Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Neudomains Digital, Spain.
Respondent is Ali Syahmi of Bekasi Jawa Barat, Indonesia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with AlpNames Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2015. On April 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2015, 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 April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. The Center received an email communication from Respondent on April 20, 2015. Respondent did not submit a formal response. On May 8, 2015, the Center informed the parties that it would proceed to appoint an administrative panel in this matter.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on May 15, 2015. 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 trademark upon which the Complaint is based is REAL MADRID. Complainant owns a number of registrations for Complainant’s trademark, including the Community Trademarks 517474 (registered as of April 18, 1997); 2103703 (registered as of February 26, 2001); 4302782 (registered as of February 22, 2005); and CTM 1173574 (registered as of May 14, 1999).
According to the documentary evidence and contentions submitted, Complainant is based in the city of Madrid, Spain, and is considered by the Fédération Internationale de Football Association (“FIFA”) one of the most successful and well known football clubs in the world.
Complainant owns the domain names and , which were registered on September 24, 1998, and on February 8, 1998, respectively, amongst other domain names. Complainant generates substantial business in services offered and delivered by means of the Internet using the REAL MADRID trademark.
The disputed domain name was registered on March 18, 2015. It resolves to no page and, therefore, is inactive. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark because (i) the disputed domain name and the REAL MADRID trademark are almost identical, and points of similarity are weighed more heavily than points of difference; (ii) the disputed domain name incorporates a distinctive mark in its entirety, and this creates sufficient similarity between the trademark and the disputed domain name to render it confusingly similar; (iii) Internet users can be led to confusion due to the inclusion of a well-known trademark, as it has been held in decisions rendered under the Policy; (iv) the disputed domain name creates somehow the appearance that Complainant has registered or has permitted the registration and use of the disputed domain name or at least that Complainant does support or endorse its use by Respondent; and (v) the inclusion of a “.science” suffix does not distinguish the disputed domain name in any significant way from Complainant's trademark.
Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name because: i) 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 REAL MADRID trademark in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, hence, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) Respondent has no prior rights or legitimate interest in the disputed domain name; and v) Respondent must have known of Complainant’s trademark since it is a “well-known” and “reputed” trademark.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) the fact that Respondent chose the words “Real Madrid” to make up his or her disputed domain name is evidence per se of his or her bad faith, as “Real Madrid” is not a common phrase in the Spanish language; (ii) incorporating a widely-known trademark, such as Complainant’s REAL MADRID trademark, into a domain name may be considered as a clear indication of bad faith registration and use; (iii) it is possible, in certain circumstances, for inactivity by Respondent to amount to the disputed domain name being used in bad faith, as decided in previous UDRP decisions; and (iv) Respondent has registered the disputed domain name to prevent Complainant from reflecting its trademark in the disputed domain name. B. Respondent
Respondent did not formally reply to Complainant’s contentions. For the sake of completeness, Respondent’s informal email of April 20, 2015 is as follows: “hi […] im not good in english , i order that domain because was free also im big fans of real madrid...so i dnt know if this breaking the rules...”. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the REAL MADRID mark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282. This is particularly true where the registered trademark is well-known as in the instant case.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC.,WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. In this case, the combination of the words “Real Madrid” with the suffix “.science” does not affect the overall impression of the dominant part of the disputed domain name. In fact, the addition of a “.science” suffix does not distinguish the disputed domain name in any significant way from Complainant’s trademark.
The Panel also agrees that Respondent has registered a domain name confusingly similar to Complainant’s trademark name for the sole purpose of misleading the public into believing that Complainant in some way endorses or approves its use by Respondent.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to the REAL MADRID trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The consensus view of URDP panels has been that a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name, the respondent then carrying the burden of demonstrating rights or legitimate interests in the domain name if the complainant establishes such a case. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the disputed domain name [Paragraph 4(c) of the Policy] shows a result in favor of the Respondent, in light of the facts of this case.
In fact, the Panel finds as reasonable Complainant’s contentions that Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name; and that Respondent has not been authorized by Complainant to use the REAL MADRID trademark in any manner.
Respondent sent an email communication to the Center on April 20, 2015 where it claimed to be a fan of Complainant’s football team. However, a fan site defense can only be considered where there is a fan site that is clearly active and noncommercial. WIPO Overview 2.0, paragraph 2.5. This is not the case here. In fact, the Panel attempted to reach the website to which the disputed domain name would resolve but this attempt was unsuccessful as the disputed domain name appeared to be inactive on May 22, 2015.
The Panel also finds unpersuasive Respondent’s apparent argument in the April 20, 2015 email that it has rights or legitimate interests in the disputed domain name because it was available for registration.
The Panel also agrees that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services. Respondent’s passive use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP Panel decisions.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
In light of the reputation of the REAL MADRID trademark, the reproduction by Respondent of Complainant’s trademark in the disputed domain name shows that Respondent in all likelihood knew of the existence of Complainant’s trademark and of its reputation worldwide and intended to benefit from the value of such trademark.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-441.
In addition, Complainant alleges that passive holding does not prevent the finding of bad faith, relying on previous UDRP decisions. The consensus view of URDP panels has been that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview 2.0, paragraph 3.2). See Telstra Corporation Limited v. Nuclear Marshmallos,WIPO Case No. D2000-0003; Parfums Christian Dior v. 1 Net Power, Inc.,WIPO Case No. D2000-0022; J. García Carrión, S.A. v. María José Catalán Frias,WIPO Case No. D2000-239; Bayer Aktiengesellschaft v. Henrik Monssen,WIPO Case No. D2003-0275; Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; MasterCard International Incorporated v. North Tustin Dental Associates,WIPOCase No. D2007-1412.
The Panel is of the opinion that, under appropriate circumstances, passive holding can amount to bad faith use. In the instant case the majority of the circumstances referred to above indicating bad faith passive holding are present: Complainant owns a well-known trademark, Respondent did not formally reply to Complainant’s contentions, and there is no indication in the record of a possible good faith use of the disputed domain name.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was registered and is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: May 25, 2015
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