WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FC Bayern München e.V v. Miguel Garcia
Case No. D2000-1773
1. The Parties
The Complainant is FC Bayern München e.V., an association registered under the laws of Germany, with principal place of business at Saebener Strasse 51, 81547 Munich, Germany.
The Respondent is Miguel Garcia, Apartado de Correos 5, Playa del Ingles, Gran Canaria 35100, Spain.
2. The Domain Name and the Registrar
The domain name at issue is <fcbayern.com> (hereinafter the "Domain Name"). The registrar is BulkRegister.com. (hereinafter the "Registrar").
3. Procedural History
On December 19, 2000, the Complainant filed a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Complainant elected to have the dispute settled by a three-member panel. The Center received a hard copy of the Complaint on December 20, 2000.
On January 3, 2001, the Center requested the Registrar to verify the Domain Name in dispute. The Registrar confirmed on January 5, 2001, that the Domain Name has been registered via the Registrar's registration services, that the Domain Name is registered in the name of "Apartado de Correos 5", that Mr. M. Garcia is the administrative and technical contact, that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the Domain Name and that the current status of the Domain Name is "Registrar Lock".
In an e-mail to Complainant of January 9, 2001, the Center noted that "Apartado de Correos 5" does not indicate the holder of the Domain Name but appears to be an address, and moreover the address of the administrative and technical contact. On the same day, the Complainant filed an amendment to the Complaint stating that the Respondent is "Apartado de Correos 5 / M. Garcia".
The Center proceeded to verify whether the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. The Center concluded that the Complaint satisfies all of these formal requirements.
On January 22, 2001, the Center notified the Respondent that an administrative proceeding has been commenced against it as of January 22, 2001, and sent to Respondent a copy of the Complaint. The Center also set Respondent a time limit expiring on February 10, 2001, to file its Response.
On February 15, 2001, i.e. after the expiration of the time limit, the Respondent filed its Response.
On March 7, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
On March 8, 2001, the Complainant submitted a supplemental filing which the Center forwarded on the same date to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the three panelists issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant is FC Bayern München e.V., a German sports association particularly known for its football team. Its trademark FC BAYERN is protected, among other registrations, by a German trademark registration in block letters (DE No. 395 18 308) and by a corresponding international registration in a number of other European countries, including notably Spain (IR No. 648 986). Copies of the corresponding registration certificates filed by Complainant are attached to the Complaint as Annex 12.1 and 12.2.
The Domain Name has been registered on July 16, 1996 by The Bletchley Group, Ltd. Since November 20, 2000, the Domain Name is registered in the name of "Apartado de Correos 5" (Annexes 6 and 9 to the Complaint).
5. Parties' Contentions
- that the Domain Name <fcbayern.com> is identical to the Complainant's trademark FC BAYERN;
- that Respondent tried to disguise its identity because it did not explicitly indicate the name of the holder of the domain name;
- that Respondent has no relation to Complainant and no legitimate right or interest to use the Domain Name.
- that the Respondent acted in bad faith because the mark FC BAYERN is well known also in Spain as the name of the Complainant, so that the Respondent, when acquiring the Domain Name, must have known that the Domain Name refers to the Complainant;
- that the Domain Name had originally been registered in bad faith because Respondent's predecessor, The Bletchley Group Ltd., tried to sell the Domain Name to Complainant for DM 38,000;
- that The Bletchley Group used the Domain Name for a homepage that created the impression to belong to Complainant, and that Complainant sued the administrative contact and the service provider of Respondent's predecessor and prevailed, and that in the course of those proceedings the service provider disconnected the Domain Name.
- that the Domain Name is not confusingly similar to Complainant's trademark because Complainant's trademark is allegedly "FC Bayern München E.V.";
- that the letters "fc" in the Domain Name stand for "fans club" and that Respondent has a legitimate interest in the Domain Name because he would like to meet fans in his web site to share opinions, pictures, etc.
- that he has not yet made use of the Domain Name but is "just designing the web site that will be online soon" and that this web site will indicate that it is not the official web site;
- that he has not attempted to sell the Domain Name and that he has no relationship with the former owner of the Domain Name.
6. Discussion and Findings
The Panel agrees that the indication "Apartado de Correos 5" is just an address but does not indicate the name of the holder of the Domain Name. The fact that the Response has been submitted by Mr. Miguel Garcia proves that he is in fact the holder of the Domain Name. Therefore, this panel finds that Respondent omitted to disclose his identity as the holder of the Domain Name.
Respondent filed its Response five days after the expiration of the time limit set by the Center. This Panel, in its discretion, nevertheless decides to consider the late-filed Response.
