Complainant is Liga Nacional de Futbol Profesional of Madrid, Spain, represented by CASAS ASIN, Spain.
Respondent is Ondrej Pastirik, Pro Region Slovakia of Vysoke Tatry, Slovakia. 2. The Domain Name and Registrar
The disputed domain name is registered with Astutium Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2014. On June 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2014. The Response was filed with the Center on July 25, 2014.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 7, 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
Complainant is the professional football league of the nation of Spain. It is the holder of trademarks which include the word “liga” and/or “la liga”. Since the nature of the Complaint concerns the combination “la liga,” it is only marks featuring those words that are relevant to the examination. The mark LA LIGA by itself (literally “the league” in English) was first registered on January 25, 2002, and has also been used in the non-descriptive sense in registered marks as ESTRELLA DE LA LIGA (literally “star of the league”) and EL JUEGO DE LA LIGA (literally “the game of the league”) beginning on that same date. Complaint, Annex 3. Complainant has also registered several domain names in which the mark LA LIGA is prominent, including , , and . Complaint, Annex 4. Complainant offered no evidence as to when the term “la liga” first acquired secondary meaning as a reference to Complainant for purposes of establishing unregistered or common law trademark rights.
Complainant was founded in 1984 and consists of 42 professional football clubs. Complainant’s league matches have an average television viewership in Spain of 43 million. The matches are aired in 180 countries around the world, and Complainant’s league is the most followed foreign football league in Latin America. The total budget for the teams in the Spanish professional league is approximately EUR 1,6 billion. A search entered by Complainant on the term “la liga” returned more than 26 million results in 0.26 seconds, the great majority of which refer to Complainant. Complaint, Annex 6.
Respondent’s predecessor registered the disputed domain name on August 12, 1998. The disputed domain name resolves to a website at which the distinctive copyrighted shields of the members of the Spanish professional football league are displayed against a blue background which Complainant argues is confusingly similar to the blue background used by Complainant on its website. Complaint, Annexes 7 and 8. Respondent’s website displays the fixtures for the Spanish professional football league season 2003-2004 and scores from some of the matches from that period, as well as the historical champions of the Spanish professional football league through the 2002-2003 football season.
Complainant alleges that Respondent attempted to sell the disputed domain name through SEDO, which markets domain names online. The price demanded for the disputed domain name was GBP 10,000, an amount which Complainant deposited in escrow for the purchase. The sale fell through when the disputed domain name was not put into escrow, and SEDO returned the amount deposited to Complainant.
Respondent alleges that the disputed domain name was acquired as part of a purchase of 100 domain names for a total purchase price of USD 70,000, which purchase was made in August 2006, and that many of the domain names at issue were already in use in that they resolved to constructed websites. Response, Annexes 3, 4a, and 4b. Respondent attaches a correspondence string which suggests that the focus of the purchase were domain names concerned with Costa Rican travel-related domain names and that the inclusion of the disputed domain name among the 100 domain names purchased was merely incidental.
Respondent alleges that it was unaware that the website to which the disputed domain name resolved included the copyrighted shields of the Spanish football clubs and has now deleted those shields from the website.
Respondent produces correspondence with SEDO and others that indicates that the disputed domain name and others were temporarily stolen from it, and produces an email from SEDO that states that Respondent was not involved in the listing of the domain name for sale on SEDO. Response, Annexes 5, 6a, 6b, and 6c.
Respondent states that “la liga” is a common term and that the disputed domain name is used to resolve to a legitimate “fan site.” 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to its LA LIGA trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name is being used in bad faith in that Respondent, offered the domain name for sale to Complainant, only to renege on the bargain, and that the web page to which the disputed domain name resolves is confusingly similar to that of Complainant. B. Respondent
Respondent argues that the disputed domain name consists of a common term, that Respondent is using the domain name to resolve to a legitimate fan site, and that upon learning that the copyrighted shields of the clubs that make up Complainant’s football league were displayed on the website, Respondent caused their immediate removal. Respondent also attached correspondence which purports to show that Respondent had no involvement in the purported attempted sale of the disputed domain name which took place during a period when the domain name was out of Respondent’s control. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “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:
1. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights, and;
2. that the respondent has no rights or legitimate interests in respect of the domain name, and;
3. that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the trademark LA LIGA, which Spanish term consists of the English common term equivalent to “the league” (even if only ordinarily used as “LA LIGA” as opposed to the English equivalent) is a trademark that has become famous in reference to the Spanish professional football league, and that the disputed domain name is identical to Complainant’s mark. B. Rights or Legitimate Interests
In the present circumstances of this case, the Panel finds that to the extent that Respondent has not and does not use the disputed domain name on a website that generates commercial gain for Respondent, nor to publish copyrighted material of Complainant or its member clubs, and does no more than continue to publish publically available information concerning Complainant placed on the site by its previous owner, and without using the website in any way for commercial gain, then Respondent has cast sufficient doubt over the Complainant’s case such that it cannot be said that the Complainant has met its burden of proving that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The website to which the disputed domain name resolves appears to be a site which existed at the time of purchase, from which Respondent has now excised the copyrighted shields of the clubs which are members of Complainant. It does not constitute an active “fan site” since no information on the site is more current than the 2003-2004 season. It must be noted that the site does feature the trademark LA LIGA, but the Panel finds that it is used in the informational sense as a reference to the Spanish professional football league. The website contains no advertisements, nor links to other websites. Complainant does not allege that Respondent is realizing commercial gain from its use of the disputed domain name, and the Panel finds no evidence that such is the case. Accordingly, the Panel finds that at present the disputed domain name is not being used in bad faith.
The Panel does note however the Respondent has stated that in general its sites are developed according to its “commercial priorities” and “business activities”. Should the disputed domain name, which at present is noncommercial, in future be used for commercial purposes (whether through links or by offer for sale), the Complainant may have sufficient grounds to bring a case against the Respondent (see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraphs 2.5 and 4.4; see also Puravankara Projects Limited v. Domains By Proxy, LLC / SHIVA MALHOTRA,WIPO Case No. D2013-0260). The present decision is therefore without prejudice.
Complainant presented evidence that the disputed domain name was offered for sale following its transfer to Respondent and while presumably under Respondent’s control. However, Respondent has presented evidence that the disputed domain name was temporarily out of Respondent’s control and that Respondent was not involved in the offer to sell the disputed domain name which was aborted for failure to put the disputed domain name into the escrow that was created by the agent. The Panel cannot decide this issue, as the burden of proof to establish this element, as with all the elements of bad faith registration and use, is with Complainant and would require more exchange of evidence than a proceeding under the Policy would generally lend itself to. Accordingly, the Panel finds that Complainant has not, on the facts before it, met its burden as to the third Policy element. 7. Decision
For the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Sole Panelist
Date: August 11, 2014
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