WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Real Madrid Club de Futbol v. Manuel Mateo Peñalver

Case No. D2014-2037

1. The Parties

The Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Luis Guerra, Spain.

The Respondent is Manuel Mateo Peñalver of Las Conquetas, Murcia, Spain.

2. The Domain Name and Registrar

The disputed domain name <realmadrid.website> is registered with 1&1 Internet AG (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 19, 2014. On November 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. The Response was filed with the Center on December 16, 2014.

The Center appointed José Carlos Erdozain as the sole panelist in this matter on December 23, 2014. 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

As considered by the Fédération Internationale de Football Association ("FIFA"), the Complainant is one of the most successful and well known football clubs in the world.

The Complainant is based in the city of Madrid, Spain, and is trademark proprietor of several trademarks including the name "Real Madrid". These trademarks were registered before the disputed domain name ever was. Specifically, the Complainant owns the following trademarks registrations including the name "Real Madrid": CTM 517474 (registration's date effect as of April 18, 1997); CTM 1173574 (registration's date effect as of May 14, 1999).

The Complainant generates a substantial piece of business through the Internet in relation to products including said trademarks and the name "Real Madrid".

The Complainant owns the domain names <realmadrid.com> and <realmadrid.net>, which were registered on September 24, 1998, and on February 8, 1998 respectively.

The disputed domain name was registered October 30, 2014.

The Complainant has not licensed the Respondent to use the trademark REAL MADRID, nor has the Respondent any trademark rights including the name "Real Madrid".

The Respondent has not been known by the name "Real Madrid" before the Complainant registered above-mentioned trademarks.

The disputed domain name resolves to a blank page and is therefore inactive.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

REAL MADRID is a trademark, owned by the Complainant, which was registered before the disputed domain name. The Complaint files several trademark registrations including that name.

The Complainant is one of the best-known football clubs in the world, which has been recognized by international organizations, such as FIFA.

The disputed domain name only differs from the Complainant's trademarks to the addition of the new generic Top-Level Domain ("gTLD") ".website".

The disputed domain name is confusingly similar to the Complainant's REAL MADRID trademarks, as the disputed domain name incorporates said distinctive mark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Complainant has not licensed the use of its trademarks, nor has the Respondent ever been known under the name "Real Madrid".

The Respondent has registered and is using the disputed domain name in bad faith, as the disputed domain name is inactive, and most of all, since the REAL MADRID trademarks can be considered as well-known trademarks.

B. Respondent

The Respondent contends that:

The disputed domain name is not identical, nor confusingly similar to the Complainant's trademarks, the distinctive forms or graphics of the Complainant's trademarks are not reproduced in the disputed domain name.

The Respondent is a modest webmaster, who tries to make a web project activity with no relationship whatsoever with the Complainant's activity or trademarks.

The Complainant could have registered the disputed domain name before he did.

The Respondent has legally purchased the disputed domain name and has legitimate interests in it.

The Respondent is not causing any damage to the Complainant as the disputed domain name is an ongoing project and its registration is a first step.

6. Discussion and Findings

The Panel renders its decision in view of the Policy.

A. Identical or Confusingly Similar

The first element of the Policy is that the disputed domain name is identical or confusingly similar to any of the Complainant's trademarks.

The Complainant has registered CTM 517474 (registration's date effect as of April 18, 1997) and CTM 1173574 (registration's date effect as of May 14, 1999). These trademarks include the words "Real Madrid", on which the Complainant has exclusive trademark rights. Said trademarks registrations are valid and in force to date.

As the Complainant is one of the best-known football clubs in the world, and it has achieved more awards than any other football club, the Panel finds that Complainant's above-mentioned trademarks are well known.

Except for the gTLD ".website", the disputed domain name and the Complainant's trademarks are identical, since the words "Real Madrid" are reproduced with no further additions or modifications of any kind.

