WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Futbol Club Barcelona v. Ali Mohamedali
Case No. D2017-1257
1. The Parties
The Complainant is Futbol Club Barcelona of Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Ali Mohamedali of Dubai, United Arab Emirates, self-represented.
2. The Domain Name and Registrar
The disputed domain name <fcbarcelona.soccer> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent sent several communications to the Center on July 5, 2017 and July 17, 2017. The Center notified the Parties the commencement of the panel appointment process on July 26, 2017.
On July 27, 2017, DHL notified the Center that the address on the airway bill is incomplete or wrong. (This being the address for the Respondent indicated in the WhoIs details.)
The Center appointed James A. Barker as the sole panelist in this matter on August 1, 2017. 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. The Respondent sent an additional email communication to the Center on August 1, 2017, acknowledging the notification of the Panel’s appointment.
4. Factual Background
The Barcelona Football Club (‘FC Barcelona”) traces its origins back to 1899. One of the hallmarks of the club is its member and fan base, currently reaching 153,458 members, which makes it the club with the second-largest membership in the world. The Complainant has millions of followers on social Networks, including 21.5 million followers on Twitter and 50.7 million followers on Instagram.
The Complainant has a substantial portfolio of registered trademark rights, registered in various classes, including registrations in the jurisdiction in which the Respondent has his address. These include marks incorporating the terms “FC Barcelona” together with the Complainant’s badge, as well as a mark for FCBARCELONA. For instance, the Complainant is the owner of the International Trademark Registration No. 864540 FCBARCELONA, registered on February 16, 2005.
The Complainant also owns various domain names, including <barça.team> and <barça.cat>.
The disputed domain name was registered to the Respondent on August 27, 2015. The disputed domain name does not revert to an active website.
5. Parties’ Contentions
The Complainant says that its marks are well-known and renowned. The Complainant alleges that the disputed domain name is relevantly identical to its registered marks, because the term “fcbarcelona”, which is identical to the Complainant’s mark, is entirely incorporated in the disputed domain name. The addition of the term “soccer” as the Top Level Domain would reinforce a finding of confusing similarity, having regard to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (in particular sections 1.11 and 2.14) and other previous decisions under the Policy.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not own any registered trademarks or any company name that could justify the registration of the disputed domain name. The Respondent does not seem to be carrying out any legitimate activity under the name “fc barcelona”. The disputed domain name does not link to any website content. The Respondent has no relationship with the Complainant and has not been authorized to use the Complainant’s trademarks.
The Complainant also says that the disputed domain name was registered and has been used in bad faith. The Complainant says that the Respondent only registered the disputed domain name for the for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. In this respect, the Complainant points to a “cease and desist” letter it sent to the Respondent on April 2017. In response to that letter, the Respondent pointed to another registration he claimed to hold, which incorporated the Complainant’s trademark, and the Respondent stated that “If your client is interested in purchasing the domain, they are welcome to contact me at anytime.”
The Respondent had further email exchanges with the Complainant. The Complainant claims that, in an email on April 21, 2016, the Respondent stated that:
“1. I am a Domain dealer, but I am looking to establish a relationship
2. You need something from me, I need something from you. In other words, I give the domain to you on one condition, I need assistance in selling my domains listed on [a website address]. Am looking for $400,000 - $450,000.”…
3. I already have offers on your domain of $190,000/-. If I want, I can sell today and be free and clear but I am thinking long term. I also know that FC Barcelona is the second richest Football Club in the world with a value of $3.17 Billion and Yearly revenue of $657 Million.”
After some further emails between the parties, the Respondent again contacted the Complainant in April 2017, offering the disputed domain name and another domain name to the Complainant and, among other things stated “If your client wants these [domain names], atleast [sic] have them make an offer that does not make them look like a football club that is broke or cannot afford these.”
After the notification of the Complaint, the Respondent sent two emails to the Center on July 5, 2017, claiming, among other things that “I registered the domain, but nothing but the right thing with it and pointed it to fcbarcelona.com.” In response the Center noted the potential for proceedings to be suspended for the purpose of exploring settlement options. No request for suspension was made and, as such, the proceedings continued.
On July 17, 2017, the Respondent sent a further email to the Center which included the statement “What I do not understand is, if you want the domain, take it. The domain name is your right as it is your football club name and you will have it. I do not want to use it for my personal gain in anyway as I said. I ask humbly again, pay me for my time and effort and that’s it.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
There is no doubt that the Complainant has registered rights in various registered marks that prominently incorporate the terms FC BARCELONA. These marks were registered before the date of the registration of the disputed domain name in 2015. The Complainant’s rights in its marks have also been recognized in previous proceedings under the Policy, including Futbol Club Barcelona c. Don Basilio Pedreira, WIPO Caso No. D2014-1189. Translations of that decision were referenced in the Complaint.
