WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Futbol Club Barcelona v. Javier Garcia de Leániz
Case No. D2017-1308
1. The Parties
The Complainant is Futbol Club Barcelona of Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Javier Garcia de Leániz of Madrid, Spain, self-represented.
2. The Domain Name and Registrar
The disputed domain name <barça.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 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 Complaint was submitted in the Spanish language. The language of the Registration Agreement for the disputed domain name is English. On July 13, 2017, the Center sent a communication regarding the language of proceeding in both Spanish and English to the Parties. On July 13, 2017, the Complainant submitted a request for Spanish to be the language of proceeding. On July 18 and July 19, 2017, the Respondent submitted a request for English to be the language of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017. On August 3, 2017, the Respondent filed a request for an extension to file the Response. On August 8, 2017, in accordance with paragraph 5(b) of the Rules, the Center granted an automatic four calendar day extension. The Response was filed with the Center on August 11, 2017. The Complainant filed a supplemental filing on August 14, 2017 and September 5, 2017. The Respondent filed a supplemental filing on August 15, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 29, 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.
4. Factual Background
The Complainant is Futbol Club Barcelona, a professional football club based in Barcelona, Catalonia, Spain. The Complainant was founded in the year 1899 and is commonly known as Barcelona or as Barça.
The Complainant is the owner of several trademarks registrations in Spain and the European Union for BARÇA, BARÇA (and design), CANAL BARÇA (and design), GENT DEL BARÇA, BARÇA TV, CAFÉ BARÇA, BARÇA TOONS (and design), BARÇA SHOWTIME, FORÇA BARÇA, BARÇA FANS, and BARÇA FANS FCB (and design).
The trademark BARÇA was originally registered with effects in Spain since the year 1974. The trademark BARÇA and its variations are widely used since then.
In addition, the Complainant is the owner of the domain names <barça.team> registered on September 28, 2015, <barça.cat> registered on February 14, 2006 and <barça.football> registered on May 26, 2015.
The Respondent is currently resident of the United States of America ("United States"). At the time the Respondent registered the disputed domain name, he was a resident of Spain. The disputed domain name is not in use.
The disputed domain name <barça.com> was registered on February 26, 2001. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant states that "Futbol Club Barcelona" is a world renown Catalan soccer team also known as "Barça" or the "Blaugrana" team. The club was founded in Barcelona in the year 1899.
The Complainant has currently a total of 153,458 members, being the second largest soccer club, per members in the world. According to the Complaint, the well-known character of the Soccer Club is also recognized by the number of followers it has on social networks, Twitter: 21.5 million followers; Facebook: 102,446,022 followers, and Instagram: 50,7 million followers.
In the year 2009 the Complainant became the first Spanish club to win the continental treble consisting of La Liga, Copa del Rey, and the UEFA Champions League, and also became the first Spanish football club to win the main six soccer competitions in a single year, by also winning the Spanish Super Cup, UEFA Super Cup and FIFA Club World Cup. According to the International Federation of Football History & Statistics (IFFHS), the Complainant is the best European soccer team of the first decade of the XXI century.
The Complainant is the owner of trademark BARÇA registered in Spain, the European Union, and other jurisdictions. The Complainant's trademarks are listed in Annex 4 of the Complaint and it is 84 pages long.
According to the Complaint, the Complainant's trademarks are well-known not only in Spain but also in the rest of the world, as recognized in several UDRP cases cited in the Complaint.
The Complainant states several additional factors to prove the fact that the Complainant's trademarks are well-known: the Complainant is member of the Foro de Marcas Renombradas Españolas (FMRE) and the sponsors of the Complainant are also all well-known trademarks like Nike, Qatar Airways, Beko, Gillette, Konami, Estrella Damm, CaixaBank, Etisalat, and Audi.
The Complainant asserts that the disputed domain name is identical to the trademarks of the Complainant. The only difference is the generic Top-Level Domain ("gTLD") ".com".
