WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Real Madrid Club de Futbol v. Vladimir Tamasi

Case No. D2017-2006

1. The Parties

Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Neudomains Digital, Spain.

Respondent is Vladimir Tamasi of Kos, Greece¹ .

2. The Domain Name and Registrar

The disputed domain name <realmadrid.gift> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2017. On October 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 Complainant on October 27, 2017, 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 October 30, 2017.

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 November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 28, 2017.

The Center appointed Roberto Bianchi as the sole panelist in this matter on December 13, 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. Respondent sent an email communication to the Center on December 13, 2007, which will be referred below.

4. Factual Background

Complainant is a famous professional football club based in Madrid, Spain, and founded at the beginning of the twentieth century. Complainant was a founding member of International Federation of Association Football (“FIFA”) and the G-14 group of Europe’s leading football clubs, and of its successor, the European Club Association.

Complainant owns, inter alia, the following European Union trademark registrations

Complainant also owns the domain names <realmadrid.com> and <realmadrid.net>.

The disputed domain name was registered on August 10, 2017. Presently, the disputed domain name resolves to a website merely stating, “Nothing in here”. However, in accordance with the evidence submitted with the Complaint, the disputed domain name resolved to a website apparently offering Complainant’s T-shirts.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is almost identical or confusingly similar to Complainant’s mark. The disputed domain name differs from Complainant’s trademark REAL MADRID only to the extent of the addition of the generic Top-Level Domain (“gTLD”) “.gift”. The disputed domain name could lead Internet users into confusion, due to the inclusion of a well-known trademark. Such a test of confusion must be especially strict when Complainant is the owner of well-known trademarks. The disputed domain name creates somehow the appearance that Complainant has registered or has permitted the registration and use of the disputed domain name or, at least, that Complainant supports or endorses its use by Respondent, with the corresponding confusion that such a fact implies. Further, the addition of the “.gift” suffix to the registered mark does not distinguish the disputed domain name in any significant way from Complainant’s mark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was chosen to cause Internet users to believe that Complainant endorses or is associated with any website to which the domain name might resolve. The inclusion of a trademark in a domain name suggests consumers that the website found at that domain name is associated with the owner of the trademark. Complainant’s mark and its services are famous. Internet users familiar with Complainant's products and services are likely to conclude that the disputed domain name is simply an extension of Complainant’s business. In view of the popularity of Complainant’s mark and the lack of distinctiveness afforded by the simple addition of a non-distinctive or descriptive term, the disputed domain name is misleading.

Respondent has no rights or legitimate interests in the disputed domain name because: i) Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark REAL MADRID in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) Respondent has no prior rights in the disputed domain name; and v) Respondent must have known Complainant’s trademark since it is a well-known and reputed trademark.

Respondent must have had Complainant in mind when registering the disputed domain name.

Respondent is using the disputed domain name to induce consumers into visiting a website where visitors see false T-shirts to buy and Respondent is collecting sensitive visitors’ personal data by requesting information such as name and email address in an attempt to phish for personal information, which neither qualifies as a bona fide nor as a legitimate noncommercial or fair use of the disputed domain name.

Respondent is using the disputed domain name to create confusion as to the source, affiliation and sponsorship of its commercial website and thereby misdirect Complainant’s potential clients to its own website, on which Respondent sells competing products. Using a domain name to lure Complainant’s clients to a website that sells competing products is not a bona fide offering of goods or services or a legitimate noncommercial fair use. The disputed domain name resolves to a website that sells T-shirts, which would directly compete with Complainant’s business

The disputed domain name was registered and is being used in bad faith. The fact that Respondent chose the term “Real Madrid” for the disputed domain name is evidence per se of bad faith. This selection was deliberate and not a product of chance: “Real Madrid” is not a common term in the Spanish language. Respondent deliberately took someone else’s trademark to register the disputed domain name.

Complainant’s REAL MADRID mark is recorded with the Trademark Clearinghouse. Therefore, Respondent was provided with notice of Complainant’s rights in the REAL MADRID mark before registering the disputed domain name. See International Business Machines Corporation v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1419 (noting “that notifications from the Trademark Clearinghouse, while not conclusive on the issue, can be considered indicia of bad faith registration because the registrant has been put on notice of the trademark holder’s rights.”). This is sufficient evidence to conclude that Respondent registered the disputed domain name in bad faith.

