WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Internationale de Football Association (FIFA) v. Seo Jae Woo
Case No. D2010-1717
1. The Parties
Complainant is Fédération Internationale de Football Association (FIFA) of Zurich, Switzerland, internally represented.
Respondent is Seo Jae Woo of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <fifa11.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2010. On October 11 and 12, 2010, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2010, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On October 13, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. Complainant submitted a request that English be the language of the proceeding on October 13, 2010. Respondent did not respond to the Center’s Language of Proceeding notification. On October 20, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on November 10, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 18, 2010. 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
Complainant is the world governing body of the association of football and the organizer of all world championship football tournaments, including the world famous FIFA World Cup tournament. The FIFA World Cup is the largest single sporting event in the world, involving 204 different countries. Complainant staged the first FIFA WORLD CUP tournament in 1930 and since that time, it has staged them regularly every four years. Complainant invests millions of dollars in the organization of each tournament, owns hundreds of trademark registrations for the FIFA mark throughout the world, and draws billions of TV viewers for its tournaments.
Complainant’s successful commercial program relies significantly on its ability to attract licensees for the right to use its FIFA and FIFA World Cup trademarks and to associate with Complainant and the FIFA World Cup. Complainant has licensed the FIFA name to EA Sports for a series of association football video games that are released annually. Since 1993, EA Sports has published 18 games, all containing the name FIFA followed by either a two or four digit number representing the year of the relevant tournament. Since 2005, the games have been consistently identified as FIFA, followed by a two digit number representing the year of the tournament (i.e., FIFA 09, FIFA 10, FIFA 11).
5. Parties’ Contentions
Complainant argues that: (i) the Disputed Domain Name is identical and/or confusingly similar to a mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith.
Regarding the first element, Complainant contends that the Disputed Domain Name incorporates its world famous FIFA trademark in its entirety. It also contends that the addition of “11” in the Disputed Domain Name does not diminish the confusingly similar nature of the domain name. Rather, it increases the level of confusing similarity through association with the annual football video games that are named “FIFA + year” that are released under license from Complainant. Thus, Complainant contends that the Disputed Domain Name is identical and/or confusingly similar to trademarks in which it has rights.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that Respondent has failed to make any active use of the Disputed Domain Name and that it is not aware of any demonstrable preparations to use the Disputed Domain Name. Complainant also contends that to the best of its knowledge, Respondent has never been commonly known by the Disputed Domain Name or a name similar to the Disputed Domain Name nor has Respondent acquired trademark or service mark rights in the said domain name. Complainant also argues that it did not grant Respondent any license nor authorization to use the FIFA mark in a domain name.
Complainant further contends that Respondent is using the Disputed Domain Name for commercial gain and for the purpose of capitalizing on the fame of Complainant’s marks.
Regarding the third element, Complainant argues that Respondent registered the Disputed Domain Name in bad faith because Respondent knew, at the time he registered the Disputed Domain Name, that a FIFA 11 video game would eventually be released and that he intended to copy the same. In support, Complainant cites to the fact that the advertisements on the landing page of the Disputed Domain Name concern football and video games. Complainant argues that the foregoing demonstrates not only that Respondent registered the Disputed Domain Name in bad faith, but also that it was being used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, Complainant submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. In view of the fact that Respondent’s Disputed Domain Name displays content that is entirely in English and that Respondent chose not to participate or submit any reply to this proceeding either in English or Korean, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
6.2 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in the registered FIFA trademark. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant’s FIFA mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, it is clear that the Disputed Domain Name is composed entirely of Complainant’s FIFA mark. Additionally, the Panel concurs with the decision in ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, as cited by Complainant, which held that the use of a number following the name “worldcup” and used for the purpose of representing the year of a particular FIFA tournament, does not affect, in the minds of consumers, the association of the word with Complainant.
Further, the Panel finds and concurs with Complainant’s argument that the addition of the number “11” in the Disputed Domain Name functions to confirm if not heighten an association between the Disputed Domain Name and Complainant given the past uses of the FIFA mark followed by a number to indicate the year of a particular tournament.
Finally, the Panel finds that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identity or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its FIFA trademark in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to sponsor links is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of the Disputed Domain Name, but is using the domain name to attract Internet users to Respondent’s website and then providing links to other sites, some of which have little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant has submitted evidence that Respondent may be deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore accepts that Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Further, Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant’s websites and/or from its authorized licensee’s websites to its own website at the Disputed Domain Name, and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.
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 name <fifa11.com> be transferred to Complainant.
Andrew J. Park
Dated: December 2, 2010