WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Internationale de Football Association v Trade a. k. a. Hans-Peter Jeschke
Case No. DBIZ2002-00056
1. The Parties
Complainant is Fédération Internationale de Football Association, represented by Tom Heremans and Serge Debrye, Allen & Overy of Brussels, Belgium, hereinafter the "Complainant".
Respondent is Trade a. k. a. Hans-Peter Jeschke of Bessenbach, Germany, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <wm2006.biz>, hereinafter the "Domain Name".
The registrar for the disputed domain name is Dotster Inc., N.E. 99th St. 117807, Vancouver, Washington 98682, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint, received by the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2002. On April 30, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On May 22, 2002, the Center transmitted Notification of the STOP Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, the Rules for Start-up Trademark Opposition Policy (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
(c) In the period from May 23, 2002, to September 3, 2002, there have been e-mail correspondences between Respondent, Complainant, the Center, the Registrar and the Registry Operator, and there have been three suspensions of the Administrative Proceeding.
(d) The Center issued a Notification of Respondent Default on September 16, 2002.
(d) The Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Panelist. The Parties were informed about the appointment on September 23, 2002.
(e) The Administrative Panel finds that it is properly constituted and appointed in accordance with the STOP and the STOP Supplemental Rules, and shall issue its Decision based on the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is the world governing body of the sport of Association Football, commonly known as soccer or football, comprising the National Football Association of 203 countries around the world. FIFA was founded in 1904.
Complainant is the originator and organizer of a number of world and European soccer championships, including in particular the world soccer championship known as the FIFA World Cup.
Respondent has registered the domain name <wm2006.biz>.
5. Partiesí Contentions
The Complainant asserts that:
Having been widely promoted to members of the general public, and having exclusively identified FIFA as well as its famous international soccer championship, the "WM 2006" trademark symbolizes the tremendous goodwill associated with FIFA and is a right of incalculable value.
It is incontestable that the Domain Name is identical to the "WM 2006" trademark.
The Domain Name is furthermore also confusingly similar to certain other trademarks of Complainant. The fact that the trademarks at issue are still pending applications does not lessen Complainantís rights, especially since a Complainant has been using the acronym "WM 2006" since a long time before the Domain Name was registered.
Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to apply for or use any domain name incorporating its trademarks. Respondent has never been commonly known under the Domain Name.
Respondent has not used or made 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.
Respondent has registered the Domain Name in bad faith. As the Domain Name incorporates the famous trademark "WM 2006", when registering the Domain Name, Respondent clearly knew of Complainant, of Complainantís activities, and of the FIFA World Cup to be held in 2006 in Germany.
Respondent could provide alternative information about soccer events and about the FIFA World Cup by using a domain name that is not identical to the Complainantís trademark.
The Domain Name creates a likelihood of confusion with Complainant and its trademarks.
It is obvious that the Domain Name has no value apart from its connection with Complainantís FIFA World Cup tournament. There is no justification or excuse for Respondentís unauthorized registration of the Domain Name.
When registering the Domain Name, Respondent was notified by an email from NeuLevel Inc. that the Domain Name matched one or more Intellectual Property Claims that were received by the .BIZ registry. By choosing to proceed with the registration of the Domain Name, Respondent deliberately decided to disregard Complainantís trademark rights. Such an action can only be considered as blatant bad faith.
The Respondent has not submitted a response, and is thus in default. However, Respondent has made two e-mail communications to the Center after receiving the Complaint, assuring that he would contribute to the transfer of the Domain Name to Complainant. Due to the special circumstances related to the .biz domain names-routines, the parties did not succeed with the transfer of the Domain Name.
The Panel will take the contents of the e-mail communications between the Respondent and the Complainant into consideration when deciding the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the STOP lists three circumstances that the Complainant has the burden of proving are present in order to succeed with the administrative proceeding:
i. the domain name is identical to a trademark or service mark in which the complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of such domain name; and
iii. the domain name has been registered in bad faith or is being used in bad faith.
6.1 Identity to a trademark or service mark in which the Complainant has rights
Complainant has not presented any copies of trademark registrations. However, as the Complainant has presented sufficient proof of trademark rights established by use, the Panel finds that the Complainant has rights to the trademark WM 2006.
The domain name at issue is <wm2006.biz>.
The Panel considers that the suffix .biz does not influence on the consideration of similarity, and so the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
6.2 Rights or legitimate interests in the Domain Name
The Panel has considered the allegations by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
There is no relationship between the Complainant and the Respondent. The Complainant has not licensed Respondent to use its trademark, and no other permission or consent has been granted the Respondent to use the Complainantís trademark or to apply for any domain name incorporating this mark.
The Panel is basing this discussion on the Complainantís assertion that Respondent has not used or made any preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Respondent has stated to the Complainant that he is willing to transfer the Domain Name, and has not presented any arguments of rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration or use in bad faith
The Panel has considered Complainantís allegations and evidence with regard to the Respondentís registration of the Domain Name in bad faith.
Complainant has put forward evidence that its trademarks are well known. In addition, the Respondent was informed of the Complainantís alleged trademark rights when registering the Domain Name. The Panel finds that Respondent when registering the Domain Name knew of the Complainantís trademarks.
The mere registration of the Domain Name is not evidence that Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring it to the Complainant or a competitor of the Complainant.
However, as the Respondent continued the registration of the Domain Name in spite of his knowledge of the Complainantís rights, this can be considered an attempt to prevent the Complainant from reflecting its mark in a corresponding domain name as well as for the purpose of disrupting the business of a competitor.
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register the Domain Name in bad faith. In addition, Respondent did not use the opportunity he had during the e-mail correspondences regarding the transfer of the Domain Name to present any arguments disproving registration in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered the Domain Name in bad faith.
The Panel has found that the Domain Name <wm2006.biz> is identical to a trademark in which the Complainant has rights, and that the Respondent has no rights to or legitimate interests in the Domain Name. The Panel further finds that the Domain Name has been registered in bad faith.
Accordingly, pursuant to Paragraph 4(i) of STOP and Paragraph 15 of the STOP Rules the Panel decides that the Domain Name <wm2006.biz> be transferred to the Complainant.
Peter G. Nitter
Dated: October 7, 2002