The disputed domain name attracts Internet users to Respondent’s website for commercial gain. Respondent’s website at the disputed domain name offers infringing and counterfeit products, thereby creating confusion regarding Respondent’s affiliation with Complainant. A respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion.

The website at the disputed domain name leaves little if no doubt that Respondent was aware of Complainant’s REAL MADRID mark when registering the disputed domain name. The respective website clearly displays Complainant’s REAL MADRID T-shirts. The aim of such website apparently is to collect visitors’ personal data such as name and email address in a fraudulent manner. In connection with this, Respondent not only made use of a WhoIs privacy shield apparently in an attempt to conceal its identity. A respondent’s use of a disputed domain name to resolve to a website prominently displaying Complainant’s marks is evidence that Respondent had actual knowledge of Complainant’s rights in that mark, and thus registered the disputed domain name in bad faith.

Furthermore, previous UDRP panels have determined that incorporating a widely known trademark, such as Complainant’s REAL MADRID trademark, as a domain name may be considered as a clear indication of bad faith registration and use. See Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.

Another indication for Respondent’s bad faith registration and use is the incorporation of Complainant’s well−known trademark into the disputed domain name, for which Respondent who has no plausible explanation. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. The circumstances of this case and especially the use of Complainant’s well-known trademark as the prominent part of the disputed domain name may also indicate that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trademark in the disputed domain name. Such behavior is additional evidence of bad faith registration and use of the disputed domain name. The evidence shows that Respondent has been engaged in a systematic activity of registering domain names comprising trademarks of known brands and companies. Such systematic behavior is further evidence of bad faith registration and use of the disputed domain name.

The mere fact of knowingly incorporating a third party’s well-known mark in a domain name constitutes registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. On December 13, 2017, in reply to the Center’s notification of panel appointment, the Center received an email from Respondent with the following content:

“What are all these e-mails about? I don't speak english well. Domain was free and I bought it, so what’s the problem? You want the domain? PAY ME”

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts from the European Union Intellectual Property Office (“EUIPO”) trademark database, Complainant has shown to the satisfaction of the Panel that it owns several European Union registrations for the REAL MADRID trademark. See section 4 above.

The Panel notes that in the disputed domain name the REAL MADRID trademark has been incorporated in its entirety, with the only addition of the gTLD “.gift”.

The Panel finds that the disputed domain name is identical to Complainant’s REAL MADRID trademark. The first requirement of the Policy is thus met.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name because: i) Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark REAL MADRID in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) Respondent has no prior rights or legitimate interests in the disputed domain name; and v) Respondent must have known Complainant’s trademark since it is a well-known and reputed trademark.

Complainant also contends that Respondent is using the disputed domain name to create confusion as to the source, affiliation and sponsorship of its commercial website, and thereby misdirect Complainant’s potential clients to its own website, on which Respondent sells competing, counterfeit products. Using a domain name to lure complainant’s clients to a website that sells such kind of products is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

The Panel notes that Respondent has not submitted any evidence contesting any of these contentions.

As evidence of Respondent’s use of the disputed domain name, Complainant submits a printout of the website at the disputed domain name, titled “Real Madrid adizero Shirt 2017/18”, and showing an image of a man wearing a red football shirt and a form to fill in by the visitor of the website, by indicating data to personalize the shirt such as size, player’s name and number, and desired badges, such as “La Liga” or “Club World Cup”, or “no badges”. The printout also shows the price of the shirt, EUR 79.99, and the PayPal logo together with the term “checkout”.

Whether or not the football shirts marketed by Respondent are authentic or − as contended by Complainant − counterfeit, the Panel notes that Respondent at least is selling this product in competition with Complainant, on a website under a domain name that is identical to Complainant’s famous trademark, and without any authorization or license by Complainant. In the Panel’s opinion, this is neither a use of the disputed domain name in connection with a bona fide offering of products under Policy, paragraph 4(c)(i), nor a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers under Policy, paragraph 4(c)(iii).

