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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Frank E. Rijkaard v. Marc Pйrez-Tejero

Case No. D2004-1044

 

1. The Parties

The Complainant is Mr. Frank E. Rijkaard, Amsterdam, The Netherlands, represented by Mr. Remco M.R. van Leeuwen, Attorney-at-law, The Netherlands.

The Respondent is Mr. Marc Pйrez -Tejero, Ordino, Andorra.

 

2. The Domain Name and Registrar

The disputed domain name <frankrijkaard.com> (the “Domain Name”) is registered with iHoldings.com Inc., d/b/a DotRegistrar.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2004. On December 10, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On December 10, 2004, 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 for the administrative, billing, and technical contact of the Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2005.

The Center appointed Assen Alexiev as the Sole Panelist in this matter on January 11, 2005. 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.

In accordance with the Rules, Paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.

In accordance with the Rules, Paragraph 15, the projected decision date was January 25, 2005.

 

4. Factual Background

The Complainant is the owner of the following trademarks:

- the word mark FRANK RIJKAARD, registered in the Benelux on May 24, 1994, registration number 551553, for goods and services in classes 18, 25 and 28; and

- the word mark FRANK RIJKAARD, registered as an International trademark on October 10, 1994, registration number 627522, for the Benelux and Italy, for goods and services in classes 18, 25 and 28.

 

5. Parties’ Contentions

A. Complainant

1. The domain name <frankrijkaard.com> is identical and/or confusingly similar to the Complainant's trademarks FRANK RIJKAARD

The Complainant is the rightful owner of the trademarks, listed in Section 4 above. The Complainant notes that the Policy does not require that the trademark of the Complainant be protected in the Respondent’s country, in this case Andorra. Therefore the aforementioned trademarks are sufficient to initiate an action under the Policy against Respondent. The Complainant cites in this regard the decisions of the Administrative Panels in Infospace.com v. Infospace Technology Co. Ltd, (WIPO Case No. D2000-0074) and Parfums Christian Dior S.A. v. Jadore, (WIPO Case No. D2000-0938).

The Complainant is a world famous former professional soccer player and a world famous professional soccer head coach of various soccer clubs and the Dutch National soccer team. As a player the Complainant has played professionally for internationally famous soccer clubs such as AFC Ajax Amsterdam, The Netherlands, Sporting Lissabon, Portugal, Real Zaragoza, Spain and AC Milan, Italy. As such the Complainant has won many national and international prizes (national titles and national and international cups) amongst which are the European Club Championship Cups I and II and the World Cup for club teams. The Complainant also played successfully for the Dutch National soccer team in the European Championship in 1988, where this team ultimately won the tournament.

As a professional soccer head coach, the Complainant has been the head coach of the Dutch National soccer team from 1998 until 2000 reaching the semi-finals during the European Championship in the year 2000 (“Euro 2000”). This tournament was broadcast worldwide and has been watched by hundreds of millions of soccer fans. Presently the Complainant is the successful head coach of the internationally famous professional soccer team FC Barcelona in Barcelona, Spain.

As such, the Complainant has developed an international reputation as a professional soccer player and professional soccer head coach and has throughout his career been the subject of significant media attention, most recently as head coach of the Barcelona soccer team. The Complainant therefore has rights to the goodwill created in his name through his efforts.

The Complainant is in the process of developing a website dedicated to his past and present accomplishments including additional information and commercial activities. These commercial activities include selling various fashion items under the Complainant's trademarks FRANK RIJKAARD through the website. In October 2004, the Complainant tried to register the Domain Name. However, this was not possible since the Respondent had already registered this domain name a few days earlier. The Complainant subsequently opted for the 'second best' domain name and registered the domain name <frankrijkaard.net>.

On November 15, 2004, the Complainant sent an e-mail through his trademark agent to the Respondent (at the Hotmail address provided by the Respondent in the Domain Name registration) requesting a transfer of the Domain Name to Complainant in exchange for the registration fee. The Respondent has not in any way reacted to this e-mail nor has the Respondent ever explained in any way as to why he has registered the Domain Name.

