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
The Complainant has not satisfied the URS Procedure, paragraph 126.96.36.199 (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
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