WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Internationale de Football Association (FIFA) v. Kenneth Berger, Bleukei Pte. Ltd.
Case No. D2021-0467
1. The Parties
Complainant is Fédération Internationale de Football Association (FIFA), Switzerland, represented by Alena Kapachova of Corsearch B.V., Netherlands.
Respondent is Kenneth Berger, Bleukei Pte. Ltd., Singapore.
2. The Domain Name and Registrar
The disputed domain name <fifahospitality.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 19, 2021. Respondent replied that same day stating “We will be in touch with you shortly.” In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2021.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 24, 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.
On March 24, 2021, Respondent emailed the Center requesting an extension of time (for an unspecified duration) to respond to the Complaint, stating that his attorney “only just received the notice of default this week.” On March 26, 2021, Respondent sent an additional email to the Center requesting a 30-day extension, assuring the Center that “my attorney stands ready to respond to the filing,” but requesting assurance that an extension would be granted.
The Panel considered Respondent’s request and issued Administrative Panel Order No. 1 (“Panel Order”), granting an extension of time to April 18, 2021 for Respondent to file a Response to the Complaint and also stating that the Panel’s decision would be delayed until at least April 27, 2021. On March 31, the Center sent the Panel Order to Respondent using the same email address that Respondent used for all his communications with the Center, including Respondent’s request for an extension of time. In response to a subsequent email from Respondent, the Center replied to the same email that Respondent used, attaching another copy of Panel Order and reminding Respondent that he could give the Center an alternative email address if he was having difficulty receiving communications from the Center. Respondent did not do so.
On April 5, 2021, Respondent sent another email to the Center (again using the email address that both he and the Center had used for the earlier communications) and again asked for an extension of time, stating that he had only recently received the written Notice of Complaint and attached a photo of the notice to the email. Respondent did not acknowledge Panel Order granting the extension of time.
Respondent did not file a response by the extended deadline of April 18, 2021.
On April 23, Respondent sent another email to the Center asking about the status of his request for an extension of time.
The Panel finds that Respondent was served with Notice of the Complaint in accordance with the Rules paragraph 2(a), sending, as required by the Rules, written notice to postal-mail address shown in the Registrar’s WhoIs database, and also a digital copy of the Complaint and annexes to the WhoIs email address, which email address Respondent subsequently used for at least five email communications with the Center.
Furthermore, Respondent unquestionably received actual notice of the Complaint. Indeed, in his (second) March 26 email, Respondent assured the Center that “my attorney stands ready to answer the filing . . . ”
The Panel granted Respondent an extension until April 18, 2021, giving Respondent more than 20 days from the latest date of actual notice.
Respondent never acknowledged receiving the Panel Order granting the requested extension of time. The Panel has no information explaining this, but finds that Center more than complied with Rule 2(b) when it sent (twice) the Panel Order, communicating by email with Respondent using the same email address that Respondent used when he sent messages to the Center, including the requests for an extension of time.
The Panel has substantially delayed its decision, affording Respondent ample time to submit a response. In fact, Respondent has had more than 20 days since he sent to the Center a photo of the Written Notice of Complaint he had received.
Respondent has received actual and legally sufficient notice of the Complaint and the applicable dates for a required response, including an extension. He is nevertheless in default. Nonetheless, the Panel will not draw adverse inferences merely from Respondent’s failure to respond the Complaint and will assume that Respondent denies Complainant’s allegations, albeit without any exposition of his position. Accordingly, the Panel has considered the case on the merits, holding Complainant to its burden of proving its allegations.
4. Factual Background
Complainant is the international association governing football founded in 1904.
Complainant owns numerous trademark registrations for FIFA, including Swiss Trademark Registration No. 2P-415299 for FIFA, registered on February 22, 1995 and International Trademark Registration No. 633108 for FIFA word mark in Classes 25 and 28, registered on February 22, 1995.
The Disputed Domain Name was registered on October 27, 2011. The Disputed Domain Name directs to a website that features an image of a soccer player and the FIFA trademark juxtaposed with “HOSPITALITY”. The website invites customers to visit the company, call, or send an email.
On October 12, 2020, Complainant sent a letter to Respondent requesting that Respondent cease using the FIFA trademark and transfer the Disputed Domain Name to Complainant.
