Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
Respondent is Saad Alharbi of Buraydah, Saudi Arabia.
The disputed domain name <realmadridclub.net> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 4, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 5, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. The Response was filed with the Center on August 27, 2010.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on September 8, 2010. 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 owns the Community Trademark REAL MADRID, including: registration number 4302782 dated January 23, 2006 in classes 3, 4, 6, 9, 14, 16, 18, 20, 21, 24 – 26, 28, 30, 32, 34, 35, 38, and 41 – 44; and registration number 517474 (for REAL MADRID and design) dated November 26, 1998 in classes 3, 6, 14, 16, 24, 25, 28 and 34.
The disputed domain name was registered on November 2, 2005 and presently redirects users to the webpage at “www.alrealclub.com”. That website displays information, photos and videos of Complainant’s football players and also displays several commercial advertisements and links to third-party commercial websites.1
Complainant avers that its football club has existed since 1902. Several pages of the Complaint are spent reciting the competitive history and famous players of the Real Madrid Football Club. Complainant’s legal allegations are excerpted below.
“The <Realmadridclub.net> domain name is confusingly similar to the Complainant’s REAL MADRID mark as the two are almost identical. It is obvious that the Respondent has registered the domain name identical or confusingly similar to the Complainant’s mark name and domain names, for the sole purpose of trading on the goodwill associated with these and misleading the public into believing that it is the Complainant.”
“The Complainant has not consented to the Respondent’s use of the domain name. Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the REAL MADRID mark in a domain name or in any other manner. The respondent is not commonly known, as an individual, business, or other organization by any product or service related with the term ‘REAL MADRID’ alone or combined with the denomination of the products or services that could eventually offer in the market. The respondent is not known in the market with the name REAL MADRID and has not registered any mark containing this term. Respondent has no relationship with, license from or specific permission from Complainant for the use of the REAL MADRID mark.”
“Respondent could have managed a legitimate online business products under any different domain name, whilst its present domain name (a) suggests that it is officially associated with REAL MADRID which it is not; (b) prevents REAL MADRID from registering the domain name <RealMadridClub.net> and to attract the corresponding Internet traffic. By the use of the contested domain name Respondent diverts traffic which would otherwise go to Complainant’s Web sites.
Complainant further submits that Respondent’s bad faith is further demonstrated by the use of the domain names to provide advertising links to websites promoting and/or offering products and services of third parties [. . . .]
The Respondent’s use of the domain name is clearly an attempt to attract internet users to the Respondent’s on-line location by creating a likelihood of confusion with REAL MADRID’s name and trade marks within the meaning of paragraph 4(b)(iv) of the Policy.”
Based upon the foregoing allegations and ample citations to previous decisions under the Policy, Complainant seeks transfer of the disputed domain name.
The Response submitted by Respondent is sufficiently brief to set forth in its entirety:
“Hi
Thank you for contacting us. regarding the website (realmadridclub.net) Case No. D2010-1302
we would like to make some points clear to you. The website is for Real Madrid fans to gather and talk about their favorite team. The website has a forum to discuss the latest news and event of Real
Madrid.
We have stated on the website very clear that this is not the official Real Madrid club website, and we write that this is Real Madrid fans website. We have owned this domain and website since 2005 and we are working to promote Real Madrid club in the Arab world and we consider ourselves as a connection between the team and it’s fans in the Arab world.
Everyone of our visitors knows that we are not the official Real Madrid club and we have made it clear that we are the fans of Real Madrid. We never used our website as a bad thing for Real Madrid on the contrary we always support Real Madrid club and work very hard to translate Real Madrid news to Arabic and make them available for our Arab visitors.
As Real Madrid fans I this we have the right to show our love and support for the team and to gather in a website where everyone of us is crazy about Real Madrid and it news, matches, players, and events. We only use this website to follow Real Madrid team and support them.
The most important thing is that we didn’t use this domain to collect money or to benefit from it in any business way. On the contrary we pay money from our pockets all because we love and support Real Madrid club. We didn’t at any time get money from using this domain.”
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Although the disputed domain name <realmadridclub.net> is not identical to Complainant’s trademarks, the Panel agrees that the disputed domain name is confusingly similar to Complainant’s well-known REAL MADRID trademark.
Panels typically disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain name adopts Complainant’s trademark in its entirety, adding only the descriptive word “club”. The Panel finds that Respondent’s addition of this descriptive term does not negate the confusion created by Respondent’s complete inclusion of the REAL MADRID trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
Moreover, the Panel finds that the addition of the descriptive term “club” instead increases the risk of confusion experienced by Internet users because Complainant’s trademark is associated with its well-known football club. E.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”)).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once complainant has made a prima facie showing, the burden to come forward with evidence establishing rights or legitimate interests shifts to respondent. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 cited in Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield, WIPO Case No. D2008-0754.
The Panel accepts as true Complainant’s unopposed allegations that Respondent has no authorization or license to use Complainant’s trademarks. The Panel also accepts Complainant’s uncontested allegation that Respondent is not known by the disputed domain name.
Respondent claims that the website to which the disputed domain name routes is a fan site without commercial purpose. The Panel has viewed online the website to which the disputed domain name routes and finds that Respondent’s website displays advertisements that link to third-party websites promoting entertainment and travel services.2 One link in fact advertises tickets to games of another football club, Liverpool Football Club. The Panel finds, therefore, that Respondent’s representation that its website is simply a fan site is not supported by the evidence visible on the site itself.3
The diversion of traffic to third parties and their products demonstrates that, contrary to the representations in its Response, Respondent is also using the REAL MADRID mark for commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he [p]anel is free to infer that [r]espondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd., WIPO Case No. D2006-1079.
The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Respondent has failed to provide sufficient evidence to rebut Complainants prima facie case or to prove any of the circumstances of paragraph 4(c) of the Policy to support the existence of his “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainant’s well-known REAL MADRID mark, which Respondent deliberately adopted to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
In fact, the Response demonstrates that Respondent had actual knowledge of Complainant’s trademarks and intended to attract fans of Complainant’s football club. Respondent contends that it does not attempt to confuse visitors to its website, and has posted a disclaimer stating that Respondent’s website “is not the official Real Madrid club website”. However, it is well established that the existence of a disclaimer cannot cure bad faith when bad faith has been shown by other factors. Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (citing E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181)).
Respondent’s website shows that the disputed domain name is used not only to provide commentary and information for fans of Complainant’s football club, but also, as noted above, to promote the clubs of Complainant’s competitors. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).
The Panel concludes therefore that the requirement of registration and use in bad faith is established on the basis of the available evidence.
Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <realmadridclub.net> be transferred to Complainant.
Nasser A. Khasawneh
Sole Panelist
Dated: September 21, 2010
1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
2 Respondent’s website, as shown in Complaint exhibits, is consistent with its present online appearance.
3 There are many UDRP cases in which the respondent claims to have an active noncommercial fan site but the panel finds otherwise in this matter. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.5.