Premier League and infringement of trademark

The Premier League has won control over the domain premiershiplive.net, which has been used to offer an unauthorised subscription football streaming service.

Premiershiplive.net sold membership via PayPal for £9.95. It promised streams of every game in the Premier League, Champions League, FA Cup and other European leagues, grabbed from legal satellite broadcasts abroad. Dozens of similar sites have sprung up to take advantage of the rise of broadband and the expense of satellite TV subscriptions in the UK.

The League sells rights for legal streaming of games online, so is naturally keen to guard their value by shutting down the legit sites' black market rivals. It employs an internet intellectual property (IP) protection firm called NetResult to search out and attack dodgy streams.

In February the High Court granted an injuction ordering the owner and operators of premiershiplive.net, and two other similar streaming services, to stop using the domain because it infringed the Premier League's "Barclays Premiership" trademark. Wresting control of a domain is often seen by rights holders as a quicker means of achieving results than a direct copyright infringement suit.

But by the time the judge ruled premiershiplive.net had already changed hands twice, according to law firm Clarke Willmott, which acts in domain disputes but was not directly involved in the premierleague.net case. It bounced from an individual in the UK to one in Ukraine, and then to the Isle of Man.

A spokesman for the Premier League said: "This was a simple case of copyright theft. There are increasing numbers of wesites that offer a whole range of football illegally. We have and will continue to take action against illegal services." "This wasn't about the domain name [as such]," he added.

When the High Court ruled, the domain was registered to a business in the Isle of Man, a haven from commercial regulators, owned by "Mr Marko Oleksiy". Clarke Willmott says Oleksiy was apparently "falsely using an Isle of Man postal address while presumed to be based in the Ukraine".

The League was forced to pursue the domain again, this time through the World Intellectual Property Organisation (WIPO), which oversees international domain disputes. In May, it found in the League's favour and said the domain was being used in bad faith.

Oleksiy unsuccessfully argued that the Premier League had no trademark for either "premiership" on its own or "premiershiplive". He also claimed that because Premier League sponsors Barclays were part of the site's payment system, the Premier League must have endorsed use of its logo. The admistrative panel decision is here.

Clarke Willmot IP and sports partner Ravi Mohindra commented: "Any use of a domain name which has been held by a court to be infringement of trade mark rights can only be use in bad faith, and as the owner of the name must have known of the Premier League's rights in its trade mark at the time that it registered the name due to it being so well known, the final point relating to bad faith had also been proved."

The Premier League's lawyers and IP investigators shouldn't be short of business, however. There's myriad hooky streaming sites ready to serve premiershiplive.net's audience and to target for take-down once its domain is transferred to the trademark owner.

Kick Off this Sunday

The Barclays Premier League is reaching its final chapters with only four games left to play and with things at the top a whole lot clearer. Manchester United are leading the pack with Chelsea trying to close the gap, Arsenal and Liverpool have all but secured 3rd and 4th place with Everton seemingly taking 5th place and competing in Europe next season. At the other end of the table the scenario is not so clear. Derby County are the only certainty of Championship football next season and host of clubs namely Fulham, Bolton Wanders, Birmingham City, Reading and Wigan have Premiership survival to play for. All the twists and turns, controversies, goals and action Live on Kick Off Melita Sports at 19:00 with Peter Paul Gauci, Raquel Camenzuli, Catherine Mifsud and Mark Mizzi.

www.melitacable.com