With respect to rights and legitimate interests, the Complainant states the following:
- The Respondent is not the owner of trademarks or a trade name to justify the registration of the disputed domain name. The Complainant made a search at TMview ("www.tmdn.org/tmview") to prove this assertion.
- The Respondent is not conducting a legitimate activity using the disputed domain name, at the time of filing the Complaint, nor before.
The Respondent does not have any relationship with the Complainant, nor has been authorized by the Complainant to register or use the disputed domain name.
- A search in the Internet of the term "Barça" has shown only the Complainant entity. Prima facie the Respondent does not have any rights or legitimate interests in the disputed domain name. The burden of proof is initially on the Complainant but the burden shifts to the Respondent to demonstrate what rights or legitimate interests he may have in the disputed domain name.
With respect to bad faith, the Complainant states the following:
- The Respondent registered the disputed domain name containing a well-known trademark.
- Knowledge of the trademark by the Respondent can be inferred from the fact that the trademark is well-known.
- The Complainant's trademarks have a worldwide reputation.
- The disputed domain name does not contain any content. The Complainant states that this is a passive holding case citing several UDRP cases that held that passive holding amounted to bad faith registration and use in similar situations.
The Complainant request as a remedy the transfer of the disputed domain name.
The Respondent states that none of the Complainant's trademarks provides rights to the Complainant over the disputed domain name. According to the Respondent, the disputed domain name was registered on February 26, 2001. The Respondent argues that the trademarks of the Complainant were all registered after the registration of the disputed domain name, and that some of those trademarks were registered as many as 16 years after the registration of the disputed domain name.
The Respondent states also that the Complainant claims to own certain trademarks (Spanish trademark 1123920 BARCA and Spanish trademark 3110493 BARCA), but has not provided any evidence that those trademarks exist.
With respect to the Complainant's Spanish trademark No. 1105388 BARCA MES QUE UN CLUB, the Respondent states that such trademark contains five words, only one of which is similar to the disputed domain name, and that the word "barca" in such trademark is not using the letter "ç" in the trademarks.
The Respondent also states that "at the time the Respondent registered the disputed domain name, he was resident in Madrid, Spain and subject to Spanish Law". According to the Respondent, since the Complainant is located in Barcelona, Spain, then he is subject to Spanish Law.
The Respondent states that the statute of limitations of the Spanish Trademark law (Ley 32/1988, de 10 de Noviembre, de Marcas) applies to this case. Article 39 of the Spanish trademark law (according to the Respondent's translation) provides: "The civil actions derived from the violation of the trademark rights are subject to a statute of limitations of five years, counted from the day on which they could have been exercised". According to the Respondent, the statute of limitations has elapsed and the Complainant cannot exercise any legal action based on their trademarks registered in Spain.
The Complainant has failed to prove that it has any valid trademark or other rights with respect to the disputed domain name <barça.com>.
With respect to rights or legitimate interests in the disputed domain name, the Respondent states that:
- The Respondent has an inalienable legal right to the disputed domain name.
- The Respondent has legitimate interests in respect of the disputed domain name.
- The Respondent bases his legal rights to the disputed domain name in the concept of "Usucaption". This principle of law provides that someone possessing something long enough, subsequently gains irrevocable rights of ownership to it. The Respondent states that Spanish Law is to be applicable to this case.
- Under Spanish law, "usucaption" is known as "prescripción adquisitiva" and enshrined in the section 1955 of the Spanish "Código Civil" which provides that ownership of goods can be acquired by possesing the good for three (3) consecutive years in good faith.
- The Respondent legally acquired the disputed domain name in good faith. However since he acquired the disputed domain name under Spanish law in the year 2001, and has since had uninterrupted possession of it for more than sixteen (16) years, the Respondent has a full, legal and irrevocable right to the disputed domain name, no matter whether the Complainant, or anyone else, may consider it to have been acquired in good faith or bad.
