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

BACKGROUND

The complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) was in fact brought by the 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 7 August 2009 by Andreas Gyrre, who was associated with the ticket reseller Euroteam AS. The IRB argued that reselling tickets to the 2011 Rugby World Cup tournament, held in New Zealand, 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 alleged 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.

DECISION

Rejecting these arguments, Robert Badgely dismissed the complaint for lack of confusing similarity. Crucially, the dominant element of the IRB’s trade marks, the word “rugby”, was missing from the disputed domain name. In this respect Mr Badgely 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 trade mark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trade mark 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 (e.g., trade mark HEAT within domain name theatre.com).

Mr Badgely also acknowledged that some WIPO panels take a “more holistic approach” to confusing similarity, as paragraph 1.2 of WIPO Overview 2.0 also recognises:

Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant’s trade mark, 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.

Under either approach, Mr Badgely considered that the lack of the word “rugby” in the domain name meant that there could not be confusing similarity in the current case. In this respect, Mr Badgely noted that there are 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.

Mr Badgely distinguished an earlier WIPO decision (WIPO Case No. D2000-0034), in which the international governing body of football—FIFA—recovered the domain name worldcup2002.com, on the basis that the complainant’s mark in that case was WORLD CUP. As such that the mark and domain name were found to be confusingly similar.