The Panel also notes that according to the WhoIs data furnished by the Registrar, Respondent is “Vladimir Tamasi”, which discards the applicability of Policy, paragraph 4(c)(ii) as there is no evidence in the case file proving otherwise.

In view of Respondent’s failure to submit any explanation for his reasons or purposes for having registered the disputed domain name, the Panel finds that Complainant has shown that Respondent lacks any rights or legitimate interests in the disputed domain name.

The second requirement of the Policy is also met.

C. Registered and Used in Bad Faith

The Panel notes that the registration of Complainant’s trademark REAL MADRID predates the registration of the disputed domain name by at least two decades. See section 4 above.

The Panel agrees with prior UDRP panels that the trademark REAL MADRID is notorious or well-known worldwide. See Real Madrid Club de Futbol v. Wei Ding, WIPO Case No. D2016-0191 (“the Complainant’s trademark is well-known worldwide”); Real Madrid Club de Futbol c. Juan Antonio Maldonado Castillo, WIPO Case No. D2014-1605 (“The REAL MADRID trademark has the value of a notorious mark in Spain² ”); Real Madrid Club De Futbol v. Lander W.C.S., WIPO Case No. D2000-1805 (stating that the name and trademark REAL MADRID is “indubitably notorious” and “notorious beyond discussion”³ ); and Real Madrid Club de Futbol v. Daniel Vidal, Cubelaws, WIPO Case No. D2016-0350 (“the “REAL MADRID marks identify one of the most important Spanish football clubs, which is present on main sporting and general publications in Spain and Europe. The mark has a constant presence on Television, Internet and on all communication media generally”⁴ ). The Panel also takes into account that the disputed domain name is identical to Complainant’s mark REAL MADRID, and is being used to market and sell football shirts, in competition with Complainant. From all these facts and circumstances, the Panel concludes that Respondent knew of, and had Complainant and the REAL MADRID mark in mind at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.

As shown above, on the website at the disputed domain name Respondent is selling football shirts in competition with Complainant, and according to the Complainant without any relationship to or authorization from Complainant, which Complainant denies. Whether or not this sale also includes an attempt of phishing, by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s website or of a product or service on its website. This is a circumstance of bad faith registration and use of the disputed domain name pursuant to Policy, paragraph 4(b)(iv).

Further, the Panel notes that Respondent has failed to present the Panel with any explanation of his purposes and registering and using the disputed domain name. In its only statement in this proceeding, the Respondent just stated “Domain was free and I bought it, so what's the problem? You want the domain? PAY ME”. See section 5B. above. In addition, as reported by the courier entrusted with delivering the Written Notice to Respondent, the address provided by Respondent when it registered the disputed domain name, is incomplete / wrong, which prevented such notification. Together, these circumstances reinforce this Panel’s impression 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, <realmadrid.gift>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: December 27, 2017

¹ Respondent was originally named in the Complaint as “Whoisguard Protected / Whoisguard, Inc.” which was indicated to be the holder of the disputed domain name in the publicly available WhoIs database consulted by Complainant. Further to the Center's email communication of October 27, 2017 to Complainant, providing the registrant and contact information disclosed by the Registrar, Complainant filed an amendment to the Complaint that identified “Vladimir Tamasi” as Respondent. The Panel therefore determines that Respondent in this case is “Vladimir Tamasi”.

² Original quote, in Spanish language: “La marca REAL MADRID goza del valor de marca notoria en España”

³ Original quote, in Spanish language: “El REAL MADRID CLUB DE FUTBOL, la entidad demandante, es uno de los clubes de fútbol más relevantes del mundo, y su renombre y notoriedad se encuentran fuera de toda duda.”

⁴ Original quote, in Spanish language: “[las] marcas REAL MADRID identifican a uno de los clubes de fútbol españoles más importantes. Como tal, está presente todos los días en las principales publicaciones deportivas y generalistas españolas y europeas. También tiene constante presencia en televisión, Internet y en todos los medios de comunicación en general”.