The Complainant is Real Madrid Club de Futbol of Madrid, Spain, represented by Neudomains Digital, Spain.
The Respondent is Wei Ding of Luton, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2016, 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 February 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2016.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 3, 2016. 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, having been voted by FIFA the most successful football club of the 20th century.
The Complainant is the owner of several trademark registrations amongst which are the following:
- European Community Trademark Registration No. 517474 for REAL MADRID, registered on April 18, 1997 in classes 03, 06, 14, 16, 24, 25, 28 and 34; and
- European Community Trademark Registration No. 1173574 for REAL MADRID CLUB DE FUTBOL, registered on May 14, 1999 in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.
The disputed domain name is and was registered on June 18, 2015. It currently resolves to a parked page without active content. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it was established in the 1950s in Madrid, Spain, having been one of the founding members of FIFA. It also claims to be the world’s richest football club in terms of revenue and the most successful club in the Spanish football.
In the Complainant’s point of view the disputed domain name is identical to its registered and well-known REAL MADRID trademark and can cause confusion amongst Internet users who might falsely believe that the respective website is endorsed by the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names given that:
(i) the Respondent does not have any registered trademarks or trade names corresponding to the disputed domain name, nor has he prior rights or a legitimate interest in the disputed domain name;
(ii) the Respondent has not been authorized by the Complainant to use the REAL MADRID trademark;
(iii) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services and is therefore not making a legitimate noncommercial or fair use of the disputed domain name; and
(iv) the Complainant’s trademark is so widely known that the Respondent must have had it in mind when registering the disputed domain name.
Moreover, the Complainant contends that the registration of the disputed domain name was done clearly in bad faith given that “Real Madrid” is not a common word in the Spanish language and given the extent and well-known character of the Complainant’s trademark the Respondent could not simply be unaware of it. In addition to that, given that the Complainant’s trademark has been recorded at the Trademark Clearing House, the Respondent was provided notice of the Complainant’s rights and deliberately chose to proceed with the registration. Furthermore, the disputed domain name has been passively held, given that it resolves to a parked page, what has already been found as an indication of bad faith use of domain names that consist of well-known trademarks. Lastly, the Complainant also asserts that the Respondent’s activities are preventing it from using its trademark in the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar
The Complainant has established rights in the REAL MADRID trademark, duly registered in various countries.
The Panel finds that the disputed domain name merely reproduces the Complainant’s famous mark and thus the first element of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed 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, in spite of not having 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.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not authorized the Respondent to use the REAL MADRID trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain name appears to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the trademark of a well-known football club.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Paragraph 3.2 of the already quoted WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) states that “[…] panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith in view of the following circumstances:
(i) the Complainant’s trademark is well-known worldwide;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iii) taking into account all of the above (as the panel did in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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 the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: March 10, 2016
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