WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FC Bayern Muenchen AG v. Pamella Krapf, bayernmunichfcproshop.com / Whoisguard Protected, Whoisguard, Inc.

Case No. D2017-0516

1. The Parties

The Complainant is FC Bayern Muenchen AG of Munich, Germany, represented by Taylor Wessing, Germany.

The Respondent is Pamella Krapf, bayernmunichfcproshop.com of Roslyn-Heights, New York, United States of America (“United States”) / Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <bayernmunichfcproshop.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 24, 2017.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on March 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.

The Center appointed Antony Gold as the sole panelist in this matter on April 25, 2017. 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.

4. Factual Background

The Complainant operates the football activities of the football club, FC Bayern Muenchen. It engages in a number of associated commercial activities under the trade marks FC BAYERN and FC BAYERN MUENCHEN. The Complainant owns a large number of trade mark registrations which protect these trading styles, including International Registration no. 1290740 for FC BAYERN or goods in a number of classes, including in class 25 for clothing, footwear and headgear and International Registration no.797796 for FC BAYERN MUENCHEN, for goods in a number of classes, including in class 25 for clothing, footwear and headgear.

The disputed domain name was registered on September 8, 2016. It points to a website, which offers for sale a range of football merchandise which bear the Complainant’s trade marks. The home page of the website contains a logo of the Complainant and a prominent banner “Shop Bayern Munich”. Below the banner, in smaller font, is a strapline “The OFFICIAL Store of the Bayern Munich”. Beneath the banner are a number of football shirts bearing the name “Bayern Munchen”. These are advertised for sale next to a further banner stating “SHOP ADIDAS OFFICIAL JERSEYS HERE”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to trade marks in which it has rights. It says that its football team, FC Bayern Muenchen, is one of the most successful and famous teams in the world and explains that it produces and distributes for sale a wide variety of merchandising products bearing the name of its team. It provides information about its many trade mark registrations for FC BAYERN and FC BAYERN MUENCHEN, both of which, it says, are very widely known. Details of two of these marks are set out above. The Complainant adds that the fame of its trade marks has been recognized by other UDRP panels which have considered other complaints the Complainant has pursued under the Policy.

The Complainant says that the disputed domain name is confusingly similar to its trade marks. It says that the addition of the words “proshop” do not serve to avoid the possibility of confusion on the part of Internet users because such users will focus on the first part of the disputed domain name, that is “bayernmunichfc”, and associate it with the Complainant. The addition of the “proshop” element of the disputed domain name, it says, simply suggests, albeit incorrectly, to Internet users that products associated with the Complainant’s professional football team are sold by, or on behalf of, the Complainant at the online shop to which the disputed domain name points.

The Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name. It says that the Respondent is operating an unauthorized shop at the website to which the disputed domain name points and that the Respondent is not a customer, a retailer or a licensee of the Complainant. It claims that the range of products which the Respondent is offering for sale are counterfeit and says that the use of the disputed domain name to operate an online shop selling counterfeit products does not provide the Respondent with a legitimate interest in using the disputed domain name. Moreover, it says, even if the goods were not counterfeit, the disputed domain name was registered with the intention of misleading Internet users as to the commercial origin of the Respondent’s products because the Respondent’s claim to be an “official” provider of merchandise associated with the Complainant is untrue. Accordingly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.

The Complainant adds that both the registration and use of the disputed domain name infringe the Complainant’s trade mark rights and it explains in some detail the basis for this assertion.

Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant refers to paragraph 4(b) of the Policy which provides, without limitation, four examples of circumstances which are likely to constitute bad faith. It says that paragraph 4(b)(iv) of the Policy is relevant to the present circumstances as it provides that bad faith will be found if by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product on the web site.

The Complainant says that the registration by the Respondent of a domain name that is very similar to its FC BAYERN and FC BAYERN MUENCHEN trade marks points to a bad faith registration. Its bad faith intent is reinforced by the appearance of the Respondent’s website and, in particular, its use of the Complainant’s trade marks and its claim to be an official website of the Complainant. It says that the Respondent’s use of the disputed domain name is likely to mislead Internet users into using the Respondent’s shop in the mistaken belief that they are buying products of the Complainant which are being sold with its authority. Accordingly, the Complainant says that the Respondent’s conduct falls within the circumstances described at paragraph 4(b)(iv) of the Policy.

