Tottenham Hotspur prevails in 5,000th WIPO case

International

In Tottenham Hotspur v Kirsch Securities Ltd, World Intellectual Property Organization (WIPO) panellist David Perkins has ordered the transfer of the domain name 'TotthenhamHotspur.com' to London football club Tottenham Hotspur. The case was the 5,000th filed with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The English Premier League club, founded in 1882, brought a complaint against Brian Kirsch, the administrative contact for the domain name, after learning that it misdirected visitors to Webcreation's website. The club hired private investigators to pose as Tottenham Hotspur fans, who then wrote to Kirsch offering to purchase the domain name. Kirsch rejected offers ranging from £500 to £5,000 but indicated that he would accept £15,000 for the domain name.

After sending a cease and desist letter to Kirsch, the club filed a case with WIPO asserting that:

  • the domain name was identical to its UK trademark registration for TOTTENHAM HOTSPUR;

  • Kirsch had no rights or legitimate interests in the domain name; and

  • it had registered the domain name in bad faith.

The club also claimed that Kirsch's prior registrations of domain names identical to famous trademarks (eg, 'Disneyland-Paris.com' and 'TheFACupFinal.com') further demonstrated a pattern of bad-faith conduct.

Perkins found that Kirsch's offer to accept £15,000 for the domain name was "powerful evidence of bad faith". Also finding that Kirsch had failed to establish any legitimate domain name-related use for the football club's trademark, Perkins ordered the transfer of 'TotthenhamHotspur.com'.

The decision is another in a long line of UDRP cases issued in favour of sports organizations and football clubs. It demonstrates that registrants who offer to sell a domain name to a trademark owner for an amount in excess of registration costs will be seen as having registered and used the domain name in bad faith.

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

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