WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FC Bayern Muenchen AG v. Whoisguard Protected, Whoisguard, Inc. / Name Redacted

Case No. D2016-2282

1. The Parties

The Complainant is FC Bayern Muenchen AG of Munich, Germany, represented by Taylor Wessing, Germany.

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Name Redacted.¹

2. The Domain Name and Registrar

The disputed domain name <fcbayernsoccershop.com> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 9, 2016. On November 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2016. On November 17, 2016, the Center received an email communication from a person who claimed that, even though the name and address of the Respondent identified in the Written Notice corresponded to her, the phone number, email address and registration of the disputed domain name did not belong to her. The Center received two more emails from this person, with similar content, on November 18, 2016. On December 2, 2016, the Center informed the Parties of Commencement of Panel Appointment Process.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on December 12, 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 FC Bayern Muenchen AG, a German company. The Complainant has activities in all major sports and its soccer team is well-known worldwide.

The Complainant owns several trademark registrations for FC BAYERN and FC BAYERN MUNCHEN, including the following:

Additionally, the Complainant owns the domain name <fcbayern.com>.

The Respondent registered the disputed domain name <fcbayernsoccershop.com> on September 7, 2016. The disputed domain name resolves to an active website selling merchandise displaying the Complainant's FC BAYERN MUNCHEN logo.

5. Parties' Contentions

A. Complainant

The Complainant argues the following:

I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That the Complainant is the worldwide owner of trademarks comprising FC BAYERN and FC BAYERN MUENCHEN. That some of these trademarks, cover goods found in class 25.

That the Complainant uses its trademark to distribute a wide variety of merchandising products, amongst which are football jerseys displaying the trademarks FC BAYERN and FC BAYERN MUENCHEN.

That the Complainant's trademark is well known.

That the disputed domain name has a distinctive element that is identical to the Complainant's trademarks.

That the element "soccershop" is a descriptive term that refers to the nature of the products being offered.

That Internet users will focus on the word sequence "fcbayern", incorporated in the disputed domain name, thus associating said domain name with the Complainant.

That the Respondent has registered and is using a domain name that is highly similar to the Complainant's trademark FC BAYERN.

II) The Respondent has no rights or legitimate interest in respect of the disputed domain name

That the Respondent is operating an unauthorized online shop on the webpage resolved by the disputed domain name.

That the Respondent is not a customer, retailer or licensee of the Complainant. Nevertheless, the Respondent is making an offering of counterfeits bearing the trademarks FC BAYERN and FC BAYERN MUENCHEN.

That the use of the domain name for an online shop providing counterfeit products, does not provide the Respondent with a legitimate interest.

That the disputed domain name was registered with the intent of misleading Internet users as to the origin of the products sold by the Respondent, and the Respondent's website.

That the Respondent does not display a disclaimer anywhere on the website to which the disputed domain name resolves, as to the ownership of the trademark FC BAYERN by a third party or the relationship between its rightful owner and the Respondent.

That the Respondent is creating the impression that the referred website consists of an official online shop of the Complainant.

That the Respondent has used said website for commercial gain, contrary to what would be considered as a bona fide offering of goods and/or services.

That the registration and use of the disputed domain name infringes the Complainant's trademark rights.

That a trademark owner has the right to prevent third parties from using its trademark without its consent.

That the Respondent is taking unfair advantage of the distinctive character and reputation of the Complainant's trademarks (a fact that is detrimental to the Complainant and its brands).

III) The disputed domain name has been registered and is being used in bad faith

That the mere fact that the Respondent registered a domain name which is highly similar to the Complainant's trademarks, proves that the Respondent acted in bad faith.

That the disputed domain name was registered with the intent of misleading Internet users as to the origin of the products and the website itself.

That the well-known FC BAYERN and FCBAYERN MUENCHEN trademarks are being used without properly disclaiming that the website to which the disputed domain name resolves is owned by a third party with no connection to the Complainant.

Moreover, the Complainant argues that the Respondent increases the possibilities of confusion among users and consumers by stating that the referred website consists of an official online shop, a fact proving that the Respondent has deliberately mislead Internet users.

That the Respondent is taking unfair advantage of the reputation of the Complainant's well-known trademarks.

B. Respondent

The Respondent did not formally respond to the Complainant´s contentions.

However, the person named as the Respondent sent some communications, via email, stating that the disputed domain name was registered using her name and address, but that the rest of the information listed in the WhoIs database do not refer to her contact information and that the email addresses and telephone number listed in the WhoIs database did not belong to her.

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(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.

In light of the message sent by the person named as the Respondent, this appears to be a case of identity theft. Accordingly, all references to the Respondent in this Decision and the findings of the Panel set forth hereinafter, will not refer - or have application - to the person against whom the Complaint was filed. This Decision will be directed to and affect the unknown third party registrant of the disputed domain name, who seems to have been using the identity of another person (see Accenture Global Services Limited v. Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2013-2099; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890).

Since the real Respondent has failed to reply to the Complainant's assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant is the owner of trademark registrations for FC BAYERN and FC BAYERN MUNCHEN in several jurisdictions, including the United States of America where the Respondent appears to be domiciled.

The disputed domain name <fcbayernsoccershop.com> is confusingly similar to the Complainant's trademark FC BAYERN as it comprises it in its entirety.

The addition of the generic Top-Level Domain ("gTLD") ".com" is irrelevant and immaterial for purposes of assessing confusing similarity with the Complainant's trademarks (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541).