2. The Respondent has no rights or legitimate interests in respect of the domain name

Trademark research shows that the Respondent has no trademark registration for FRANK RIJKAARD as a Community, International or national trademark. The Complainant has not licensed or otherwise permitted the Respondent to use his trademarks and/or his name, nor has the Complainant licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating his trademarks and/or his name.

Until the date of filing of the Complaint, there is no website available under the Domain Name. There are no indications that the Respondent is developing any website under the Domain Name or is establishing any other online presence under it. The e-mail address provided in the Domain Name registration is a Hotmail address and not an address linked to the Domain Name, such as postmaster@frankrijkaard.com.

There is no evidence that the Respondent is using, or has demonstrated that he is preparing to use, the Domain Name in connection with a bona fide offering of goods or services. The Respondent is merely passively holding the Domain Name without any explanation, thereby preventing the Complainant from reflecting his trademarks in a corresponding domain name. Therefore the Complainant concludes that the Respondent is not using and has not demonstrated that he is preparing to use, the Domain Name in connection with a bona fide offering of goods or services.

The Respondent's name is not Frank Rijkaard. The words FRANK and RIJKAARD have absolutely no meaning in either the Spanish language, the Catalan language or the French language (which are the primary languages spoken in Andorra). The Respondent does not use the Domain Name as part of his legal name, corporate name or any commonly-known identifier. The Respondent is not commonly known by the Domain Name and has no relationship with the Complainant. Therefore, the Respondent is not making a legitimate or fair use of the Domain Name.

3. The domain name was registered and is being used in bad faith

The Respondent is living in Andorra, which is close to Barcelona, where the Complainant is currently acting as head coach of the Barcelona soccer team. The Complainant was already a world famous professional soccer player and head coach prior to his position at the Barcelona soccer club (which position he started in 2003), and there is significant media attention given to the Barcelona professional soccer club in Spain and in other countries. These facts should be sufficient to prove that the Respondent is, or at least should be aware of the Complainant’s name and trademark- and other rights. The selection and combination of the unusual (and meaningless in Spanish, Catalan or French) words FRANK and RIJKAARD for a domain name alone is also evidence of such awareness.

The Complainant has valid trademark rights commencing prior to the date of registration of the Domain Name. The trademark rights commenced on May 24, 1994 (Benelux trademark), and on October 10, 1994 (International trademark). The Domain Name was registered approximately ten years later.

The Respondent has not provided any explanation as to why he has registered this Domain Name and has provided no evidence whatsoever of any actual or contemplated good faith use of the Domain Name.

The Respondent has not established himself on-line in any way under the Domain Name. The Respondent is merely passively holding the Domain Name, without any explanation. The Respondent has not in any way reacted to the e-mail sent by the trademark agent of Complainant.

By passively holding the Domain Name without any explanation the Respondent is depriving the Complainant of the ability to register his trademarks and his proper name as a domain name in the “.com” domain. Various Administrative Panels have ruled that passive holding of a domain name coupled with a Complainant having valid trademark rights commencing prior to the date on which the domain name was registered coupled with the registrant having actual or imputed knowledge of these rights, is sufficient evidence of bad faith (both registration in bad faith and use in bad faith). See for example Jones Apparel Group Inc. v. Robin Sousa (WIPO Case No. D2001-1308) and Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Respondent has registered and is using the Domain Name in bad faith.

In this case, the Center has employed all measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, Paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, Paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. … In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel will take as a starting point the statements and documents submitted by the Complainant and will make its decision in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Panel agrees with the Complainant, that the Policy does not require that the trademark of the Complainant be protected in the Respondent’s country.

Complainant has established its rights in the word trademark FRANK RIJKAARD, as required by Policy, Paragraph 4(a)(i). These trademarks obviously reflect the personal name of the Complainant, and are strongly associated with him.

