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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fussballclub Gelsenkirchen-Schalke 04 e.V. v. Manila Industries Inc.
Case No. D2006-1283
1. The Parties
The Complainant is Fussballclub Gelsenkirchen-Schalke 04 e.V., Gelsenkirchen, Germany.
The Respondent is Manila Industries Inc., Santa Ana, California, United States
2. The Domain Name and Registrar
The disputed domain name <fcschalke.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4 2006. On October 5, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. After several reminders and requests to receive the complete registrar verification, Compana LLC transmitted by email to the Center its complete verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact on November 7, 2006. 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 November 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2006.
The Center appointed Knud Wallberg as the sole panelist
in this matter on December 27, 2006. 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,
4. Factual Background
The Complainant is Fussballclub Gelsenkirchen-Schalke 04 e.V., a registered association founded in 1904.
The Complainant carries out activities in a number of sporting fields, but is particularly known for its professional football team, which plays in the German Premiership, and has been participating in international football. It is one of the most famous football teams in Germany and is a renowned football team in Europe.
The Complainant owns valid trademark registrations of the mark FC SCHALKE 04 both in Germany and in the European Community. The Complainant uses its trademarks in connection with its football team and a wide variety of football related products.
The Complainant is also registered owner of several domain names incorporating its trademarks, for example <schalke04.de>, which is the Complainant’s official website.
The Panel has not received any specific information
on the activities of the Respondent apart from those mentioned in the Complaint.
5. Parties’ Contentions
The Complainant submits that in February 2005, it became aware that the Respondent has registered the disputed domain name, which is associated with a commercial directory website devoted to football and containing numerous advertising links to third party websites which offer sale of a variety of products including sale of the Complainant’s products.
The domain name is confusingly similar to the Complainant’s trademarks. Only the descriptive part of Complainant’s trademark “04” has been omitted.
The Complainant contends that the Respondent has no rights or legitimate interests in the <fcschalke.com> domain name. There is no relationship between the Complainant and the Respondent that would give rise to any license, permission, or other right which the Respondent could own or use any domain name incorporating the Complainant’s trademarks.
The fact that the Respondent associates the disputed domain name with a commercial directory website devoted to football and the sale of the Complainant’s products does not in the Complainant’s view establish prior rights or legitimate interests in the disputed domain name on the side of the Respondent. On the contrary, such a use of the domain name creates confusion for the public since Internet users may think that the website with the domain name is sponsored by the Complainant.
Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant further submits that the Respondent is using the disputed domain name for commercial gain, and such use may tarnish the Complainant’s trademark within the meaning of paragraph 4(c)(iii) of the Policy.
The Complainant contends that the Respondent cannot have registered the disputed domain name by accident.
At the time of the registration the well-known trademarks of the Complainant must have been obvious to the Respondent. This awareness on the side of the Respondent is in the Complainant’s opinion confirmed by the fact that the Respondent has developed a football-oriented website using the disputed domain name.
Furthermore the Complainant contends that the Respondent has chosen a domain name that includes the Complainants trademark to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s well-know trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. The disputed domain name is used to advertise links to websites promoting and/or offering football related products and services of third parties. The Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them as to the origin of the websites behind those links.
The Respondent is a known cybersquatter, as shown by the various WIPO UDRP decisions involving the Respondent, as well as numerous UDRP cases against Respondent brought before the National Arbitration Forum.
As a result of the foregoing, the Complainant contends that the disputed domain name was registered in bad faith and has been used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) 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
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the dominant and distinctive part of Complainant’s trademark FC SCHALKE 04, with the addition of the “.com” designation. For the purpose of these proceedings the domain name must be considered confusingly similar to the Complainant’s trademark.
The conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant submits that it has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and since the Complainant’s trademark is a fanciful constellation word with no specific meaning except as name and trademark for Complainant, it is unlikely that any such rights or interests exist. The Panel further refers to its below findings in relation to the actual use made of the domain name.
Consequently the conditions in the Policy, paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must
prove the Respondent’s registration and use of the domain names
in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the
kind of evidence that may be put forward.
The Complainant’s trademark was registered and used well in advance of the date of registration of the disputed domain name. Given the geographically widespread use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is actually used for a website that links to other sites that offer products and services of Complainant and third parties. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent’s bad faith.
Considering all the facts and evidence, the Panel therefore finds that the
requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fcschalke.com> be transferred to the Complainant.
Dated: January 10, 2007