Complainant is Fédération Internationale de Football Association (“FIFA”) of Zurich, Switzerland, represented internally.
Respondent is Yves Trevalec, Festival International du Film d’Action - CTV of Luxembourg, Luxembourg, represented pro se.
The disputed domain names <fifafootballmuseum.com>, <fifa-museum.com>, <fifamuseum.com> and <fifamuseum.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Response was filed with the Center on September 15, 2014.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on October 20, 2014. 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.
Complainant, the Fédération Internationale de Football, is the governing body of “association football”, and is the originator and organizer of a number of world soccer championships, including the quadrennial world football championship known as the FIFA World Cup.
Complainant is the holder of, inter alia, the following registered trademarks, which it uses in connection with its activities:
- FIFA, registered on February 22, 1995 as an international trademark with registration number 633108 in classes 25 and 28, and duly renewed;
- FIFA, registered on October 14, 2010 as a Community trademark with registration number 009027343 in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.
On April 18, 2012, Complainant announced that it had plans to create a museum dedicated to football in Zurich, Switzerland.
On January 17, 2013, Respondent registered the domain name <fifamuseum.com>. On February 17, 2013, Respondent registered the domain name <fifa-museum.com>. On February 18, 2013, Respondent registered the domain name <fifamuseum.org>, and finally on August 2, 2013, it registered the domain name <fifafootballmuseum.com>. These domain names are collectively referred to as the “Disputed Domain Names”.
On March 13, 2014, Respondent informed Complainant that it is the holder of the Disputed Domain Names, and that it was willing to transfer the Disputed Domain Names in exchange for match tickets to the 2014 FIFA World Cup in Brazil.
At the time of filing the Complaint, the Disputed Domain Names did not resolve to an active website.
Complainant considers the Disputed Domain Names to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainant, Respondent has not used the Disputed Domain Names in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Names.
Respondent considers that Complainant did not show that the Disputed Domain Names were used for commercial use or that they damaged the activities of Complainant. Respondent also argues that many websites and blogs use the acronym “FIFA” for different purposes. Finally, Respondent contends that its offer to transfer the Disputed Domain Names in exchange of free tickets was inspired by the fact that its project of “Festival International du Film d’Action” was outdated.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
3. The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a FIFA trademark in which Complainant has rights. The trademark has been registered and used in various countries in connection with a variety of goods and services.
The Panel considers the Disputed Domain Names <fifafootballmuseum.com>, <fifa-museum.com>, <fifamuseum.com> and <fifamuseum.org> to be composed of a name that is confusingly similar to the FIFA trademark and the non-distinctive generic terms “football” and or “museum”. One Disputed Domain Name also contains a hyphen. The Panel is of the opinion that the mere addition of non-distinctive text and a hyphen to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner, WIPO Case No. D2008-0965, where the domain name <ibmdownload.com> was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “pokemon”; Nintendo of America Inc. v. Gray West International, WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, where the domain name <porsche-repair-parts.com> was held to be confusingly similar to the trademark PORSCHE).
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed. The argument that Respondent used to have a project named “Festival International du Film d’Action” is not supported by any evidence.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, Respondent is not making any use of the Disputed Domain Names at all. In the Panel’s assessment, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the registration or acquisition of the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names, and the registration of the domain names in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the FIFA trademark at the moment it registered the Disputed Domain Names, since Complainant’s trademark is a widely known trademark. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Respondent is not using the Disputed Domain Names. According to the Panel, the passive holding of the Disputed Domain Names may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Names by the Respondent that would be legitimate and not infringing the Complainant’s well-known mark (See Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the present case, the Panel is of the opinion that Complainant’s trademark has a strong reputation and is widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by Respondent. The alleged project of a “Festival International du Film d’Action” appears to be a poorly designed excuse for registering the Disputed Domain Names. There is no evidence that Respondent ever was associated to any such project and it does not explain why Respondent would choose to register a domain name such as <fifafootballmuseum.com>, which is clearly targeting Complainant. Furthermore, there is no sign of any good faith use in relation to the Disputed Domain Names. Respondent offered to transfer the Disputed Domain Names in return for expensive FIFA World Cup tickets. According to the Panel, this serves as an indication that Respondent registered or acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names.
Finally, in registering no less than four domain names that are confusingly similar to Complainant’s trademark and that can be associated to Complainant’s FIFA museum project, Respondent registered the Disputed Domain Names in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name. The registration of four domain names which all target the same project of Complainant serves as a clear indication that Respondent has engaged in a pattern of such conduct.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <fifafootballmuseum.com>, <fifa-museum.com>, <fifamuseum.com> and <fifamuseum.org> be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: October 31, 2014