The only difference between the Domain Name and the trademarks FRANK RIJKAARD is that there is no space between “frank” and “rijkaard” in the Domain Name. This difference has a negligible effect on the overall impression made by the Domain Name, because all letters are identical in the domain name and the trademarks, and because personal names are frequently reflected in domain names without intervals between the parts of the name.

It is an established practice under the UDRP to disregard the suffix “.com” for the purposes of the comparison under Policy, Paragraph 4(a)(i).

The Panel finds that the Domain Name is confusingly similar to the mark FRANK RIJKAARD of the Complainant.

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the Domain Name, and has provided arguments in this regard, as stated in section 5 A above. The Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Once Complainant makes out a prima facie case under Policy, Paragraph 4(a)(ii), the burden shifts to the Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name. 

The Respondent, by its default, has chosen not to present to the Panel any arguments or documents in its defense notwithstanding its right of reply under the Rules, Paragraph 5(b)(i) and 5(b)(ix) or the potential conclusions which a Panel may draw from the fact of a default (Rules, Paragraph 14). If the Respondent had any justification for registering or using the disputed Domain Name, it could have provided it. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, Paragraph 4(c) – or any other circumstance – is present in its favor. In fact, the only information available in this case about the Respondent is the information, submitted to the Registrar. This information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name.

The non-existence of any website associated with the Domain Name, and the silence of the Respondent after the Complainant’s trademark agent letter of November 15, 2004, do not support a finding that the Respondent has rights or legitimate interests in the Domain Name.

As the circumstances support the prima facie case established by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As mentioned above, the only information available to the Panel about the Respondent is the contact details of the administrative, billing, and technical contact. The location of the Respondent, Andorra, is near Barcelona, the city where the Complainant currently resides and performs his professional activities. The administrative and technical contacts of the Respondent, both of which are an entity, located in Valencia, Spain, itself not far from Barcelona.

The Complainant is without doubt one of the big names in professional soccer in Europe in the last 20 years. His fame continues to grow, as he currently is the head coach of one of the most distinguished soccer teams – FC Barcelona. The name FRANK RIJKAARD is unusual in the location of the Respondent, and there is a strong association across Europe between this name and the Complainant. Moreover, the Complainant has protected his rights by registering the trademark FRANK RIJKAARD ten years ago.

These facts support the conclusion that the Respondent most probably is aware not only of the existence and popularity of the Complainant, but also of the highly valuable goodwill and commercial value that the Complainant has created in his name over the years. Internet users searching the Internet for information about the Complainant and his activities are likely to try to find it under <frankrijkaard.com>. It is logical for them to expect that this location offers the desired information. The Panel finds no conceivable reason, unrelated to the Complainant in some way, for the registration and use of the Domain Name.

These facts support a finding that the Respondent, having no rights or legitimate interests in the Domain Name, registered it in an attempt to extract revenue from the Complainant’s popularity. Such actions cannot be considered as legitimate in view of the evidence produced in the case.

The lack of reaction by the Respondent after the request by the Complainant’s trademark agent for the transfer of the Domain Name, and the Respondent’s default in this administrative proceeding reinforces the conclusion that Respondent has chosen Complainant’s name “Frank Rijkaard” in bad faith. See Ronaldo de Assis Moreira v. Goldmark - Cd Webb, WIPO Case No. D2004-1044. The Panel finds it reasonable to infer that, had the Respondent had any legitimate reason for registering or using the Domain Name, he would have brought it to the attention of the Complainant and of the Panel.

In the light of the above, and in the absence of any explanation by the Respondent in support of the legitimacy of his actions, the Panel reaches the conclusion that the Respondent has registered and used the Domain Name in bad faith.

 

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 Domain Name <frankrijkaard.com> be transferred to the Complainant.


Assen Alexiev
Sole Panelist

Dated: January 24, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-1044.html

 

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