WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Real Madrid Club de Futbol v. Lee Charles (黄登通)
Case No. D2020-0540
1. The Parties
The Complainant is Real Madrid Club de Futbol, Spain, represented by Neudomains Digital, Spain.
The Respondent is Lee Charles (黄登通), China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <realmadrid.club> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, 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 March 11, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 12, 2020, the Complainant confirmed its request that English be the language of the proceeding. On March 13, 2020, the Respondent requested that Chinese be 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”). On March 11, 2020, the Center sent an email communication to the Parties regarding Rules in effect as of 2015.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Respondent sent further email communications to the Center on March 24, 2020. The Response was filed in Chinese with the Center on April 11, 2020.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 23, 2020. 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 one of the world’s richest professional football clubs in terms of revenue, based in Madrid, Spain.
The Complainant is one of the most successful clubs in Spanish football in terms of international and overall trophies, and was voted by FIFA as the most successful football club of the 20th century.
The Complainant is the owner of numerous registrations for its well-known trade mark REAL MADRID (the “Trade Mark”), including European Union registration No. 4302782, with a registration date of January 23, 2006.
The Complainant is also the owner of several domain names comprising the Trade Mark, including <realmadrid.com> and <realmadrid.net>.
The Respondent is an individual located in China.
C. The Disputed Domain Name
The disputed domain name was first registered on December 9, 2014; and was acquired by the Respondent around February, 2020.
D. The Website at the Disputed Domain Name
The disputed domain name is resolved to an English language website offering the disputed domain name for sale and hosted by “www.dan.com”, an entity based in the Netherlands (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondents contends that the disputed domain name is not confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was not registered and is not being used in bad faith.
The Respondent also contends that the Complainant has filed the Complaint without evidence, amounting to an abuse of the UDRP procedure.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including in particular the fact the Website is an English language website; and the disputed domain name comprises Latin script and the English language word “club”.
The Respondent has requested that the language of the proceeding be Chinese, for the following reasons:
(i) The Respondent has a certain understanding of simple English (and the Respondent concedes that the Website is an English language website);
(ii) However, the conduct of this proceeding is likely to involve complex and professional level English; and
(iii) The Respondent is an ordinary individual of limited means, whereas the Complainant is a financially strong organization with the resources to pay for translation services.
In exercising its discretion to use 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.
The Panel considers there is sufficient evidence to support the conclusion that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, and having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filing of the Complaint in English;
(ii) It will accept the filing of the Response in Chinese; and
(iii) It will render this Decision in English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Disregarding the generic Top-Level Domain (“gTLD”) “.club”, it is identical to the Trade Mark.
The Respondent concedes that the disputed domain name is similar to the Trade Mark, but argues that, having regard to the content of the Website, it is not confusingly similar.
The use made of a disputed domain name is not generally considered relevant for the purpose of the first limb, which essentially requires a side-by-side analysis of the textual components of the Complainant’s Trade Mark with the disputed domain name (see WIPO Overview 3.0, section 1.7).
For the foregoing reasons, the Panel finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or 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) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been offered for sale via the Website.
The Respondent, fairly, admits that he does not have any trade marks, “patents”, or products related to the disputed domain name, but argues he nonetheless possesses rights in the disputed domain name, because it was available for public registration, and the Complainant did not register the disputed domain name during the 60-days Sunrise Period for “.club” domain names. The Respondent’s submissions in this regard are undermined by the Respondent’s concession that he did not become the owner of the disputed domain name until 2020.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce sufficient evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
The Respondent accepts that he purchased the disputed domain name for the purpose of investment, in order to obtain profits through selling the disputed domain name. The Respondent also states in the Response that he registered the disputed domain because it has a higher investment value; and that he is aware that Madrid is the largest city in Spain, and that Spain is famous for football, whilst maintaining that he does not know anything about the Trade Mark.
The Respondent claims to have priced the disputed domain name at a price of USD 200, but also contends that, if the disputed domain name is offered for sale at a price lower than USD 1,000 (as opposed to a price more than USD 10,000), such conduct cannot amount to bad faith.
The Panel does not find the Respondent’s submissions convincing. In light of the worldwide repute of the Trade Mark (including in China, where football is a very popular sport, and where there is widespread coverage of Spanish football), and in light of the fact the disputed domain name is identical to the Trade Mark, it is inconceivable that the Respondent was not aware of the Complainant and of its rights in the Trade Mark at the time he obtained the disputed domain name.
The Panel also finds no basis, for the purposes of the Policy, for the Respondent’s submissions regarding the possible sale price of the disputed domain name. In this regard, the Panel notes that the Website does not contain a sale price for the disputed domain name, but instead invites Internet users to make an offer for the disputed domain name.
In any event, paragraph 4(b)(i) of the Policy expressly provides that an offer for sale of a domain name for valuable consideration in excess of a respondent’s documented out-of-pocket costs directly related to the domain name amounts to bad faith. The Respondent has not provided any evidence as to his out-of-pocket expenses directly related to his purchase of the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
The Panel finds that there is no basis whatsoever for:
(i) The Respondent’s unsubstantiated assertion that the filing of this (successful) Complaint by the Complainant amounts to an abuse of the UDRP procedure; and
(ii) The Respondent’s erroneous assertion that the Complaint was filed without evidence to support the Complainant’s claims.
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 <realmadrid.club> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 7, 2020