WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FC Bayern München AG v. Reed Rick, luwei duichengduo
Case No. D2016-0060
1. The Parties
The Complainant is FC Bayern München AG of Munich, Germany, represented by Taylor Wessing, Germany.
The Respondent is Reed Rick, luwei duichengduo of Fulemuhuayuan, South Australia, the United States of America ("US")1.
2. The Domain Name and Registrar
The disputed domain name <thebayernmunichsoccershop.com> (the "Domain Name") is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2016. On January 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 13, 2016, 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.
On January 14, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 14, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 12, 2016.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 22, 2016. 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, FC Bayern München AG, is a German company operating the activities of FC Bayern Muenchen, one of the most successful and famous football teams in the world. The Complainant holds a number of registrations for the trademark FC BAYERN MUNCHEN worldwide, inter alia, International Registration No. 797796, a figurative mark incorporating the football club logo with words of "FC Bayern Munchen". The trademark was registered on December 13, 2002 designating goods in class 25 amongst others. The Complainant also holds US Registration No. 2060257 with regard to the same figurative trademark in class 25 among others which was registered on May 13, 1997 by F.C. BAYERN MUNCHEN E.V. and assigned to the Complainant on February 18, 2005.
The Domain Name was registered on October 12, 2015 and is being used to distribute jerseys at the time of this decision.
5. Language of the Proceeding
As confirmed by the Registrar, the language of the Registration Agreement is Chinese. The Complainant however requested English to be the language of the proceeding for the following reasons:
(a) The Respondent is located in the US and has sufficient ability to communicate in English;
(b) The Domain Name resolves to a website exclusively in English;
(c) The Domain Name consists, apart from the trademark BAYERN MUNICH, exclusively of English terms;
(d) The Complainant is not able to communicate in Chinese. Using Chinese as the language of the proceeding will cause undue delay to the proceeding whilst incurring substantial translation expenses to the Complainant.
No agreement has been reached between the Complainant and the Respondent with regard to the language of the proceeding.
Paragraph 11 of the Rules enables the Panel to decide the language of the proceeding within its discretion. The Panel is expected to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred, the possibility of delay in the proceeding in the event translations are required, and other relevant factors.
While satisfied with the Complainant's contentions as to use of English as the language of the proceeding, the Panel also notes that the Respondent has been given a fair opportunity to comment on the language of the proceeding but did not do so. Considering these circumstances, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
6. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's trademarks. The Complainant owns the well-known trademark registrations for FC BAYERN MUNCHEN. The distinctive element of the Domain Name is identical to the Complainant's trademarks and the different elements are only descriptive additions. Registration and use of the Domain Name causes confusion to relevant consumers.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a customer, retailer or licensee of the Complainant. Its use of the Domain Name for an online shop providing counterfeit products does not provide the Respondent with a legitimate interest in using the Domain Name, neither does it constitute a bona fide offering of goods or services. Besides, registration and use of the Domain Name by the Respondent infringes the Complainant's trademark rights.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The mere registration of the Domain Name that is highly similar to the Complainant's famous trademarks shows bad faith. The Respondent is using the Domain Name to attract Internet users to the website of the Domain Name and products by creating a likelihood of confusion with the Complainant's trademarks as to the source of the website and products.
The Respondent did not reply to the Complainant's contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant's registered trademarks provided in the record are figurative marks incorporating the football club logo with the words of "FC Bayern Munchen". The Panel is satisfied that the Complainant has successfully established its rights in FC BAYERN MUNCHEN. The Domain Name, <thebayernmunichsoccershop.com>, apart from the generic Top-Level Domain ("gTLD") suffix ".com", consists of the distinctive element "bayernmunich" and generic words "the", "soccer" and "shop". Noting that "Munich" is the English equivalent of the German city München, the Panel finds that the omission of "FC" or the addition of the generic words "the", "soccer" and "shop" in the Domain Name is not sufficient to avoid confusing similarity, in particular that the Complainant's trademarks are well-known worldwide. See FC Bayern München AG v. Peoples Net Services Ltd., WIPO Case No. D2003-0464; Ik Investment Partners Norden AB v. Paul Chibros, WIPO Case No. D2014-0438.
As such, the Panel holds that the Domain Name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not a customer, a retailer or a licensee of the Complainant. The Complainant further alleges that the Respondent is using the Domain Name to offer a wide range of counterfeit products while stating it is the official online store of the Complainant precludes the Respondent from a bona fide offering of goods or services under paragraphs 4(c) of the Policy.
The Panel is satisfied that the Complainant has made out a prima facie case, and the burden of production is hence shifted to the Respondent to demonstrate its rights or legitimate interests in the Domain Name. Failure of the Respondent to rebut the Complainant's prima facie case enables the Panel to infer that the Respondent has no rights or legitimate interests in the Domain Name.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant alleges that its trademarks FC BAYERN MUNCHEN are so well-known that the Respondent knew or should have known of the Complainant's trademarks when registering the Domain Name. The Panel believes that the Respondent was well aware of the Complainant's trademarks which is evidenced by its use of the Domain Name to distribute the products bearing the Complainant's trademarks. While being well aware of the Complainant's distinctive trademarks, the Respondent incorporated it in the Domain Name, amounting to bad faith in the registration. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
As contended by the Complainant and verified by the Panel, the Domain Name is being used to distribute the products bearing the Complainant's trademarks with a prominent statement of being the official online store of the Complainant on the website of the Domain Name. The Panel holds that by incorporating the Complainant's trademarks in the Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, and that the Internet users are likely to be confused into thinking that the Domain Name has connection with the Complainant, which is contrary to the fact.
To conclude, the Panel holds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <thebayernmunichsoccershop.com>, be transferred to the Complainant.
Jacob (Changjie) Chen
Date: March 7, 2016
1 The location of the Respondent is taken from the WhoIs records as provided by the Respondent to the Registrar. The Panel notes that "Fulemuhuayuan, South Australia" does not exist in the US.