Subsequent to the filing of the Complaint and the Response, Complainant filed a supplementary submission. Supplemental filings are not provided for under the Policy and the ICANN Rules and, therefore, this Panel must decide whether to admit them or not. The Policy and the ICANN Rules demonstrate a strong preference for single submissions by the parties absent extraordinary circumstances (Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427). Prior WIPO decisions state that supplemental filings should only be permitted where there exist "new, pertinent facts that did not arise until after the submission of the complaint" (Gordon Summer, p/k/a Sting v. Michael Urvan, D2000-0596). The alleged telephone call by a certain "Mr. Fischer" is unsubstantiated and does not provide new pertinent facts. The proposed supplemental submission does not allege new pertinent facts but merely reargues the facts already alleged by the opposing party. Therefore, this panel does not admit Complainant's supplementary submission.
To have the disputed Domain Name transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant has shown that it owns registrations of the trademark FC BAYERN in block letters in several European countries. Contrary to Respondent's allegation, therefore, Complainant has demonstrated that it owns a trademark which is identical to the Domain Name <fcbayern.com>. The Panel therefore finds that the Domain Name at issue is identical to Complainant's trademark.
Rights or Legitimate Interests
In order to demonstrate Respondent's rights or legitimate interest in the Domain Name, the Policy requires the Respondent to submit in his Response evidence of any demonstrable preparation to use the Domain Name (Policy, paragraph 4 (c) (i)). Respondent alleges that he intends to set up a web site to meet FC Bayern fans. In prior WIPO decisions, panels have transferred domain names consisting of names of sport teams despite the contention that respondent intended to create "fan sites" (see e.g. Football Club des Girondins de Bordeaux v. Annie Arr, D 2000-0149). In this particular case, Respondent merely stated that he would like to meet "all the fans in my web site". But he does not mention any further concept of his plans. As a consequence, there is no information provided by Respondent as to the details of the planned website or to the time schedule for the realization of his fan club page. Furthermore, Respondent has failed to submit evidence of any demonstrable steps to achieve this goal. Respondent seems to have the view that Complainant has to give evidence as to the legitimate interests of Respondent. This does however contradict the Policy and its interpretation by former panel decisions. As Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue, the burden of proof is shifted to Respondent to demonstrate, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed Domain Name (Lancôme Parfums et Beauté & Cie v. SL, Blancel Web, D2001-0028). In this context it has been held that ‘concrete evidence’ is more than mere personal assertions (see Do The Hustle, LLC v. Tropic Web, D2000-0624).
Respondent furthermore alleges that his planned web site would indicate that it is not the official web site of Complainant. However, the Domain Name <fcbayern.com> chosen by Respondent does not in itself indicate that a web site posted thereunder would be operated by a party other than Complainant. Respondent's assertion that "fc" stands for "fans club" is not credible and is irrelevant, because the public would anyway understand that the letters "fc" stand for football club.
Under these circumstances, the Panel finds that the Respondent did not demonstrate to have any legitimate rights or interest in the Domain Name.
Registration and Use in Bad Faith
The fact that the Respondent did not disclose his identity as the holder of the Domain Name is an indication that Respondent registered the Domain Name in bad faith. (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO 2000-0003; 3636275 Canada, dba eResolution v. eResolution.com WIPO D2000-0110; Parfums Christian Dior v. Javier Garcia Quintas and christiandior.net WIPO D2000-0226; Hyosung Corporation v. HH WIPO D2000-0236).
The record shows that the previous owner of the Domain Name attempted to sell it for DM 38'000 to Complainant. It further appears that Complainant already won a trademark infringement case on the basis that the material previously posted on the website infringed the Complainant's trademark, and Respondent has not denied this allegation. Complainant claims that these acts of bad faith are attributable to Respondent. The Respondent states that he has no relationship with the previous owner and that he asked "for a confirmation of Networksolutions to verify that I have registered the domain because it was available for everybody" [sic]. Although the record does not clearly reveal the circumstances surrounding the "transfer" of the Domain from the previous owner to Respondent, for the following reasons this Panel finds that it is not necessary to decide whether the bad faith use of the Domain Name by the previous owner is attributable to Respondent, because it appears that Respondent himself registered and used the Domain Name in bad faith.
The trademark FC BAYERN is a well-known mark, and the Respondent admits that he was aware thereof. While the Respondent has not shown that he has a genuine interest in the Domain Name, he is deliberately preventing the Complainant from reflecting its mark in a corresponding ".com" domain name (Mrs. America Productions, Inc. v E.T. Corp., NAF 0003000094377). Panels have repeatedly held that the mere holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name being used in bad faith is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO 2000-0003). Internet users entering the Domain Name identical to Complainant's trademark expecting to find Complainant, would be immediately linked to a website not belonging to the Complainant (Michelin & Cie. v. Tgifactory, WIPO D2000-1414).
Accordingly, this Panel finds that Respondent has registered and used the Domain Name in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Name <fcbayern.com> registered by Respondent is identical to the trademark FC BAYERN in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name <fcbayern.com> be transferred to the Complainant.
Prof. William Cornish
Prof. Thomas Hoeren
Dated: March 20, 2001