national arbitration forum

URS FINAL DETERMINATION

 

FUTBOL CLUB BARCELONA v. Joerg Lindemer et al.

Claim Number: FA1409001580834

 

DOMAIN NAME

<fcb.email>

 

PARTIES

Complainant: FUTBOL CLUB BARCELONA of Barcelona, Spain.

Complainant Representative: HERRERO & ASOCIADOS of Madrid, Spain.

 

Respondent: Joerg Lindemer of Neuenburg am Rhein, Germany.

Host Master / united-domains AG of Starnberg, Bayern, United States of America.

 

REGISTRIES and REGISTRARS

Registries: Spring Madison, LLC

Registrars: united-domains AG

 

EXAMINER

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.

 

Piotr Nowaczyk, as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: September 22, 2014

Commencement: September 22, 2014     

Response Date: October 7, 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") .

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDINGS and DISCUSSION

 

Procedural Findings:

No multiple complainants or respondents and no extraneous domain names require dismissal.

 

Findings of Fact:

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).

 

URS Procedure 1.2.6, requires the 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.

IDENTICAL OR CONFUSINGLY SIMILAR

According to the URS Procedure, paragraph 1.2.6.1 (I), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use.

The disputed domain name is <fcb.email>. The applicable generic Top-Level Domain (gTLD), in the present case “.email”, may be disregarded in this analysis. However, since the Complainant did not prove to hold any word trademark consisting of the sole letters “FCB”, the disputed domain name is neither identical nor confusingly similar to the Complainant’s trademark.

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”.

NO RIGHTS OR LEGITIMATE INTERESTS

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 <fcb.email>. Thus, the requirement set out in the URS Procedure, paragraph 1.2.6.2 is not fulfilled.

 BAD FAITH REGISTRATION AND USE

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 3^rd 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.

 

DETERMINATION

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:

<fcb.email>.

 

 

 

Piotr Nowaczyk, Examiner

Dated:  October 10, 2014