Respondent responded that Complainant had no trademark rights in the hospitality field and rejected the request for a transfer without payment, and invited negations with a “commercial person” to determine the “commercial value of the URL registration…”
5. Parties’ Contentions
Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant’s FIFA mark as it includes the entire FIFA mark. Complainant contends that the addition of the term “hospitality” is insufficient to prevent confusing similarity between the Disputed Domain Name and the FIFA trademark. Thus, according to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s FIFA mark.
Complainant further alleges that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent is not commonly known by the Disputed Domain Name, and Complainant has not authorized or licensed Respondent’s use or registration of the Disputed Domain Name. Complainant also contends that Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. According to Complainant, the FIFA mark is not only inherently distinctive, but also famous and widely-known. Complainant alleges that Respondent was fully aware of Complainant’s marks when Respondent registered the Disputed Domain Name. Importantly, Complainant alleges it deduced that Respondent was employed by FIFA Marketing during the years of 2001 – 2003, bolstering Complainant’s argument that Respondent was fully aware of Complainant’s marks when he sought to register the Disputed Domain Name. Further, Complainant alleges that Respondent does not currently provide any hospitality services affiliated with Complainant and that the prominent display of the FIFA trademarks and absence of the information about Respondent (i.e., the company name) on the website creates an actual confusion of being affiliated or associated with Complainant. Finally, Complainant asserts that Respondent’s attempt to negotiate a sale price for the Disputed Domain Name is indicative of Respondent’s bad faith registration and use.
As noted above, despite a time extension and multiple communications from Respondent, and clear opportunities and to do so Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has demonstrated its rights in the FIFA mark by way of its trademark registrations. The Disputed Domain Name incorporates the FIFA mark in its entirety. The addition of the term “hospitality” in the Disputed Domain Name does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has, as set out above, established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized or licensed Respondent’s use of the FIFA mark in the Disputed Domain Name. There is no evidence of record showing that Respondent is commonly known by the Disputed Domain Name. Moreover, there is no evidence that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the Disputed Domain Name in bad faith. When he registered the Disputed Domain Name, Respondent was obviously well aware of Complainant’s rights in the trademark FIFA. In his email communications with Complainant, Respondent does not deny that he worked for Complainant prior to the date he registered the Disputed Domain Name. And given the fame of the FIFA trademark, Respondent cannot credibly claim that he was unaware of Complainant’s rights.
In addition, Respondent asserted in the email negotiations that Complainant’s trademark rights in Singapore did not extend to hospitality services. This assertion backfires, as it simultaneously demonstrates Respondent’s awareness of Complainant’s trademark rights (the foundation of a finding of bad faith registration) and also Respondent’s mistaken belief that Complainant has no rights outside the goods or services listed in trademark registrations. Trademark owners have the right to prevent intentionally created consumer confusion, even if strictly speaking that confusion may arise outside the parameters of the goods and services for which trademarks are explicitly registered. At a minimum, Complainant has the right under the Policy to prevent Respondent from intentionally suggesting to Internet users that Respondent’s website is affiliated with Complainant. This is precisely however, what Respondent aims to do. Respondent displays a photo of a soccer player on his site, thereby encouraging visitors to believe that his site is related to Complainant. The Panel finds that Respondent registered the Disputed Domain Name in bad faith, intending falsely to suggest an affiliation with Complainant.
The Panel also finds that Respondent is using the Disputed Domain Name in bad faith. By using the Disputed Domain Name to invite Internet users to a hospitality service associated with FIFA, Respondent has created a likelihood of confusion with Complainant’s mark in violation of the Policy, paragraph 4(b)(iv).
In addition, the Panel finds that Respondent “acquired the domain name primarily for the purpose of selling it “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Policy, paragraph 4(b)(i). The email negotiations reflect an effort by Respondent to be paid for the “commercial value” of the Disputed Domain Name, touting his “flexibility” and inviting exploratory negotiations with a “commercial person.” Any value in the Disputed Domain Name derives from the “fifa” component. Respondent’s effort to extract payment for that value, which Respondent does not own, is bad faith use.
Complainant has satisfied 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 <fifahospitality.com> be transferred to Complainant.
Lawrence K. Nodine
Date: April 27, 2021