• Home
  • About Us
  • Contact
  • Advertise
  • Awards
  • Privacy Policy
  • Twitter
  • Facebook
  • RSS
TheDomains.com

FC Barcelona Loses Attempt To Grab The Domain Name: FCB.email

October 10, 2014 by Michael Berkens

FC Barcelona just lost its attempt to score the domain name FCB.email away from Joerg Lindemer of Neuenburg, Germany in a Uniform Rapid Suspension proceeding (URS).

The Football Association Premier League Limited did much better winning a UDRP on the new gTLD premierleague.club, (here is the link to that case)

Here are the highlights of the FC Barcelona case in which the Examiner was Piotr Nowaczyk:

The Complainant is a Spanish football club.

It has won many national and international football titles and trophies.

FC Barcelona is said to be one of the most supported teams in the world and to have the largest fan base among all sports teams on all major social networks.

The Complainant holds a valid registration for the “FCB” figurative Community trademark in the Office for Harmonization in the Internal Market (application No. 002803005, registration date:11th February 2004).

The Complainant contends that the Respondent is a football fan who registered the disputed domain name without its consent in order to mislead the Internet users.

The Respondent introduces himself as an economist. He asserts that the disputed domain name was registered with no commercial intend, in order to provide email services for FC Bayern Monachium’s fans (a German team).

The Complainant only presented evidence that it owns the figurative CTM that was registered at the Office for Harmonization in the Internal Market on 11th February 2004 (Application No. 002803005). As the Procedure explicitly requires “a word mark”, the Examiner rejects the Complainant’s submission that the disputed domain is identical or confusingly similar to its registered trademark.

Moreover, even if the Examiner considers a figurative trademark to give legal basis for the Complainant, the Examiner would still find that three letters FCB (an acronym) are not distinctive enough to be identical or confusingly similar to the disputed domain name; quite to the contrary. The distinctive element of the figurative trademarks is their design (WIPO Case No. D2013-0818, Fundación Santa María-Ediciones SM v. M.A. Stenzel).

The Examiner notes that there are many of trademarks including letters FCB registered all around the word – TMview displays 151 results while searching for “FCB”.

Although the Complainant claims that it did not consented to the use of its trademark in the disputed domain name, there is no clear and confusing evidence that the Respondent has no legitimate interests in . Thus, the requirement set out in the URS Procedure, paragraph 1.2.6.2 is not fulfilled.

The Complainant has not satisfied the URS Procedure, paragraph 1.2.6.3 (d) since it failed to prove in any way that by using the domain name the Respondent has intentionally attempted to attract for commercial gain, the Internet users to its web site 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 the Respondent’s web site or location or of a product or service on that web site or location.

Moreover, it is likely that the disputed domain name may serve for the purposes of FC Bayern Monachium’s fans.

Firstly, FC Bayern Monachium also uses the acronym FCB as it owns a few word trademarks all around the world (e.g. the “FCB” word trademark registered on 3rd April 1998 in the Danish Patent and Trademark Office under No. VR 1998 01570). Secondly, the Respondent seems to be a fan of German football.

After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be RETURNED to the control of Respondent.

Piotr Nowaczyk, Examiner

Dated: October 10, 2014

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page

Filed Under: URS

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

« CENTR – Myth & Fact: New gTLDs, Registries & Registrars
Bob Olea: “Any Domain Seized, Not Owned By Defendant Will Be Returned” »

Comments

  1. johnuk says

    October 11, 2014 at 4:50 am

    Hmm, Barcelona does’nt seem to have much luck with UDRP’s . I recall the Barcelona City case went to the Appeals Court in Virginia ,USA and Barcelona (the City authorities) lost. I guess I would call that good.


Recent Articles

  • MariaSharapova.com expires and closes over $22K at GoDaddy auctions
  • Sedo weekly domain name sales led by JPR.com
  • NameJet/SnapNames April 2022 Sales Report

Recent Comments

  • Brad on Quite possibly the ugliest name to sell for three figures ever?
  • John on Q1 2022 Liquid Domains Report sees a sharp drop in median prices
  • JayDee on What do you have for $2K or less? list up to 3 names for sale
  • Robert McLean on Q1 2022 Liquid Domains Report sees a sharp drop in median prices
  • Hafiz Khan on Visionary.vc surpasses Solar.vc to be highest reported .vc domain name sale

Polls

How Many .Web Domains Will Be Registered 1 Year After Launch

View Results

Loading ... Loading ...
  • Polls Archive

Subscribe to Blog via Email

Enter your email address to subscribe to this blog and receive notifications of new posts by email.

Categories

Archives

domain name news

Copyright ©2019 TheDomains.com — Published by Worldwide Media, Inc. — Site by Nuts and Bolts Media