WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FC Bayern München AG v. Peoples Net Services Ltd.

Case No. D2003-0464

 

1. The Parties

The Complainant is FC Bayern München AG, of Munich, Germany, represented by Beiten Burkhardt Goerdeler of Germany.

The Respondent is Peoples Net Services Ltd., Mr. Sam Rosen, Director, of London, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <bayernmuenchen.net> and <bayernmunchen.net> are registered with Domain Bank.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 16, 2003. On June 18, 2003, the Center transmitted by email to Domain Bank a request for registrar verification in connection with the domain names at issue. On June 19, 2003, Domain Bank transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Response was filed with the Center on June 24, 2003.

The Center appointed Peter G. Nitter as the sole panelist in this matter on July 1, 2003. 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.

 

4. Factual Background

The Complainant is FC Bayern München AG, a stock corporation which since 2002, operates the soccer activities of FC Bayern München e.V., a registered association founded in 1900.

All trademarks and name rights formerly held by FC Bayern München e.V. were transferred to FC Bayern München AG January 5, 2002.

The Complainant has activities in all major sports, but is particularly known for its football team. The football team Bayern Muenchen is one of the most successful teams in the world and the most famous team in Germany.

The Complainantís trademark FC BAYERN MÜNCHEN E.V with the club logo forms the subject-matter of trademark registrations in about 30 countries. Among these is a registration in the UK (register no. 2004623) with a priority date of November 4, 1994, inter alia registered for numerous merchandising goods and printed matter, and a Community Trademark CTM000494187 with a priority date of November 23, 1998.

The Complainant uses the trademarks by granting the right to use the trademark to a third party (licensing). The licensees produce and distribute a wide variety of products with the trademarks.

 

5. Partiesí Contentions

A. Complainant

Confusingly Similar

BAYERN MÜNCHEN is the specifying part of the club logo. Apart from the specifying part, the logo contains two descriptive elements: "FC" is the abbreviation for "football club" and "e.V." stands for "registered association".

BAYERN MÜNCHEN is also the name of the Complainant.

The Complainant has a worldwide reputation and is also very well-known in the UK.

A study done by a consulting firm presented by the Complainant concluded that the Complainant is in the Top Ten of the worldís best-known and most valuable brand names in sports.

As the letter (umlaut) "ü" is not used outside Germany, the common international way to spell words with umlauts is to replace the "ü" by "ue", so that it reads "Bayern Muenchen". This in particular applies to domain names, as umlauts cannot be used in domain names. Sometimes, the dots on the "ü" are overlooked, and the "ü" is simply replaced by a "u", so that it reads "Bayern Munchen". Both ways to spell the name are common and widely used.

The Complainant is also the registered owner of numerous international Internet domains which contain its name, for example these which are most similar to the domain name in dispute:

<bayernmuenchen.com>
<bayernmuenchen.de>
<bayern-muenchen.com>

The domain names <bayernmuenchen.net> and <bayernmunchen.net> are nothing but the international spelling of "Bayern München" and thus identical to the specifying part of the numerous trademarks of the Complainant used worldwide.

No Rights or Legitimate Interests

The Respondent has no legitimate right to use the disputed domain names.

The Respondent is not commonly known by the domain names.

The Respondent offers email services, where the user can choose from "hundreds of domain names". The Respondent offers approximately 1600 domain names, including several which includes the word "football" etc.

With the commercial service provided by the Respondent, any user who is willing to pay the fees may use an email address with any of the domain names as the last part of an emailadress. Accordingly, the Respondent also offers email addresses like john@bayernmuenchen.net and tickets@bayernmuenchen.net.

The use of such email addresses may lead to considerable confusion as it appears to be an official email address of the Complainant itself. The use of such email addresses is beyond the control of the Complainant and endangers the reputation of the name and trademarks of the Complainant.

The Respondent also makes use of the well-known name for his own business activities. Any user who enters the sites at the disputed domain names is led to the web page of the Respondent, on which he offers his commercial service. This is an obvious attempt to divert customers and fans of the Complainant to promote the business of the Respondent.

Bad Faith

The domain names clearly refer to the Complainant as the famous soccer club.

When registering the domain names, it was of course known to the Respondent that these domains use the name of the world-famous soccer club. The Complainant is also famous in the UK.

The Respondent is familiar with football, as his other football domains demonstrate.

The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark and name as to the sponsorship, affiliation, or endorsement of the Respondentís web site or the services constituting the Respondentís business activities. The Respondent hoped that soccer fans would want to use an email address with the name of their favorite club, and thus attempted to use the famous name of the Complaint for his own profit.

B. Respondent

Confusingly Similar

The Complainant may have registered trademarks identical to the disputed domain names for Football Club purposes and associated activities only.

The disputed domains mean Bavaria Munich and are therefore generic in nature like Paris France or London England.

The Respondent never sought to use the domains in any connection with the Complainantís business or other activities.

Rights or Legitimate Interests

The Respondent has full rights over the disputed domain names as they are generic in nature and in the public domain in so far as they relate to geographical place names.

Bad Faith

The disputed domain names have never nor will ever be used in bad faith. They are currently used to provide e-mail addresses to our customers of "www.Okmail.com". There has never been an offer by the Respondent to sell or otherwise transfer the domains to the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests, which a complainant must satisfy in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar 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 and is being used in bad faith.

A. Identical or Confusingly Similar

The domain names in dispute are <bayernmuenchen.net> and <bayernmunchen.net>.

The Complainantís trademark is FC BAYERN MÜNCHEN E.V with the club logo is registered in about 30 countries. Among these, there is a registration in the UK (register no. 2004623) with a priority date of November 4, 1994, and a Community Trademark CTM000494187 with a priority date of November 23, 1998.

The two descriptive elements in the trademark: "FC" which is the abbreviation for "football club" and "e.V." which stands for "registered association" can not be taken into account.

The conclusion is that the disputed domain names both are confusingly similar to Complainantís registered trademarks.

B. Rights or Legitimate Interests

The disputed domain names contain geographical place names. But in the Panelís opinion the name BAYERN MÜNCHEN has a secondary meaning, namely the famous soccer club of the Complainant.

The Respondent is not commonly known by the domain names.

The Respondent uses the well-known name BAYERN MÜNCHEN for his own business activities, which has no connection to the geographical areas Bayern or München. The Respondent offers commercial email services on the sites which the domain names leads to. The Panel finds that this is an attempt to divert Internet users for commercial gain.

A user who enters the Respondentís sites can choose from a large number of domain names. A user who pays the fees can use an email address with any of the domain names as the last part of an email-address. The Respondent offers email addresses like tickets@bayernmuenchen.net, which may lead to considerable confusion as it appears to be an official email address of the Complainant itself.

The Respondent has no right or legitimate interests to use the disputed domain names.

C. Registered and Used in Bad Faith

There is no evidence that the Respondent has offered to sell or otherwise transfer the domains to the Complainant.

However, the domain name include the well-known name of the Complainant and the well-known trademarks of the Complainant.

When registering the domain names, this must have been obvious to the Respondent, as the Complainant is also famous in the UK. It is likely that the Respondent is familiar with football, as he has several other football domains, but even if this was not the case it would be likely that he knew about the Complainant and the Complainantís trademarks.

The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site by creating a likelihood of confusion with the Complainantís mark and name as to the sponsorship, affiliation, or endorsement of the Respondentís web site or the services constituting the Respondentís business activities.

The Panel finds that the domain names were registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bayernmuenchen.net> and <bayernmunchen.net> be transferred to the Complainant.

 


 

Peter G. Nitter
Sole Panelist

Dated: July 15, 2003