FUTBOL CLUB BARCELONA v. Condonia, SL et al.

NATIONAL ARBITRATION FORUM
URS DEFAULT DETERMINATION

FUTBOL CLUB BARCELONA v. Condonia, SL et al.
Claim Number: FA1410001582662

DOMAIN NAME

<barça.futbol>

PARTIES

	Complainant: FUTBOL CLUB BARCELONA of Barcelona, Spain
	Complainant Representative: HERRERO & ASOCIADOS Paz Martin of Madrid, Spain

	Respondent: Condonia, SL Carlos Martinez Feliu of Barcelona, II, ES

REGISTRIES and REGISTRARS

	Registries: FUTBOL Registry
	Registrars: Soluciones Corporativas IP, S.L.

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.
	Vali Sakellarides, as Examiner

PROCEDURAL HISTORY

	Complainant Submitted: October 1, 2014
	Commencement: October 2, 2014
	Default Date: October 17, 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:
		Multiple Complainants: This proceeding features a sole Complainant regarding the single domain name <barça.futbol>. No domain names are dismissed from this complaint.
		Multiple Respondents: This proceeding features a sole Respondent regarding the single domain name <barça.futbol>. No domain names are dismissed from this complaint.

Findings of Fact: The Complainant is a company incorporated in Barcelona in Spain. The Complainant is the owner of the Community trademark registration No. 000198598 BARÇA filed on April 3, 1996 and registered on September 20, 1999. Complainant states that BARÇA is the name for which the Futbol Club Barcelona is commonly known and it constitutes the abbreviation of Barcelona in Catalonian language. The term is used by media, followers and fans to refer to the Spanish football team FC Barcelona. Complainant explains that there exists no other meaning for the term BARÇA. Complainant is internationally famous for its high rankings in various football clubs rankings and for being record holder of various football trophies. Complainant contends that it 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. Respondent registered the disputed domain name without having any right or legitimate interest in respect of the BARÇA mark. Respondent’s business and website is related to condoms and other sex articles. Respondent was never allowed by the Complainant to use the BARÇA mark and does not have any relationship with the Complainant. The disputed domain name resolves to a parking website offering for sale the domain name.

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[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 submits evidence of the Community trademark registration No. 000198598 BARÇA filed on April 3, 1996 and registered on September 20, 1999. Complainant submits proof of current use of the BARÇA mark. Examiner finds that the disputed domain name <barça.futbol> is identical to the Complainant’s BARÇA trademark, as the gTLD .futbol is not relevant for a finding under URS 1.2.6.1. Examiner finds that Complainant has established the first element under URS 1.2.6.1(i).

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant

Respondent has not filed a Response. Complainant has not authorized Respondent to use its registered BARÇA trademark. Examiner finds that the Complainant has established that the Respondent has no rights or legitimate interests in <barça.futbol>.

[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

Complainant submits evidence that the domain name <barça.futbol> resolves to a parking website offering for sale the disputed domain name. Hence, it is apparent that Respondent had Complainant in mind when registering the disputed domain name and that Respondent registered the domain name either with the purpose of selling it to Complainant or to a third party and prevent the Complainant from reflecting the mark in a corresponding domain name, or to attract for commercial gain users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Examiner finds that the Complainant has established the element under URS 1.2.6.3.

FINDING OF ABUSE or MATERIAL FALSEHOOD

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

The Complaint was neither abusive nor contained material falsehoods.

DETERMINATION

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(s) be SUSPENDED for the duration of the registration:

barça.futbol

Vali Sakellarides
Examiner
Dated: October 20, 2014

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