The Respondent states also to have legitimate interests in the disputed domain name based on the following:
- In 2001, the Respondent was planning to open a French themed concept bar. He was inspired by the familiarly known phrase "Comme Ci, Comme Ça" from which he devised the word play: "Bar Ci, Bar Ça". In the end he decided to go with the shorter name "Bar Ça" and subsequently registered the disputed domain name.
- The Respondent states that "...events in his life, however took him in a different direction, but nonetheless he has retained the domain name so he can potentially fulfill his dream in the future".
- The Respondent also states that he "is not able to provide further documentation, but it should be remembered that this was sixteen (16) years ago".
- Under Spanish law, commercial documentation only need be retained for a period of five years, so the Respondent should not be expected to provide documentation for his commercial activities sixteen years ago.
- "bar ça" and "barça" are actually very common names for bars and restaurants. A quick search on Google returns a number of results that the Respondent attaches as evidence.
The Respondent states that the disputed domain name has not been registered and is not being used in bad faith:
- The Respondent has already provided proof of a legitimate reason for registration of the disputed domain name.
- The Respondent was not aware of the Complainant's trademarks when he registered the disputed domain name in 2001 because: (i) he had no interest in football; (ii) he had never visited Barcelona (the Complainant's place of business) prior to when he registered the disputed domain name in 2001; (iii) the language of the Complainant's trademark is Catalan (there is no "ç" character in English or Spanish) and the Respondent does not speak Catalan.
- The Complainant has not provided any evidence showing that: (i) its business has been disrupted; (ii) that it has suffered any serious damage, nor any damage at all; (iii) that there has been any confusion resulting from the Respondent's use of the disputed domain name.
- The Complainant has not provided any evidence that the domain is currently being used or has been used, and therefore bases its entire Complaint on the supposed notoriety of its trademark BARÇA and that the Respondent must have acted in bad faith just for having registered the disputed domain name.
- The only argument which the Complainant could use in this sense to imply bad faith by the Respondent would be to accuse the Respondent of having registered the disputed domain name in order to prevent the Complainant from registering it.
- However, the Complainant does not make this accusation, and furthermore the Complainant could not seriously argue that the Respondent has prevented the Complainant from registering the disputed domain name itself, because the Complainant has not taken any action whatsoever to obtain the disputed domain name during a period of more than sixteen years. For this reason, it is irrelevant whether the Complainant's trademark is considered notorious or not.
- The Complainant cites various cases in support of its cause, but which on further examination are not relevant because the Complainant has cited specific text out of context and ignored the real reasons for the decisions taken.
In addition the Respondent states that:
- The Respondent has not registered and used the disputed domain name in bad faith according to the examples given by the Policy.
- Domain name renewal by itself is not considered bad faith, and that the onus is therefore on the Complainant to prove that the Respondent acted in bad faith when he registered the disputed domain name in the year 2001.
- The Complainant has failed to provide any evidence that its trademark BARÇA was notorious in 2001.
- The Complainant itself does not genuinely believe its trademark BARÇA to be notorious even in the year 2017.
- The Complainant did not consider the Respondent to be acting in bad faith in 2001, when he registered the disputed domain name, nor for many years afterwards.
The Respondent states that the Complainant has made false statements regarding his identity as he is not any of the individuals identified by the Complainant.
The Respondent requests that the Panel rejects the Complaint and to make a judgment of Reverse Domain Name Hijacking under paragraph 15(e) of the Rules.
6. Discussion and Findings
According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:
(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 has been registered and is being used in bad faith.
A. Language of the proceedings
The Registration Agreement in this case is in English but the Complainant filed the Complaint in Spanish and requested that Spanish be the language of the proceeding. The Complainant submitted a request for Spanish to be the language of proceeding based on the following: (i) the identity of both parties in Spain; (ii) the Respondent has a Spanish name and surname (Javier García de Leaniz) and (iii) the Respondent's social network LinkedIn is in Spanish.