The Complainant has proven that it owns trademark registrations that cover services related to the manufacture and distribution of goods comprised in class 25, associated with the Complainant's famous football (also called soccer in some countries) team. Henceforth, the addition of the term "soccer shop", increases the confusing similarity between said trademark registrations and the disputed domain name, as it is a term that describes the Complainant's products.

Therefore, the term "soccer shop" is insufficient to avoid a finding of confusing similarity under the first element of the UDRP (see Fluke Corporation v. Supremelines Co., Ltd, WIPO Case No. D2015-1619).

The first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

I. before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or

III. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademar1k or service mark at issue.

The Complainant is the owner of several trademark registrations around the world, including the United States of America, where the Respondent appears to be domiciled.

The Respondent has not submitted a Response. Said Respondent has taken actions to conceal his/her identity. It appears that the Respondent has engaged in identity theft. Therefore, there is no evidence in this case docket showing that the Respondent has been commonly known by the disputed domain name.

Moreover, there is no evidence showing that the Respondent owns any trademark registration related to the disputed domain name.

The Complainant denies having any kind of commercial relationship with the Respondent, be it as an authorized distributor, a retailer or as a licensee. The Respondent did not provide any kind of argument or evidence to rebut this assertion.

Despite not being authorized to do so, the Respondent has used the website to which the disputed domain name resolves, to offer merchandise displaying the Complainant's FC BAYERN MUNCHEN logo. Moreover, the Respondent's website broadly displays the Complainant's logo alongside the phrase "SHOPBAYERN MUNICH The OFFICIAL Store Of The Bayern Munich". The Respondent, through its website, claims to be an official store of the Complainant's famous football team, creating a high likelihood of confusion among Internet users who come across the site.

The disclaimer displayed at the bottom of the website to which the disputed domain name resolves, reads: "Copyright © 2016 FC Bayern Munich Soccer Shop. All rights reserved". This phrase further increases likelihood of confusion. It does not serve as an accurate description of the Respondent's relationship with the Complainant's trademarks, and it could be interpreted as the Respondent's claim of ownership over the trademark rights visible throughout the content of the Respondent's website. The purported Copyright notice is not accurate, as it does not disclose the name of the actual holder of copyrights over the protected works of the Complainant. This phrase is misleading, because it could cause users to believe that the Respondent's website is associated to the Complainant.

By navigating through the content of the website, a visitor would not find any indication that the corresponding page is not associated with the Complainant. This conduct cannot be described as a legitimate use of the disputed domain name (see, mutatis mutandi, Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to, or legitimate interests in the disputed domain name. This fact shifts the burden of production to the Respondent (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521; and Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222).

Since the Respondent has provided no arguments or evidence to prove a legitimate use of the disputed domain name which incorporates the Complainant's FC BAYERN or FC BAYERN MUNCHEN trademarks, the second element of the Policy has been fulfilled (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408).

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

I. circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

II. the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

IV. by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The Complainant asserts that its FC BAYERN and FC BAYERN MUNCHEN trademarks are well known and famous around the world. This Panel is inclined to consider the Complainant's statement as true, based on its football team's recognition and success, which has been noted by other UDRP panelists (see FC Bayern München AG v. Reed Rick, luwei duichengduo, WIPO Case No. D2016-0060; and FC Bayern München AG v. Peoples Net Services Ltd., WIPO Case No. D2003-0464).

Because of the fame of the Complainant's trademarks and the content of the website to which the disputed domain name resolves, it is clear that the Respondent was fully aware of said trademarks at the moment of registering the disputed domain name.

The website to which the disputed domain name resolves, reproduces the characteristic colors and images shown currently on the Complainant's website to which the domain name <fcbayern.com> resolves. This contributes to the false appearance of the Respondent´s site as an authorized retailer or distributor of the goods protected by the Complainant's trademarks.

Numerous previous decisions under the Policy have found bad faith where a respondent has created a website that is nearly identical to the complainant's website (e.g., The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078; and Ctrader Limited v. Niko Wibisono, WIPO Case No. D2013-1906).

The Complainant claims that the goods offered by the Respondent on the website to which the disputed domain name resolves are counterfeit. The Complainant has provided no evidence to support such statement. Therefore, this Panel will not consider it as a conclusive factor in the present case.

However, even if the goods offered on the Respondent's website were not counterfeit, the Respondent failed to accurately disclose its relationship with the trademark owner. The Respondent's website contains a phrase saying that said site is the official store of the Complainant's football team (see R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

The Respondent's conduct leads this Panel to conclude that the Respondent has attempted to misrepresent itself as the Complainant (see Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260), or at least create the impression amongst Internet users that the website to which the disputed domain name resolves is related to the Complainant and its trademarks, presumably with the purpose of generating income for the Respondent through illicit means (see LeSportsac, Inc. v. Yang Zhi, WIPO Case No. D2013-0482; and trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014 0365).

By doing so, the Respondent has placed himself/herself under the hypothesis set forth by paragraph 4(b)(iv) of the Policy. The third element of the Policy has been fulfilled.

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 <fcbayernsoccershop.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: December 26, 2016

¹ The Panel notes that the registrant has fraudulently used a third party's identity when registering the disputed domain name and has redacted the name of the Respondent. The Panel attaches Annex 1 to this Decision as an instruction to the Registrar, including the named Respondent. The Panel instructs the Center to transmit Annex 1 to the Registrar, but directs the Center not to publish Annex 1 based on exceptional circumstances (see Tetra Laval Holdings & Finance S.A. v. Registration Private, Domains By Proxy LLC / Name Redacted, WIPO Case No. D2016-0783).