WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Internationale de Football Association v. Neocos
Case No. DBIZ2001-00002
1. The Parties
The Complainant is Fédération Internationale de Football Association, Hitzigweg 11, PO Box 85, CH 8030 Zürich, Switzerland and is represented by Tom Heremans and Charlotte Morgan, Allen & Overy, with Offices at Tervurelaan 268A, B 1150 Brussels, Belgium.
The Respondent is Neocos of 842-9, shihungbon-dong, kumchun-gu, Seoul 153-856, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name at issue is <fifa.biz>. The Registrar is Gabia Inc., 2F, Jungwon B/D, 1049-7 Sadangldong, Dongjakgu, Seoul, Republic of Korea.
3. Procedural History
The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on December 6, 2001, and a hardcopy was received on December 10, 2001.
The Center verified that the Complaint satisfies the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the STOP) and the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules), and that payment was properly made. The Panel is satisfied this is the case.
On December 21, the Center notified the STOP Complaint and the Administrative Proceeding commenced. Since no Response was received by the Center within the time limit set, on January 14, 2002, the Center sent a Notice of Default to the Respondent.
On January 30, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is the world governing body of the sport Associations of Football, and comprising the National Football Associations of 203 countries around the world. It was founded in 1904 and is known under the abbreviation FIFA, which has become its corporate identity.
The Complainant is the owner of several registrations for the trademark "FIFA", in particular of an international registration no. 633108, dated February 22, 1995, based on the Swiss registration no. 415299 for the word "FIFA", with priority of November 8, 1994, in classes 25 and 28 of the International Classification, and designating 33 countries, members of the Madrid Agreement. It is also the owner of an international registration no. 747778, dated June 2000, showing the word FIFA in a special block type lettering, which covers a large list of goods and services in classes 1-42, and designates, in addition to 28 member countries of the Madrid Agreement, Denmark, Estonia, Finland, Island, Japan, Lithuania, Norway, the United Kingdom, Sweden and Turkey (member countries of the Madrid Protocol).
The Complainant also owns the domain name <fifa.com>. On the respective website visitors may get information about the Complainant and the football World Cup 2002, which will be held in Korea and Japan.
According to ComplainantĎs submission and evidence (exhibits 7 and 8) the FIFA mark and name is well-known all over the world, including Korea, and is of high commercial value.
In November 2001, the Complainant applied to register the domain name <fifa.biz>, but was informed that it had already been registered by the Respondent.
The Respondent has chosen not to respond to the submissions of the Complainant and the Panelist is satisfied that they are true.
The Respondent registered on November 19, 2001, the domain name <fifa.biz>.
5. Partiesí Contentions
The Complainant submits that (1) the domain name <fifa.biz> is identical to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered or is being used in bad faith.
The Respondent failed to submit a Response.
6. Discussion and findings
Paragraph 4(a) of the STOP lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
1) Identity with a mark in which the Complainant has rights
The domain name <fifa.biz> is identical with the trademark (word-mark) "FIFA" in which the Complainant has registered rights in many countries, and which is well-known worldwide. Although, it may not be necessary to decide whether the domain name is also identical to the mark covered by international registration no 747778, showing the word "FIFA" in a special block type lettering, the Panel will nevertheless consider it. The Panel find that the Domain Name is identical to that mark, since the mark consists exclusively of the word FIFA, which in pronunciation is identical with the Domain Name.
2) Legitimate rights or interests in respect of the domain name
The Respondent has not submitted to be the owner or beneficiary of a trademark that is identical to the Domain Name. The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's registration of the Domain Name. Simple stocking of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. The Respondent is not known at all under the name <fifa.biz>.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the Domain Name.
3) Registration or use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered or is being used in bad faith. As an example, the Policy section 4(b) (i) mentions registration of the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.
The Complainant submits that on November 29, 2001, it asked a representative of Sports Marketing Korea (representing the Complainant in Korea), to speak to Mr. Park, the administrative contact of the Respondent, in order to find out why the Respondent had registered the domain name <fifa.biz>. The Complainant was informed that Mr. Park did not wish to tell the representative of Sports Marketing why it had registered the domain name and that he stated that if the Complainant had any interest in the name it should contact him directly.
Since the Complainant did not follow up, but sent to the Respondent a cease and desist letter, it has not received any concrete offer from the Respondent.
The Complainantís advertising and sponsoring activities are particularly present in the Korean media, since June 2001, when the Republic of Korea co-hosted the FIFA Confederation Cup and with the 2002 FIFA World Cup to take place in the Republic of Korea and Japan. In view of these events, many instances of counterfeiting and infringement of the Complainantís intellectual property rights (including its rights in its trademark FIFA) has taken place in recent months. This has caused the Korean Government to actively publicize its efforts in protecting the Complainantís intellectual property rights. This is evidenced by Exhibit 10, which contains translations of numerous articles in the Korean Press from June, July and October 2001, the last appearing a month before the Respondent registered the domain name <fifa.biz>.
In view of these facts, it cannot be reasonably assumed that the Respondent, who is located in Seoul, where most of the Complainantís advertising and sponsoring activities take place, was not aware of the Complainant and its trademark FIFA when registering its domain name. It is also hardly possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and infringe the Complainantís rights in its well-known mark. This is more true in the STOP proceeding for the <.biz> domain where an intention of fair non-commercial use is no excuse for bad faith.
Furthermore, the fact that the Respondent chose to register a domain name as a word in Latin script, which may not normally be understood by citizens of his country and which may have no meaning for them, had it not become well-known in the Republic of Korea in the context of the 2001 FIFA Confederation Cup and the forthcoming FIFA World Cup, is another very strong indication that it registered that domain name in order to profit in some illegitimate manner from the fame of the Complainantís trademark.
Taking into account all these considerations, the Panelist is satisfied that the Respondent registered the domain name <fifa.biz> in bad faith, either in order to prevent the Complainant from reflecting his mark FIFA in a corresponding domain name in the <.biz> domain, or primarily for the purpose of selling the domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess its documented out-of-pocket costs directly related to the domain name. That this was the incentive for the Respondent may also be inferred from the fact that the Respondent did not react to an offer of the Complainant, dated December 5, 2001, (in which the Complainant referred to its rights in the trademark FIFA) to pay Respondentís our of pocket expenses for the transfer of the domain name. If the Respondent had had any bona fide intentions to use the domain name <fifa.biz> when registering it in November 2001, he would no doubt have replied to the Complainantís mail. However, the Respondent chose not to react to this mail, and not to submit a response to the Complaint in this proceeding, apparently because it was not interested in being reimbursed just its out-of-pocket expenses. It has repeatedly been decided that bad faith can also be found when the Registrant waits passively for contacts from the right holder before demanding a premium for sale of the domain name. In the absence of any submission of the Respondent to the contrary, the Panelist is satisfied that this is the situation of the Respondent, who did not indicate any concrete plans or preparations for a use of the domain name <fifa.biz> and did not submit any evidence for such use.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the STOP.
Pursuant to paragraph 4(I) of the STOP and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <fifa.biz> be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: February 13, 2002