Thursday , August 11 2022

Why the International Chess Federation lost the #UDRP :DomainGang

Chess is an ancient strategy game going back several millennia.

Based in Switzerland, the International Chess Federation holds a trademark for FIDE WORLD CHESS CHAMPIONSHIP. The French acronym “FIDE” stands for “Fédération Internationale des Echecs (International Chess Federation)”.

The domain WorldChessChampionship.com is a domain consisting of the descriptive terms “world”, “chess,” and “championship.”

The ensuing UDRP filed by the International Chess Federation didn’t hold much water. The sole panelist at the WIPO was clear: the words, as used, are generic and descriptive.

There was no finding of Reverse Domain Name Hijacking but that was denied; what was granted, however, was to exonerate the Respondent from any wrongdoing. Final decision: deny transfer of the domain, checkmate.

International Chess Federation (FIDE) v. DNS Admin / Y Chauhan
Case No. D2021-1269

1. The Parties

Complainant is International Chess Federation (FIDE), Switzerland, represented by KIAP, Attorneys at Law, Russian Federation.

Respondent is DNS Admin, Netherlands / Y Chauhan, India, represented by Siddharth Singh, India.

2. The Domain Name and Registrar

The disputed domain name <worldchesschampionship.com> (the “Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 26, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2021. The Response was filed with the Center on June 1, 2021.

The Center appointed Robert A. Badgley as the sole panelist in this matter on June 4, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 21, 2021, the Panel issued Procedural Order No. 1, which stated in relevant part:

“The Panel orders that, on or before July 5, 2021, Complainant respond to the following questions and requests:

1. With reference to the allegation in the Complaint that Complainant FIDE ‘regulates all international chess competitions’, please state whether, to the best Complainant’s knowledge, there are any international chess tournaments or competitions not regulated by FIDE, and if there are, please identify them.

2. With reference to the allegation in the Complaint that Complainant FIDE ‘regulates all international chess competitions’, please state whether, in Complainant’s view, FIDE would have the legal right to bar a third party or parties from conducting a chess tournament or competition featuring participants from multiple countries, and explain FIDE’s reasoning in this regard.

3. Please provide evidence, if any, of FIDE’s use of the term ‘World Chess Championship’ – as opposed to the mark FIDE WORLD CHESS CHAMPIONSHIP – as a source identifier for Complainant’s goods or services.

4. Please provide evidence, if any, of media or other third-party use of the term ‘World Chess Championship’ – as opposed to the mark FIDE WORLD CHESS CHAMPIONSHIP – with specific reference to Complainant’s goods or services.

Respondent has until July 12, 2021 to reply to Complainant’s submission in response to this Procedural Order No. 1.”

On July 5, 2021, Complainant responded to Procedural Order No. 1. On July 12, 2021, Respondent replied to Complainant’s July 5, 2021 submission.

4. Factual Background

Complainant asserts as follows:

“The International Chess Federation (FIDE) is the governing body of the sport of chess, and it regulates all international chess competitions. It was founded in 1924 in Paris (France). … In 1999, FIDE was recognized by the International Olympic Committee as a Global Sporting Organization. … The first generally recognized world [chess] championship took place in 1886. In 1946 FIDE took over the administration of the World Championship.”

Complainant holds international trademark Reg. No. 1081053 for the mark FIDE WORLD CHESS CHAMPIONSHIP. That mark was registered on April 18, 2011. The French acronym “FIDE” stands for “Fédération Internationale des Echecs (International Chess Federation)”.

There is no evidence in the record whether “WORLD CHESS CHAMPIONSHIP” – without the acronym “FIDE” – has acquired any distinctiveness among consumers anywhere as a source identifier to identify anyone particular person’s or entity’s goods or services.

The Domain Name was registered on June 8, 2020. The Domain Name does not resolve to an active website, but instead is redirected to a web page at “www.uniregistry.com”, which states that the Domain Name is available for purchase at the price of USD 15,000.

Respondent appears to deny that he had anything to do with the Domain Name being listed at the Uniregistry site for sale. Respondent states that he registered the Domain Name because of its value as a mere combination of three common words, “world”, “chess”, and “championship”. Respondent claims that pay-per-click (“PPC”) revenue deriving from a domain name comprised of common words is a legitimate activity. (Despite Respondent’s stated motive to derive PPC revenue, there is no evidence in the record that Respondent has actually put the Domain Name to such use to date.)

5. Parties’ Contentions

A. Complainant

Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

As noted above, Respondent states that he registered the Domain Name in order to derive PPC revenue from the generic words “world”, “chess”, and “championship”.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the trademark FIDE WORLD CHESS CHAMPIONSHIP through registration demonstrated in the record. Because of its ruling below on the “bad faith” element, however, the Panel need not decide whether the Domain Name – which contains the words “world chess championship” but not the acronym FIDE – is identical or confusingly similar to the trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In view of the Panel’s ruling below on the “bad faith” element, the Panel need not decide the “rights or legitimate interests” issue.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

This is a close call. In any event, the Panel concludes from this rather sparse record – even as amplified in response to Procedural Order No. 1 – that Complainant has failed to prove, on a balance of probabilities, that Respondent registered the Domain Name in bad faith. There is insufficient evidence in the record to conclude that Respondent had Complainant’s FIDE WORLD CHESS CHAMPIONSHIP trademark in mind when registering the Domain Name, which lacks any reference to FIDE. The Domain Name itself merely refers to “world chess championship”, which, by itself, may not immediately call to mind Complainant. There is simply not enough evidence in the record upon which to conclude that Respondent was more likely than not aware that the term “world chess championship” referred to a specific event sponsored, governed or presented to the consuming public by one entity in particular. If the Domain Name had also included the acronym FIDE, the result in this proceeding would very likely have been quite different.

The chief problem for this Complaint is twofold. First, Complainant bears the burden of proof to disrupt the status quo and obtain an order to wrest the Domain Name from its current owner. Two, even if there is a viable trademark WORLD CHESS CHAMPIONSHIP (sans the “FIDE”), the term “world chess championship” is also a very natural way – indeed, perhaps the most obvious way – of describing an event designed to identify the best chess player in the world at a moment in time. The same observation could be made about a “world basketball championship” or a “world knitting championship”, whether there are trademarks closely associated with such terms or not. Here, it does not appear more likely than not that Respondent chose the Second-Level Domain “world chess championship” because it was a trademark. In the absence of such finding, there can be no bad faith registration, and the Complaint must fail.

Complainant has not established Policy paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

Respondent asserts that Complainant, represented by counsel, should have known that its case was doomed to failure and hence Complainant’s pursuit of this Complaint constitutes Reverse Domain Name Hijacking (“RDNH”). The Panel declines to find RDNH here. Despite Respondent’s vociferous rhetoric, this was a rather close case. It appears to the Panel that had Complainant put on a stronger case with more evidence (if such existed), a plausible argument that Respondent had targeted Complainant’s trademark could have been made out. Put another way, in the Panel’s view, Complainant’s case might not have been doomed to failure if a more robust record had been developed and presented. Whether Respondent targeted Complainant’s trademark, would need to be resolved in a court of law.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Robert A. Badgley/

Robert A. Badgley
Sole Panelist
Date: July 14, 2021

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