FUTBOL CLUB BARCELONA v. Lukas Janok et al.
Claim Number: FA1408001573848
Complainant: FUTBOL CLUB BARCELONA of Barcelona, Spain.
Complainant Representative: HERRERO & ASOCIADOS of Madrid, Spain.
Respondent: Lukas Janok of Dlhe Klcovo, Slovakia.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: Pearl Woods, LLC
Registrars: Gransy, s.r.o. d/b/a subreg.cz
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Mr. Tomáš Abelovský, as Examiner.
Complainant submitted: August 7, 2014
Commencement: August 7, 2014
Response Date: August 21, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple complainants or respondents and no extraneous domain names require dismissal.
Complainant has provided the following explanatory text, in toto, in its Complaint (subject to the 500-word limit specified in paragraph 1.2.7 of the URS):
“Futbol Club Barcelona is the most sucessful club in Spain in terms of overall official titles won. FC Barcelona was ranked first in the 'All-Time Club World Ranking' by IFFHS, on 31 December 2009, and was placed second of the 2013/14 UEFA club rankings after Real Madrid. It has won 22 La Liga, 26 Copa del Rey, 11 Supercopa de competitions. In international club football, FC Barcelona has won four UEFA Champions League, a record four UEFA Cup Winners' Cup, four UEFA Super Cup, a record three Inter-Cities Fairs Cup and a record two FIFA Club World Cup trophies. FC Barcelona is one of the most supported teams in the world, and has the largest fan base among all sports teams on all major social networks. FC Barcelona's players have won a record number of Ballon d'Or awards (10), as well as a record number of FIFA World Player of the Year awards (7). In 2010, the club created history when three players who came through its youth academy (Messi, Iniesta & Xavi) were chosen as the three best players in the world, having bagged the top spots at the FIFA Ballon d'Or, an unprecedented feat for players from the same football school. The Registrant, Mr. Lukas Janok has registered the domain name fcbarcelona.today without the consent of Futbol Club Barcelona who is the legitimate owner of all the trademarks FC BARCELONA. Besides, the registrant is the co-founder of another website in Slovakia related to Futbol Club Barcelona : www.forcabarca.sk which is not only an information site if not also it is a profitable site with advertising of other companies and where they also sell t-shirts and other merchandising equipment which has not been authorized by the trademark owner.”
Complainant owns the figurative Community Trademark No.002803039 “FCBARCELONA”.
Respondent has provided the following explanatory text, in toto, in its Response to the Complaint (subject to the 2,500-word limit specified in paragraph 5.4 of the URS):
“This whole case is just a big misunderstanding. At the time when i registered the domain main, the national domain registrator made a mistake. Websupport, s.r.o. registered the domain 'fcbarcelona.today' on my name, but they told me, that the registration can't be completed, because during the registration process another registrator registered the domain on someone else. Although the domain was actually registered on me, Websupport, s.r.o. told me that it isn't. So i didn't really know about the fact that i am the owner of the domain fcbarcelona.today. So in fact, i'm here served by URS complaint because someone else made a mistake. Anyway, i've already contacted Websupport, s.r.o. and they told me just do cancel the registration. They send me a form to fill in and sign and they will cancel my ownership for this domain. The also insisted, that I don't need to contact you, reportedly, the form is enough and they will arrange everything. I sincerely don't want to cause any problems. With the registering of the domain, there was no bad intention. I would like to cancel the registration and give the domain back to FC Barcelona, or tranfer the domain on FC Barcelona. In this matter i would like to cooperate. I repeate, I don't want to cause any problems.”
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended. Accordingly, the Complainant must establish, by clear and convincing evidence, each of the following three elements:
IDENTICAL OR CONFUSINGLY SIMILAR
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant demonstrated that he is a famous professional football club known as FC Barcelona and familiarly as Barça, based in Barcelona, Spain. FC Barcelona is the most successful club in Spain, and has the largest fan base among all sports teams on all major social networks. Complainant holds community trademark FCBARCELONA (CTM No. 002803039). Also, he is an owner of the web site under the domain name <fcbarcelona.com> and his name is registered in the Trademark Clearing House (TMCH NIC HANDLE 0006110000000724-1). Moreover, Complainant demonstrated that his official website is always placed at the highest positions in internet search results. Respondent has not proven otherwise.
NO RIGHTS OR LEGITIMATE INTERESTS
[URS
1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant demonstrated that Respondent has no legitimate right or interest to
the domain name <fcbarcelona.today>. Respondent has registered the domain
name without any authorization from Complainant who is the legitimate holder of
the trademark. Respondent has no affiliation with the Complainant and has registered
and is using the domain for the sole purpose of causing confusion. Respondent
has not proven otherwise.
BAD FAITH REGISTRATION AND USE
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c.
Registrant registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s 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 Registrant’s web
site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
Respondent has registered and used the domain name <fcbarcelona.today> in bad faith and Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. That is so for the following reasons. First, Complainant's trademark is famous and widely used. Accordingly, Respondent must have known of this famous trademark at the time of the registration of the domain name and must also have known that the registration of the domain names was in bad faith. Secondly, Complainant demonstrated that the domain name <fcbarcelona.today> has been parked by Respondent on the web-server which is administered by Slovak web-hosting company Websupport, s.r.o. seated in Bratislava. The domain name resolves to a click through site with a commercial web-hosting advertisement. Also, Respondent is not known by the domain name and there is no evidence that he is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant presented that Respondent is the co-founder of another unauthorized commercial website related to the FC Barcelona which hosted on the domain name <www.forcabarca.sk> (see list of editors and co-founders http://forcabarca.sk/kontakt/). Finally, Respondent in his response admits that he would like to cancel the registration and is willing to suspend the domain name.
The Complaint was neither abusive nor contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration: <fcbarcelona.today>
Mr. Tomáš Abelovský, Examiner
Dated: August 24, 2014
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