A starting point for a panelist in considering the general consensus of past panel views on the elements of the Policy, is the WIPO Overview 3.0. The Overview is produced by the Center to summarize consensus panel views on a range of common and important substantive and procedural issues. In relation to the issue of determining confusing similarity, the Overview notes at section 1.7 that the past consensus of panel decisions is that:
“The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
The textual element of the Complainant’s registered marks is FC BARCELONA. This element is entirely incorporated in the disputed domain name, as the first appearing element. Following the consensus test set out above, the disputed domain name is identical to the Complainant’s trademark.
For this reason, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
As further noted in the section 1.11 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The disputed domain name uses the TLD “.soccer”. The Panel has considered the implication of this particularly in relation to the third element of the Policy, discussed further below.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
In this case, the Complainant has made out such a prima facie case against the Respondent, by its evidence and arguments outlined above.
In the face of the Complaint against him, the Respondent has chosen to file no formal response. Correspondence between the parties prior to the filing of this dispute strongly suggests that the Respondent does not have rights or legitimate interests in the disputed domain name. Instead, and as explained further in relation to the discussion of bad faith below, that correspondence suggests to the Panel that the Respondent was motivated primarily by the prospect of selling the disputed domain name to the Complainant, for a price in excess of the Respondent’s out-of-pocket costs. The use of the disputed domain name for this purpose is a clear case of cyber-squatting – for which the primary purpose of the Policy is to provide a remedy.
There is otherwise no evidence in the case file to suggest that the Respondent might have some rights or legitimate interests in the disputed domain name. The Panel also considers that the Respondent lacks such rights or legitimate interests in the circumstances of bad faith, set out below.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that there is evidence of bad faith registration and use of a disputed domain name where there are:
“circumstances indicating that you [the respondent] have registered or you have acquired 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
This is what the Complainant says that the Respondent has done. The Complainant provides evidence of correspondence from the Respondent, in response to a ‘cease and desist’ letter from the Complainant, in which the Respondent offers the disputed domain name (and one other) to the Complainant for USD 400,000-450,000. (Although the evidence of this email was reproduced in the Complaint, rather than attached independently. This contention has not been rebutted by the Respondent in its subsequent emails to the Center. In addition, the case file shows how the Respondent also requested the Complainant to sponsor its website , with a 10-year contract with a cost of “$1000 per month which is $12000 per year”, in exchange for the transfer of the disputed domain name and an additional domain name not included in this case). This is an amount which the Panel considers is self-evidently in excess of any out-of-pocket costs that the Respondent might have incurred in registering the disputed domain name.
There is further evidence that selling the disputed domain name to the Complainant was the “primary” purpose of the Respondent. In particular:
- There was no evidence that the Respondent had made an active use of the disputed domain name, or any other bona fide use of it.
- The Complainant’s marks are well-known.
- The email correspondence to the Complainant from the Respondent clearly indicates that the Respondent was fully aware of the Complainant. For example, the Respondent stated that “I also know that FC Barcelona is the second richest Football Club in the world”. This clearly suggests that the Respondent knew of the Complainant and expected that the Complainant would make a substantial offer for the disputed domain name. The Respondent’s selection of the “.soccer” TLD, as a term directly associated with the Complainant’s business, only reinforces the inference that the Respondent was clearly aware of the Complainant and its marks.
The Panel notes that later correspondence from the Respondent does not suggest otherwise. This includes later correspondence, in July 2017, in which the Respondent requested that the Complainant pay for his “time and effort”. This correspondence does not suggest what the Respondent meant by this. This comment came after the Complainant’s claimed offer from the Respondent’s to sell the disputed domain name for in excess of $400,000. This comment also came after comments by the Respondent such as “If your client wants these [domain names], at least have them make an offer that does not make them look like a football club that is broke or cannot afford these. It is like if you own a Bentley and someone offers you $1000 for it”.From this evidence, the Panel is skeptical that the Respondent was likely to seek no more than his out-of-pocket costs.
Further, the Panel considers that paragraph 4(b)(i) requires that it is the Respondent that must demonstrate his out-of-pocket costs. The Respondent made no such attempt in this case. In the absence of that demonstration, the Panel can only infer that the Respondent was seeking to charge substantially more than that.
There is other evidence which the Panel consider reinforces a finding of bad faith registration and use in this case. These include:
- the Respondent provided inaccurate contact details for his physical address. (As mentioned above, this was evidenced in an email from DHL to the Provider.)
- the Respondent failed to reply to the allegations against him. In these circumstances, and in accordance with paragraph 10 and 14(b) of the Rules, the Panel considers it appropriate to infer that the Respondent has no good reply to those allegations.
- the Respondent appears to operate a website relating to the sale of domain names. The Panel considers that it is reasonable to assume that the Respondent intended for those sales to be at a profit: Dell Inc. v. Pateh Mbowe, WIPO Case No. D2004-0689.
For all these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <fcbarcelona.soccer>, be transferred to the Complainant.
James A. Barker
Date: August 15, 2017