mcfc.com' and 'manchestercityfc.com', which he used to generate revenue through parking pages displaying pay-per-click advertising. Links on the advertising pages resolved to websites about Manchester City and other Manchester or sport-related websites. The domain name 'mcfc.com' also contained a link which pointed to a page soliciting bids for the domain name. In April 2008 Peeris approached Manchester City by email, offering to sell both domain names for £175,000. He followed this up with an email stating that he was "fielding offers" of £3 million from third parties and ultimately offered to sell them to Manchester City for £2 million.
Manchester City filed a complaint under the Uniform Dispute Resolution Procedure (UDRP) on May 26 2009. In its complaint, Manchester City gave evidence that Peeris, or his business Renown SC, had been the respondent in five separate domain name complaints resulting in orders to transfer the domain names to the complainant, giving rise to a strong inference that Peeris made a business out of buying and selling domain names.
Peeris claimed that he had a legitimate interest in the domain name 'mcfc.com' because he used it in connection with a local football club in Sri Lanka, called the Mutwal Community Football Club. He asserted that the use of the domain name and his offer to sell it to Manchester City was not in bad faith.
The sole panellist reached an uncontested conclusion that 'manchestercityfc.com' had been registered and used in bad faith and should be transferred to Manchester City, before considering the position regarding 'mcfc.com'.
The panellist observed that actual use of a domain name is not conclusive of a legitimate interest in that name. The panellist noted that the Mutwal Community Football Club was set up after Peeris's business partner had acquired the domain name. He considered that there was "much that was suspicious" about the sequence of events, questioning why a community sports club would pay $20,000 for a domain name to use for a website selling handicrafts. He also doubted Peeris' evidence that the club had bought the domain name 'manchestercityfc.com' for $2,200, in order to give it to Manchester City free of charge, in a possible deal with the club for the 'mcfc.com' domain name - particularly since at the time it bought 'manchestercityfc.com', Peeris's business had not yet acquired 'mcfc.com' from his business partner.
The panellist considered that the fact that the Mutwal Community Football Club was set up after acquisition of the domain name 'mcfc.com' was "too convenient to be dismissed as mere coincidence", suggesting that the name was chosen to avoid the UDRP. He went on to find that even if the name had been chosen in good faith, it did not indicate that the acquisition of the domain name was also necessarily in good faith. He noted that Peeris had acquired the domain name 'manchestercityfc.com' in order to facilitate a deal with Manchester City as evidence that Peeris had intended to acquire the domain name to sell it to Manchester City.
In conclusion, the panellist found that the actions of Peeris were consistent with those of a cybersquatter, using or creating a sports club as a cover, and were inconsistent with those of a good-faith sports club.
Désirée Fields, McDermott Will & Emery UK LLP, London
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