Rugby Board fails to retrieve domain name because it does not contain 'rugby'

In Rugby World Cup Ltd v Gyrre (WIPO Case D2011-1520, November 1 2011), sole panellist Robert Badgely has dismissed the International Rugby Board (IRB)'s complaint against ticket reseller Euroteam AS on the basis that the domain name 'worldcup2011.com' could not be considered confusingly similar to the IRB's trademarks RUGBY WORLD CUP and RUGBY WORLD CUP 2011, essentially because the dominant term 'rugby' was lacking in the domain name. 

 

The complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) was in fact brought by Irish company Rugby World Cup Ltd, which the IRB - rugby's world governing body - set up in 1989 to manage all rights in the Rugby World Cup tournament. The domain name 'worldcup2011.com' was registered on August 7 2009 by respondent Andreas Gyrre, who was associated with ticket reseller Euroteam. The IRB argued that reselling tickets to the 2011 Rugby World Cup tournament violated the terms and conditions to which a legitimate ticket purchaser must agree. One such condition was that the purchaser of a ticket must not offer to resell it publicly, including on any website. The IRB also argued that the colours and fonts used on Euroteam's website gave that site the same "look and feel" as the official Rugby World Cup site, thereby underscoring confusion among consumers.

 

Rejecting these arguments, the panellist dismissed the complaint for lack of confusing similarity. Crucially, the word 'rugby' was missing from the disputed domain name, but was found to be the dominant element of the IRB's trademarks. 

In this respect, the panellist noted that Paragraph 1.2 of the WIPO Overview 2.0 states as follows:

"Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognisable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (eg, the trademark HEAT within domain name 'theatre.com')."

In considering this issue, he however acknowledged that this was not the only approach one might adopt, and that some WIPO panels take a "more holistic approach" to confusing similarity. This latter approach was also acknowledged in paragraph 1.2 of the WIPO Overview 2.0:

"Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark."

In any event, under either approach the panellist considered that the lack of the word 'rugby' in the domain name meant that there could not be confusing similarity in the case at hand. The panellist noted that there were many world cup events, including several in 2011 alone: Cricket World Cup 2011, FIFA Women's World Cup 2011, Dubai Racing World Cup 2011, FIFA U-20 World Cup 2011, Dance World Cup 2011, FIFA U-17 World Cup 2011, FIFA World Cup 2011 in Japan, Snowboarding World Cup 2011 and FIFA Beach Soccer World Cup 2011. Critically, no evidence had been presented that the Rugby World Cup was so much more famous than other world cups that a reference to 'World Cup 2011' necessarily, or even probably, called to mind the IRB's marks. 

The panellist distinguished an earlier WIPO decision (WIPO Case D2000-0034) in which FIFA recovered the domain name 'worldcup2002.com'. The distinction was that, in the earlier decision, the complainant's mark was simply WORLD CUP.

Robert Lundie Smith, McDermott Will & Emery UK LLP, London