The Respondent submitted a request for English to be the language of proceeding. The Respondent states that the Registration Agreement is in English, and according to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. He also adds that he is a United States citizen living in the United States, that he is not the person identified by the Complainant and that he is not living in Madrid.
Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.
The Complaint was submitted in Spanish and the answer to the Complaint was submitted in English with a request also that English be the language of the proceedings.
However, the Respondent was able to answer each of the arguments of the complaint (drafted in Spanish with all the evidence in Spanish). The Respondent is also citing in his answer to the Complaint sections of the Spanish Civil Code and the Spanish Trademark Law in Spanish with English translations. Respondent also stated to have been living in Madrid at the time he registered the disputed domain name. From these circumstances the Panel infers that the Respondent is able to understand Spanish.
In view of all the circumstances, the Panel does not consider it prejudicial to the Respondent if the Complaint will be accepted as filed in Spanish and decides that the decision will be rendered in English. The proceeding would be unduly delayed if the Complaint and annexes thereto had to be translated into English. In keeping with the Policy aim of facilitating a relatively time and cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
B. Supplemental filing
The Complainant has filed unsolicited supplemental filings. The Respondent requested that the supplemental filings be rejected.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO overview 3.0), section 4.6 provides that "panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some "exceptional" circumstance)".
It is the view of the Panel that the unsolicited supplemental filing has to be rejected since there is no exceptional circumstance to allow it.
C. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for BARÇA as noted above.
The disputed domain name <barça.com> is identical to the Complainant's trademark BARÇA. The addition of the gTLD ".com" to the disputed domain name is irrelevant for purposes of assessing confusing similarity with the Complainant's trademark.
The Respondent states that the Complainant did not have valid trademarks granted before the date of the registration of the disputed domain name.
Under the Policy, "where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case" (WIPO Overview 3.0, section 1.2). In this case, the Complainant is the owner of several (Spanish) trademarks containing the term BARÇA. Therefore it is not accurate to state that the Complainant does not have valid trademark rights over the term BARÇA for purposes of the Policy; the timing of the trademark registration is irrelevant under this element.
The Respondent also states that the statute of limitations civil action under Spanish Trademark Law has elapsed and the Complainant should not be able to use its trademarks in this proceeding. However this may be, this is an administrative procedure under the Policy and the Rules and the Panel therefore finds that the Complainant has registered trademark rights in the term BARÇA for purposes of the first element. .
The Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which it has rights.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights and legitimate interests in the disputed domain name. The ways include, but are not limited to:
(i) "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or,
(ii) you (as an individual, business, or an organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or,
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Based on the facts set out above, the Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
There is no evidence in the case file to indicate that the Respondent has been commonly known by the disputed domain name. Even if, as the Respondent says, the Respondent is not any of the specific individuals identified in the Complaint as Javier Garcia de Leániz, the Respondent's name is Javier Garcia de Leániz and he is clearly not commonly known by the disputed domain name.
In addition, according to the evidence provided in the Complaint (Annex 8), the Respondent does not have trademark rights over the disputed domain name.
With respect to the bona fide offering of goods or services, the Respondent stated that in 2001 he was planning to open a French themed concept bar inspired by the familiarly known phrase "Comme Ci, Comme Ça" from which he devised the shorter name "Bar Ça" and subsequently registered the disputed domain name.
The Respondent was not able to provide any further documentation because "....it should be remembered that this was sixteen (16) years ago..." and he is under no obligation under Spanish law to keep documentation for such a long time.
The Policy requires "demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."
The consensus view is that the general standard of proof under the UDRP is "on balance" – often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(b) of the UDRP would typically be insufficient (WIPO Overview 3.0, section 4.2).
Even giving the Respondent the maximum benefit of the doubt (both as to time and as to credibility), the Panel cannot accept his arguments; there is no evidence whatsoever provided by the Respondent to support his allegations.
The Respondent also argues that "bar ça" and "barça" are actually very common names for bars and restaurants. Respondent explains that a quick search on a search engine returned a number of results that the Respondent attached as evidence.
