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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fédération Internationale de Football Association (FIFA) v. Perfect Privacy, LLC / Sullivan Media Group

Case No. D2021-0622

1. The Parties

The Complainant is Fédération Internationale de Football Association (“FIFA”), Switzerland, represented by Corsearch B.V., Netherlands.

The Respondent is Perfect Privacy, LLC, United States of America (the “United States”) / Sullivan Media Group, United States.

2. The Domain Name and Registrar

The disputed domain name <fifaplus.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2021.

The Center verified that the Complaint together with the amended 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 March 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on April 12, 2021. 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 the international governing body of football, founded in 1904. It is the organizer of major international football tournaments including the FIFA World Cup.

The Complainant is the owner of numerous trademark registrations for the mark FIFA including, for example, International Trademark number 633108 for the word mark FIFA, registered on February 22, 1995.

The Complainant is also the owner of domain names including <fifa.com>, registered on August 9, 1995, from which it operates its principal website, and <fifa.org>, registered on January 11, 1995.

The disputed domain name was registered on October 2, 2018.

The disputed domain name has resolved to a website at “www.fifaplus.com”. According to evidence submitted by the Complainant, the website has included what appear to be pay-per-click (“PPC”) links to FIFA branded merchandise as well as other links to casino and slot machine services.

5. Parties’ Contentions

A. Complainant

The Complainant states that its federation includes 211 national associations and that its goal is the consistent improvement and promotion of the game of football. It states that the FIFA World Cup, which commenced in 1930, is the world’s largest single-sport event and one of the most watched sports competitions.

The Complainant submits that the disputed domain name is confusingly similar to its FIFA trademark. It states that the disputed domain name includes that trademark in its entirety, together with the descriptive term “plus”, which is incapable of distinguishing the disputed domain name from its trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its FIFA trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant contends that the Respondent’s use of the disputed domain name for the purpose of a PPC website cannot constitute bona fide commercial use, as the website fails to make clear that it is unconnected with the Complainant.

The Complainant submits that the disputed domain name was registered and has been used in bad faith. It states that the Respondent has used the disputed domain name to offer FIFA branded merchandise related to the Complainant and it is obvious therefore that the Respondent had the Complainant’s trademark in mind when it registered the disputed domain name. Moreover, the Respondent has used the disputed domain name to mislead Internet users and to attract PPC traffic to its website, and to benefit unfairly from the Complainant’s goodwill, by creating an association between the disputed domain name and the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has longstanding registered trademark rights in the mark FIFA. The disputed domain name wholly incorporates that name together with the dictionary word “plus”, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.

In certain limited circumstances, it may be permissible for a registrant to use a domain name which incorporates another party’s trademark for the purpose of reselling that trademark owner’s goods. The criteria accepted by UDRP panels for such legitimate use are set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and are further discussed in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Those criteria include the requirement that the website must only offer the trademarked goods or services, and that it must accurately and prominently disclose the registrant’s relationship with the trademark holder. The Panel finds that the Respondent’s website meets neither of these criteria, since it offers links to gambling services unrelated to the Complainant and includes no disclaimer or other indication that it is unconnected with the Complainant.

 

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In view of its use of the disputed domain name to offer links to FIFA branded merchandise connected with the Complainant, the Panel infers that the Respondent must have been aware of the Complainant and its trademark when it registered the disputed domain name.

The Panel further finds that the disputed domain name clearly implies a connection with the Complainant and is therefore inherently misleading.

While this factor alone precludes a finding that the disputed domain name has been used for legitimate purposes, the Panel repeats its findings above that the Respondent’s website has offered PPC links to gambling services unconnected with the Complainant and has failed to make clear its lack of any commercial association with the Complainant.

In the absence of any legitimate use of the disputed domain name, the Panel accepts the Complainant’s contention that the Respondent has used the disputed domain name to mislead Internet users into visiting its PPC website based on a misrepresentation of a connection with the Complainant. Specifically, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <fifaplus.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: April 15, 2021

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