A significant number of prior UDRP decisions regarding the requirement of identity or confusing similarity have been produced. In the Panel's opinion, in accordance with previous UDRP decisions, a domain name used by a respondent may be considered identical with a complainant's mark if the former reproduces without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer (see Viacom International Inc. v. Mo-Team, WIPO Case No. D2009-1420).

The addition of the gTLD ".website" is insufficient to avert confusing similarity between the disputed domain name and the Complainant's REAL MADRID trademark. Moreover, due to the activities of the Complainant, the Panel considers that the words "Real Madrid" reproduced in the disputed domain name may be associated with the Complainant. Consequently, in this Panel's assessment, there is a likelihood of Internet users being misled by the disputed domain name into believing that it is related to the Complainant or to the Complainant's activities.

Taking into consideration the above, and the UDRP decisions rendered in similar cases, the Panel concludes that the disputed domain name is identical with the trademarks of the Complainant.

The Panel finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in the disputed domain name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the 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 not acquired trademark 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 trademark or service mark at issue.

If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests on the part of the respondent, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.

The Complainant alleges that the Respondent has never been licensed the use of the trademark REAL MADRID, and that the Respondent is not affiliated with the Complainant whatsoever. Moreover, the Respondent has never been known by the disputed domain name, and has not filed any evidence that he has made a noncommercial use of said name.

The Respondent has not met the burden of proof in relation to any of the circumstances listed above, namely paragraph 4(c)(i), (ii) and (iii). In this regard, the Panel concludes that the Respondent has not submitted any evidence or proof of any of those circumstances (see Casa Tarradellas, S.A. / D. José Tarradellas Arcarons v. Indices de Gestión, S.L., WIPO Case No. D2001-0151; Compaigne Gervais Danone. v. Danup.com, WIPO Case No. D2008-0076). On the contrary, the Complainant has filed trademarks registrations with the name "Real Madrid", which are to-date effective, and has proved that it is one of the most ever successful football clubs in the world in the last decades.

All these circumstances lead the Panel to the conclusion that the Respondent does not have any rights or legitimate interests in the disputed domain name (see Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; and Bayer Akiengesellschaft v. K Dango, WIPO Case No. D2002-0138).

Therefore, the Panel concludes that the second requirement of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy require the Complainant to prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

In this case, the Complainant has evidenced that the trademark REAL MADRID is a well-known trademark when the disputed domain name was registered (one of the Complainant's CTMs, in which the words "Real Madrid" are included, was registered on April 18, 1997, and the other one on May 14, 1999, whereas the disputed domain name was registered on October 30, 2014).

Given the fact that the Respondent is located in Spain and that the Complainant is one of the most famous football clubs not only in Spain but also in the world, it is beyond any doubt that the Respondent had to be aware of the Complainant's activities and services and of the Complainant's worldwide famous trademark REAL MADRID.

The disputed domain name is likewise inactive. In fact, the resolving website just includes a reference to the disputed domain name.

The passive use of a domain name may be considered to conclude that it was registered and is being used in bad faith (see Telstra Corporation Limited. v. Nuclear Marshmallows WIPO Case No. D2000-0003). In this regard, the Panel also takes into account not only the fact that the Respondent has not been known by the name "Real Madrid" in the past, but also the reputation of the Complainant's trademarks.

Therefore, in the Panel's view, by registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of the disputed domain name by creating a likelihood of confusion with the Complainant's trademarks REAL MADRID as to the source of the website in question and the product covered by the trademarks REAL MADRID. The gTLD suffix ".website" does not have any distinctiveness by itself. In fact, based on the available record, any Internet user accessing the disputed domain name would certainly focus on the words "Real Madrid" (see also Guardant, Inc. v. youngcho kim, WIPO Case No. D2001-0043; and Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600).

Therefore, the Panel concludes that 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 <realmadrid.website> be transferred to the Complainant.

José Carlos Erdozain
Sole Panelist
Date: January 6, 2015