Lastly, the Complainant refers to other UDRP proceedings in which it has been a complainant in which the panels have found the domain names in dispute to have been registered and used in bad faith by the respondents.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The details the Complainant has provided of its many trade mark registrations for FC BAYERN and FC BAYERN MUENCHEN establish that it has rights in these trade marks. In considering whether the disputed domain name is confusingly similar to either or both of these trade marks, a number of points require consideration.

First, it has been established by previous UDRP panel decisions that the gTLD suffix (“.com”) should be disregarded when assessing the degree of similarity between the disputed domain name and the Complainant’s trade mark.

Second, it is necessary to evaluate the differences between the first element of the disputed domain name, “bayernmunichfc”, and the Complainant’s trade marks. The first difference is that the first two letters of the trade marks, “fc”, have been moved to the end of this part of the disputed domain name. In addition, the English spelling of the city in which the Complainant is based, that is “Munich”, has been used in the disputed domain name, rather than the German spelling, “Muenchen”, which is used in the Complainant’s trade marks. Neither of these changes affects the fact that this part of the disputed domain name is confusingly similar to the Complainant’s trade marks. The letters “fc”, whether they are placed at the beginning or end of this part of the disputed domain name, will be understood by Internet users to be an abbreviation for “football club” and their transposition will not diminish the degree of confusing similarity. For the same reason, the use in the disputed domain name of the English spelling of “Munich”, rather than the German spelling used in its trade marks, does not diminish the confusing similarity.

Third, the addition of “proshop” to “bayernmunichfc” is likely to be perceived by Internet users as an indication that the disputed domain name points to an online store at which merchandise associated with the Complainant, a professional football club, can be purchased. Having regard to the fact that merchandising is an activity closely associated with professional football clubs the addition of this essentially descriptive element to the disputed domain name does not dispel the confusing similarity between the disputed domain name and the Complainant’s trade marks.

Fourth, it is material to consider whether, even if the individual differences between the Complainant’s trade marks and the disputed domain name are not significant in themselves, their cumulative effect is such as to render the disputed domain name dissimilar to the Complainant’s marks. The dominant element of the disputed domain name is the name of the football club, Bayern Muenchen. The Complainant is very well known, irrespective of whether the German or English spelling of the city is used. Moreover, whilst the Complainant’s FC BAYERN MUENCHEN trade mark comprises the name of the city and federal state in Germany in which its football club is based, it has secured extensive trade mark protection for its commercial activities. Minor differences from the trade mark as registered coupled with an essentially descriptive phrase do not, even cumulatively, materially distinguish the disputed domain name from the Complainant’s trade marks.

The Panel accordingly finds that the disputed domain name is confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:

(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). This says that the consensus view of panelists is that, “whilst the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

The evidence submitted by the Complainant provides a strong prima facie case that the use to which the Respondent has put the disputed domain name is both illegitimate and commercial in character, namely that the Respondent seeks to derive commercial gain from misleadingly diverting consumers seeking the Complainant’s products to her website. Such deception is heightened through the Respondent’s deceptive uses of misleading banners and straplines in the website. Accordingly, the burden shifts to the Respondent to demonstrate that she has rights or legitimate interests in the disputed domain name. As the Respondent has not responded to the Complaint, she has not discharged this burden, nor is there any evidence in the Complaint to suggest that she might have been able to do so.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As the Complainant has explained, Paragraph 4(b)(iv) of the Policy describes one of the non-exhaustive circumstances in which bad faith will be found, namely if by its use of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her web site or of a product or service on it.

This precisely captures the Respondent’s activities; both the inherently confusing characteristics of the disputed domain name suggests that it was registered for the purpose to which it has been put by the Respondent, namely to sell products infringing the Complainant’s trade marks through a website which misleadingly suggests that it is operated either by the Complainant or on its behalf.

The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 name <bayernmunichfcproshop.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: May 9, 2017