WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Madrid Club de Futbol v. 深圳市弗兰广告装饰有限公司

Case No. D2018-0380

1. The Parties

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

The Respondent is深圳市弗兰广告装饰有限公司of Shenzhen, Guangdong, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <realmadrid.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2018, 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 February 24, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On February 26, 2018, the Complainant submitted a request that English be the language of the proceeding. On the same day, the Respondent submitted a request 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on February 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2018. The Response did not submit any further response other than its language request. On March 21, 2018, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Jonathan Agmon as the sole panelist in this matter on April 3, 2018. 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, Real Madrid, is a professional football club based in Madrid, Spain. The Complainant was voted by the Fédération Internationale de Football Association (FIFA) as the most successful club in the 20th Century. It is the most successful Spanish football club in terms of international and overall trophies and it is one of the world’s richest football clubs in terms of revenue. The Complainant established itself as a major force in both Spanish and European football during the 1950s. The Complainant has also presence in China. In 2012 it set up a football academy in Guangzhou.

The Complainant owns multiple registrations for the trademark REAL MADRID (see, e.g., European Union trademark registration No. 4302782, registered on January 23, 2006) and numerous domain names such as <realmadrid.com>, <realmadrid.net> and many others.

The disputed domain name <realmadrid.vip> was registered on August 13, 2017.

The disputed domain name currently directs to an inactive page. Evidence provided by the Complainant indicated that the disputed domain name was previously parked and listed for sale.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark REAL MADRID because it contains the Complainant’s mark in its entirety.

The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark REAL MADRID.

The Complainant further argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the mark REAL MADRID in connection with a bona fide offering of goods or services or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the respondent has no rights or legitimate interest in the disputed domain name.

The Complainant argues that it has enormous goodwill in the REAL MADRID trademarks. The Complainant argues that these circumstances suggest that the Respondent has registered and used the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent commented and requested that Chinese be the language of the proceeding, but did not provide substantive arguments for its request.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iii) The Respondent, having been notified of the present proceeding in both Chinese and English, chose not to provide any substantive Response to the Complaint..

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the REAL MADRID mark. For example, the Complainant is the owner of the European Union trademark registration No. 4302782 for REAL MADRID, filed on February 22, 2005 and registered on January 23, 2006, in numerous classes; Chinese trademark registration No. 22368383 for REAL MADRID, filed on December 23, 2016 and registered on February 7, 2018, in class 35; and Chinese trademarks registration Nos. G583819, G583819, and G583819 for REAL MADRID (figurative mark), all registered on February 10, 1992.

The disputed domain name <realmadrid.vip> integrates the Complainant’s REAL MADRID trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the generic Top-Level Domain (“gTLD”) “.vip” to the disputed domain name. This addition does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Volkswagen AG v. Hui Min Wang, Wang Hui Min, WIPO Case No. D2017-0860). The gTLD “.vip” iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registration for any REAL MADRID mark.

The Respondent has not submitted a Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Respondent registered the disputed domain name with notice of the Complainant’s trademark. The Complainant’s REAL MADRID Mark is recorded with the Trademark Clearinghouse and pursuant to that recordation, the Respondent was provided with notice of the Complainant’s rights in the REAL MADRID trademark before it registered the disputed domain name. See International Business Machines Corporation v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1419 (noting “that notifications from the Trademark Clearinghouse, while not conclusive on the issue, can be considered indicia of bad faith registration because the registrant has been put on notice of the trademark holder’s rights.”) The fact that the Respondent received a notification from the Trademark Clearinghouse constitutes evidence of bad faith registration and use of the disputed domain name.

Several UDRP panels have found that the REAL MADRID trademark is well-known. See Real Madrid Club de Futbol v. Vladimir Tamasi, WIPO Case No. D2017-2006 citing Real Madrid Club de Futbol v. Wei Ding, WIPO Case No. D2016-0191 (“the Complainant’s trademark is well-known worldwide”); Real Madrid Club de Futbol v. Juan Antonio Maldonado Castillo, WIPO Case No. D2014-1605 (“The REAL MADRID trademark has the value of a notorious mark in Spain”); Real Madrid Club De Futbol v. Lander W.C.S., WIPO Case No. D2000-1805 (stating that the name and trademark REAL MADRID is “indubitably notorious” and “notorious beyond discussion”); and Real Madrid Club de Futbol v. Daniel Vidal, Cubelaws, WIPO Case No. D2016-0350 (“the “REAL MADRID marks identify one of the most important Spanish football clubs, which is present on main sporting and general publications in Spain and Europe”).

In addition, the Complainant registered the disputed domain name long after the Complainant registered its trademark. The Complainant has owned a registration for the REAL MADRID trademark since at least 1948, and in China since 1992 while the Respondent owned the disputed domain name since August 13, 2017. Considering the Complainant’s numerous trademarks, the fact that the REAL MDRID trademark is well-known, and the notification the Respondent received from the Trademark Clearinghouse, the Respondent could have easily found one of the Complainant’s REAL MADRID registrations in a simple trademark search. Given the fame of the REAL MADRID trademark it is very unlikely that the Respondent was not aware of the Complainant and its worldwide activities in the field of sports prior to registration of the disputed domain name.

The disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). Moreover, the mere registration of domain names including famous trademarks, such as the Complainant’s REAL MADRID trademark has been held to be an indication of bad faith registration use by itself. See WIPO Overview 3.0, section 3.1.4 and cited cases therein.

The disputed domain name is currently not in use. UDRP panels have long found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574). Moreover, the disputed domain name was previously parked and listed for sale. Under the present circumstances of this case, when the Complainant’s mark is famous and when there was a previous use which could be considered as evidence of bad faith, the present non-use of the disputed domain name serves as additional evidence of bad faith registration and use of the disputed domain name.

Since the Complainant trademark is well-known, the disputed domain name is identical to the Complainant’s trademark, and the Respondent failed to provide any explanation of his purpose in registering and using the disputed domain name, the Panel takes the view that the Respondent did not register the disputed domain name for bona fide use.

Based on the evidence presented to the Panel, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith and that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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.vip> be transferred to the Complainant

Jonathan Agmon
Sole Panelist
Date: April 17, 2018