The Panel does not understand how this helps Respondent argument in order to show rights or legitimate interests over the disputed domain name. Even if those search results were correct and accurate, that does not mean that Respondent has made and evidenced in this case demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent also argues that he has had uninterrupted possession of the disputed domain name for more than sixteen (16) years and that section 1955 of the Spanish Civil Code applies to this case allowing him to acquire the disputed domain name by "usucaption".
The Respondent seems to imply that after so many years he is the rightful owner of the disputed domain name whose property he may have acquired by the mere lapse of time according to the cited provision of the Spanish Civil Code.
The Policy does not recognize that a mere delay between the registration of a disputed domain name and the filing of a complaint automatically creates rights over the disputed domain name, or bars a complainant from filing such a case or from potentially prevailing on the merits (See WIPO Overview 3.0, section 4.17). The WIPO Overview 3.0 clearly indicates that "Panels have ... declined to specifically adopt concepts such as laches or its equivalent in UDRP cases" (See WIPO Overview 3.0, section 4.17). Even so, the Respondent has advanced no arguments whatsoever that he has relied on the passage of time to develop a legitimate business at the disputed domain name, indeed the Respondent has no active business, or which may be seen as the Complainant acquiescing to Respondent's claims.
In the opinion of the Panel, the Respondent has not provided relevant evidence demonstrating rights or legitimate interests to the disputed domain name, but has rather tried merely to rely on a self-serving and yet legally unfounded argument and the Panel considers that the second element of the Policy has been fulfilled.
E. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
To be successful, the Complainant must prove that the disputed domain name was registered and used in bad faith.
The Complainant was founded in the year 1899. The Complainant is the owner of numerous trademark registrations that contains the term BARÇA as evidenced by the list provided in Annex 4 of the Complaint. The Complainant is a renowned soccer team not only in Spain but in the rest of the world (Fútbol Club Barcelona v. GRN Serveis Telemátics, S.L., WIPO Case No. D2006-0183; and Futbol Club Barcelona c. Don Basilio Pedreira, WIPO Case No. D2014-1189).
The Respondent argues that the Complainant and its trademarks were not well-known at the time of the registration of the disputed domain name in the year 2001. The Panel is of the view that such assertion is unfounded. The Complainant's trademarks are widely use and were registered and widely known well before the registration of the disputed domain name. Some of the trademarks registrations of the Complainant date back several decades before the registration of the disputed domain name. The Complainant is also more than a century old and ranks as one of the most notorious soccer clubs of the world.
The Respondent has acknowledged that he was residing in Madrid at the time of registration of the disputed domain name. Thus, in light of the well-known character of the Complainant's trademark the Panel is of the view that it is near impossible that the Respondent was unaware of the Complainant's rights in the BARÇA trademark at the time the Respondent registered the disputed domain name.
The disputed domain name was not resolving to an active website at the time of filing. However, the consensus view amongst panelists is that "the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." See section 3.3 of the WIPO Overview 3.0.
In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent's non-use of the disputed domain name is in bad faith. The Panel takes into account the high degree of reputation of the Complainant's trademark, the failure of the Respondent to provide any evidence of actual or contemplated good-faith use of the disputed domain name and the lack of use of the disputed domain name since its registration.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, including those advanced above by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
F. Reverse Domain Name Hijacking
The Respondent has requested a judgment of Reverse Domain Name Hijacking under the Rules, Paragraph 15(e) arguing that the Complainant has not evidenced trademark rights and has not provided any evidence that the Respondent was aware of its trademark in 2001.
Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".
Reverse Domain Name Hijacking is furthermore defined under the UDRP Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name."
As noted previously, the Complainant has registered and has been using its well-known trademark BARÇA wide before Respondent's registration of the disputed domain name. In light of what has been decided in this case, there is no need to issue a finding of Reverse Domain Name Hijacking.
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 <barça.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: September 25, 2017