WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Real Madrid Club de Futbol v. Visar Hyseni

Case No. D2017-1118

1. The Parties

The Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Neudomains Digital, Spain.

The Respondent is Visar Hyseni of Mitrovica, Kosovo.¹

2. The Domain Name and Registrar

The disputed domain name <realmadridcastilla.com> 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 June 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 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 June 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2017.

The Center appointed Luca Barbero as the sole panelist in this matter on July 18, 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 a professional football club based in Madrid, Spain. It is the most successful club 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 world’s richest football club in terms of revenue. It established itself as a major force in both Spanish and European football during the 1950s. It was a founding member of FIFA and the
now-ceased G-14 group of Europe’s leading football clubs as well as its replacement, the European Club Association.

The Complainant is the owner of the European Union trademark registration No. 2196392 for REAL MADRID CASTILLA (word mark), filed on April 27, 2001 and registered on October 22, 2002, in classes 16, 25 and 41; and the Spanish trademark registration no. M2666771 for REALMADRID CASTILLA (figurative mark), filed on August 17, 2005 and registered on February 9, 2006, in class 41.

The disputed domain name <realmadridcastilla.com> was registered on October 23, 2016 and is currently pointing to a Registrar’s parking page with sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is almost identical and confusingly similar to its registered and well-known trademark REAL MADRID CASTILLA, and that the sole addition of the “.com” suffix does not distinguish the disputed domain name in any significant way from the Complainant’s trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because: i) the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark in any manner; iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, hence, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) the Respondent has no prior rights or legitimate interests in the disputed domain name; and v) the Respondent must have known the Complainant’s trademark since it is a well-known and reputed trademark.

The Complainant contends that the disputed domain name was registered and has been used in bad faith since: i) given the well-known character of the trademark REAL MADRID, the Respondent simply could not have been unaware of it; ii) the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith; and iii) the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name according to paragraph 4(b)(ii) of the Policy.

With reference to the use of the disputed domain name, the Complainant states that there is nothing on the website to which the disputed domain name resolves, such as a disclaimer, to indicate that the website is not a Complainant’s official website or is a fan site. The Complainant points out that the Respondent is diverting Internet traffic to its own website, thereby potentially depriving the Complainant of visits by Internet users, and creating a false association between that disputed domain name and the Complainant’s trademark. The Complainant concludes that, since the intentions of the Respondent are evidently to cause initial interest confusion and to exploit that confusion, such a use of the disputed domain name cannot be anything other than abusive.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

(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 rights in the trademark REAL MADRID CASTILLA based on the European Union trademark registration No. 2196392 cited in Section 4 above.

The Panel finds that the disputed domain name <realmadridcastilla.com> is identical to the Complainant’s trademark as it reproduces the trademark in its entirety, with the mere addition of the generic Top-Level Domain “.com”, which can be disregarded for the purpose of assessing identity or confusing similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate that it has rights or legitimate interests in the disputed domain name.

According to the case records, the Complainant has no relation with the Respondent and has not authorized it to use its trademarks or the disputed domain name.

In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name or that the disputed domain name might have been used by the Respondent in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel has noted the Complainant’s contentions regarding the absence of a disclaimer on the Respondent’s website to indicate that the website is a fan site.

In this respect, for purposes of assessing fair use under paragraph 4(c)(iii) of the Policy, a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant’s website. See section 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”),

In the present case, although the Complainant has not provided any evidence of the use of the disputed domain name and the Respondent has failed to submit any comment in this regard, the Panel notes that the disputed domain name currently resolves to a registrar parking page displaying sponsored links. Therefore, the Panel finds that the Respondent’s use of the disputed domain name does not qualify as a genuinely noncommercial fan site apt to support possible Respondent’s rights or legitimate interests in a domain name.

Furthermore, this Panel shares the views of prior UDRP panels who have found that, when a domain name is identical to a complainant’s trademark, “a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner” (see section 2.7.2 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel notes that the Complainant and its trademark REAL MADRID CASTILLA enjoy a strong worldwide reputation, being the Complainant’s football team one of the most famous and successful football clubs in the world. Therefore, the Panel finds that the Respondent could not ignore the Complainant and its trademark at the time of the registration of the identical disputed domain name.

The registration of a domain name that incorporates a complainant’s long-established and widely-known trademark, with no connection to its owner and no evidence whatsoever of any actual or contemplated good faith and legitimate use of the domain name, suggests opportunistic bad faith. See, along these lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103; DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868; and Volkswagen AG v. Hui Min Wang, Wang Hui Min, 王慧敏, WIPO Case No. D2017-0860.

The disputed domain name has been pointed to a parking page provided by the Registrar, displaying sponsored links leading to third-party commercial websites, including a link named “Real Madrid” which advertises websites selling tickets for football matches and related merchandise.

In view of the above, the Panel finds that the Respondent registered the disputed domain name, identical to the Complainant’s trademark, to intentionally attempt to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

Therefore, the Panel concludes that also the requirement prescribed by paragraph 4(a)(iii) of the Policy has been met, since the disputed domain name was 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 <realmadridcastilla.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: August 11, 2017

¹ The reference to Kosovo should be understood to in the context of the United Nations Security Council resolution 1244(1999).