WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Futbol Club Cincinnati, LLC d/b/a FC Cincinnati v. Brett Dickson, New Paradigm Business Solutions

Case No. D2018-2273

1. The Parties

Complainant is Futbol Club Cincinnati, LLC d/b/a FC Cincinnati of Cincinnati, Ohio, United States of America (“United States”), represented by Keating Muething & Klekamp PLL, United States.

Respondent is Brett Dickson, New Paradigm Business Solutions of Cincinnati, Ohio, United States, self‑represented.

2. The Domain Name and Registrar

The disputed domain name <fccincy.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2018. On October 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2018, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. The Response was filed with the Center on November 4 and November 5, 2018.

The Center appointed Robert A. Badgley as the sole panelist in this matter on November 9, 2018. 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.

On November 13, 2018, Respondent sent the Center an unsolicited Supplemental Response. In its discretion, the Panel considered this filing and its annexes.

4. Factual Background

Complainant, based in Cincinnati, Ohio, United States, is a professional soccer (widely referred to as “football” outside the United States) team founded in 2015. Currently, Complainant competes in the United Soccer League (“USL”), the second-ranked soccer league in the United States. In May 2018 Major League Soccer (“MSL”), the top-tier soccer league in the United States, announced that Complainant has been added as an expansion team to MSL and will commence MSL play in 2019.

Complainant began competitive play in March 2016 as a USL team, drawing more than 14,000 spectators at its first match and averaging 17,000 fans per match for the 2016 season. In 2018, Complainant averaged more than 25,000 spectators per match.

According to the Complaint, Complainant’s FC CINCINNATI merchandise is sold at more than 60 locations around Cincinnati, and Complainant’s merchandising revenues surpassed USD three million in 2017.

On January 7, 2015, Complainant registered the domain name <fccincinnati.com> and sometime thereafter began to use that domain name to host its main website. On April 17, 2015, Complainant filed intent-to-use trademark applications with the United States Patent and Trademark Office (“USPTO”) for the marks F.C. CINCINNATI, FC CINCINNATI (and design), and FC CINCINNATI Club Crest Logo.

On May 10, 2015, an article appeared in a soccer-related blog, Scratching the Pitch, reporting that the USL was expanding into Cincinnati beginning in the 2016 season. The next day, May 11, 2015, a second article appeared on the website Wrong Side of the Pond, in which the author revealed the name of the new soccer team – FC Cincinnati. This article also reported that Complainant had filed intent-to-use trademark applications, and displayed the logo and the proposed team crest as reflected in the USPTO applications.

Two days later, on May 13, 2015, Respondent registered the Domain Name.

Respondent is the communications director for Cincinnati Soccer Club, Ltd., d/b/a CincySC (“CincySC”), an Ohio limited liability company organized on May 11, 2015. CincySC is a soccer development and training firm focused on developing youth soccer players in and around Cincinnati, Ohio.

According to the Complaint, as of August 5, 2017, the Domain Name was redirected to a web page on Respondent’s website. This web page featured Complainant’s “FC CINCINNATI Club Crest” Logo (which by then had become a registered trademark on the USPTO Principal Register), followed by a “plus” sign, then Respondent’s CincySC logo, then an “equal” sign, then the word “fun!”.

At some unspecified later date prior to October 1, 2018, the web page to which the Domain Name was redirected continued to feature the content noted above, but added pictures of Complainant soccer players. The web page also stated: “FC Cincinnati is proud to partner with local youth soccer organizations to assist with their fundraising efforts.” According to the Complaint, Complainant does provide discounts to 55 youth soccer organizations in and around Cincinnati and remits a portion of ticket proceeds to such groups, but Complainant never authorized Respondent to use the publicity rights of its soccer players at Respondent’s website.

Complainant alleges that, on October 2, 2018, its lawyer spoke to Respondent’s lawyer, advising the latter that Respondent’s registration and use of the Domain Name would not be tolerated. Complainant, through counsel, demanded the transfer of the Domain Name in exchange for the costs Respondent had spent to register and renew the Domain Name. Complainant alleges that Respondent’s lawyer replied that the Domain Name was responsible for driving “enormous traffic” to the CincySC website, and that Complainant would have to pay “significant money” to acquire the Domain Name from Respondent.

On October 3, 2018, the Domain Name was redirected from the internal web page discussed above to the landing page of Respondent’s website. The content on the internal web page remains unaltered.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent disputes Complainant’s asserted right to a transfer of the Domain Name, raising numerous arguments, some of which will be addressed below in the context of the three elements under the Policy, the rest of which will be disregarded as not necessary to a disposition of this dispute under the Policy.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark FC CINCINNATI through registration and use. Although the word mark FC CINCINNATI is not registered on the USPTO Principal Register and the words “FC Cincinnati” are disclaimed for the figurative marks Complainant has registered on the USPTO’s Principal Register, there is sufficient evidence in the record that Complainant has used the term FC CINCINNATI – whether adorned with a logo or crest or not – as a source identifier to identify and distinguish its goods and services.

The Panel finds the Domain Name <fccincy.com> to be confusingly similar to the FC CINCINNATI marks. The “FC” part is of course identical, and it is a common place in the United States that the word “Cincy” is a reference to Cincinnati. Because both Parties operate their businesses in the Cincinnati area, the Panel has no difficulty imputing to the Parties their obvious knowledge that “Cincy” and “Cincinnati” are essentially interchangeable.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent asserts that he and his CincySC company are operating a bona fide business, and this fact is beyond dispute. Respondent admits that he “uses the [Domain Name] to direct traffic to its cincysc.com website.” The problem Respondent fails to confront in this proceeding is that he is using Complainant’s mark to enhance Internet traffic to his own website. The fact that one operates a perfectly legitimate business at one’s own website does not give that legitimate business owner the right to free-ride on the renown of another business’s intellectual property in order to enhance his own Internet traffic.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. With respect to bad faith registration, the Panel finds it more likely than not – indeed, extremely likely – that Respondent was aware that Complainant, to be known as “FC CINCINNATI”, was coming to Cincinnati as a professional soccer team at the time he registered the Domain Name. In his Response, Respondent states that he registered the Domain Name on May 13, 2015, three months “before FC Cincinnati was publicly announced”. Respondent does not, however, deny having seen the news articles in the local soccer blogs about the new soccer team, explicitly referred to in the May 11, 2015 article as FC Cincinnati.

In the Panel’s experience, if Respondent had not seen the news articles immediately preceding his registration of the Domain Name, he would have said so emphatically in the Response. He did no such thing, instead opting to refer to the first “public announcement” in early August 2015, as if this was the first time Respondent had heard of the impending arrival of FC Cincinnati to his town. The Panel finds this effort by Respondent to rely on the August 2015 announcement and ignore the May 2015 articles to be disingenuous. It must also be borne in mind that Respondent is deeply engaged in the sport of soccer, which increases the likelihood that a new professional team coming to his own town would not have escaped him.

The Panel also finds bad faith use of the Domain Name under the above-quoted Policy paragraph 4(b)(iv). Respondent has not denied the October 2, 2018 discussion between his lawyer and Complainant’s lawyer, wherein Respondent’s lawyer admitted that the Domain Name was responsible for generating “enormous traffic” to Respondent’s website. The content at Respondent’s website appears to create the impression that Complainant is somehow affiliated with Respondent.

The Panel also notes that Respondent does not deny that his lawyer told Complainant’s lawyer that it would take “significant money” for Respondent to transfer the Domain Name to Complainant. On this record, the Panel finds bad faith use of the Domain Name under Policy paragraph 4(b)(i) as well.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <fccincy.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: November 22, 2018