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#FIFA 2022 : No, 5890 euro is not “basic cost” for an infringing #domain name

ZFBot

Trademark domains can cause a lot of headaches to even the most seasoned domainers!

If you register a domain infringing on a famous mark, you’re a cybersquatter.

Such cases give a bad name to the majority of domain investors who play by the rules, and when the domain involves the FIFA trademark then you have a UDRP coming your way.

The registrant of FIFA2022.com was served with a UDRP via the WIPO; the domain is making use of the famous FIFA mark, and the location of the next World Cup in Qatar.

Despite the lack of a formal response, the Respondent agreed to transfer the domain, and sought 5890 euro as a reference to “basic cost” for it.

What would possibly be “basic cost” for an infringing domain registered in 2003? Perhaps 16 years of $10 dollar renewals, definitely not six grand.

This ridiculous statement makes absolutely no sense, and the sole panelist, Luca Barbero, ordered the domain fifa2022.com to be transferred to the Complainant.

Full details on this decision follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Internationale de Football Association (FIFA) v. Moussa Riffi
Case No. D2019-0390

1. The Parties

The Complainant is Fédération Internationale de Football Association (FIFA) of Zurich, Switzerland, represented by BrandIT GmbH, Switzerland.

The Respondent is Moussa Riffi of Greve, Denmark.

2. The Domain Name and Registrar

The disputed domain name <fifa2022.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2019, 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.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. On March 11, 2019, the Center received an informal communication from the Respondent. The Respondent did not submit any formal Response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on March 22, 2019.

The Center appointed Luca Barbero as the sole panelist in this matter on April 5, 2019. 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.

4. Factual Background

The Complainant was founded in 1904 and is the world governing body of the association of football and the organizer of all world championship football tournaments, including the widely known quadrennial world football championship known as the FIFA World Cup. It has 211 member associations and its goal, enshrined in its Statutes, is the constant improvement of football.

The first FIFA World Cup tournament was held in 1930 and the last edition of the FIFA World Cup was held in the Russian Federation in 2018, with an estimated 3,572 million people having watched some official broadcast coverage of the 2018 FIFA World Cup. The next edition of the FIFA World Cup is scheduled to take place in Qatar in 2022, making it the 22nd edition of the FIFA World Cup.

The Complainant is the owner of several trademark registrations for FIFA, including the following:

– Swiss trademark registration Nos. 2P-415299, registered on February 22, 1995, in classes 25 and 28; and P-471848, registered on May 4, 2000, in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42;

– International trademark registration No. 747778, registered on June 2, 2000, in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42;

– European Union trademark registration No. 9027343, registered on October 14, 2010, in classes 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45;

– Qatari trademark registration Nos. 33731, registered on November 8, 2012, in class 35; 66734, registered on November 8, 2012, in class 38; and 66736, registered on November 8, 2012, in class 41.

The Complainant is also the owner of several domain names containing the trademark FIFA, such as <fifa.com>, registered on August 9, 1995, <fifa.org>, registered on January 10, 1995, and <fifa.gg>, registered on February 13, 2017. The Complainant uses these domain names to connect to various websites through which it informs users about its activities and events, as well as for other purposes such as email and internal use.

The disputed domain name was registered on September 5, 2003, and is currently pointed to the website “www.qatarileaks.com”, which appears to be a non-profit platform used to analyze and disseminate information as a means to oppose and/or provide criticism against the Qatari government and regime.

According to the historical screenshots submitted by the Complainant, the disputed domain name was pointed, on June 1, 2014, to a webpage displaying the Complainant’s trademark FIFA, the official bid logo used by Qatar during the bidding process of the 2022 FIFA World Cup, and contact details for those interested in the disputed domain name, which included the phone number and email address of the Respondent.

Another screenshot of the website published at the disputed domain name on April 17, 2015, shows that such website made further unauthorized use of the Complainant’s trademark and displayed the statement: “FIFA2022.com proudly shows the multinational companies that support FIFA 2022 World Cup in Qatar. Only qualified Sponsors can be added to FIFA2022.com site. For any requirements regarding Sponsor add, please use our contact box”.

A further screenshot shows instead that, on October 22, 2018, the disputed domain name was redirected to a landing page without any actual content.

5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademark FIFA, as it reproduces the trademark in its entirety with the mere addition of the number “2022”, which is mostly likely to be understood by users to be a reference to the year in which the next FIFA World Cup tournament will be held.

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name because:

i) the Respondent has no connection or affiliation with the Complainant, nor has the Respondent been granted any kind of right or license to use the Complainant’s trademark FIFA;

ii) the Complainant has not found that the Respondent is commonly known by the disputed domain name and, when entering the terms “fifa” or “fifa 2022” in the Google search engine, all returned results relate to the Complainant and its business activities, as the Respondent could have easily ascertained through its searches;

iii) the Respondent has pointed the disputed domain name to the website “www.qatarileaks.com”, which seems to be primarily used as a source to provide news and information, only upon receipt of the Complainant’s cease and desist letter, while it was previously pointed to a landing page without actual content and, before, to websites featuring the Complainant’s trademarks. The Complainant therefore states that upholding any legitimate claims that the disputed domain name is being used for the purposes of criticism or free speech does not apply in the case at hand since, based on its conduct, the Respondent’s primary motivation in registering and using the disputed domain name is manifestly not one of providing a true source of criticism, but rather an attempt to sell the disputed domain name for profit, specifically for EUR 150,000, which is well in excess of registration costs;

iv) the Complainant has become a distinctive identifier associated with the term FIFA and the Respondent’s intention behind registering and using the disputed domain name is devoid of any bona fide offering of goods and services, and/or legitimate interests such as using the website as a bona fide vehicle of criticism.

The Complainant also submits that the Respondent is using the disputed domain name in bad faith and informs the Panel that, on October 22, 2018, the Respondent contacted the Complainant’s Head of Intellectual Property requesting a phone call to talk about a “domain request” and, following such a call, the Respondent sent an email communication to the Complainant stating that it was looking for EUR 150,000 for the disputed domain name.

Moreover, the Complainant informs the Panel that also the Supreme Committee for Delivery and Legacy of the FIFA World Cup Qatar 2022 received a request of EUR 150,000 from the Respondent for the transfer of the disputed domain name.

In view of the above, the Complainant concludes that the Respondent’s conduct demonstrates that that the disputed domain name was registered and held primarily for the purpose of selling it for valuable consideration in excess of out of pocket costs directly related to the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. On the email communication of March 11, 2019, the Respondent stated that it was not interested “in long disputes with FIFA” and that “FIFA can have the domain”, even though the Respondent did not feel any intellectual property rules were broken. Respondent finally stated that if FIFA would pay the Respondent “basic cost (5890 EUR)”, the Respondent was willing to “hand over the domain as soon as possible”.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these 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:

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademark FIFA based on the several trademark registrations cited in Section 4 above.

The disputed domain name incorporates the trademark FIFA in its entirety. The addition of the number “2022” (whether or not it is a reference to the year of the next FIFA World Cup tournament) and the generic Top-Level Domain (“gTLD”) suffix “.com”, does not prevent a finding of confusing similarity.

See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), providing that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See also, along these lines, RELX Inc. v. Registration Private, Domains By Proxy, LLC / Ashutosh Negi, WIPO Case No. D2019-0045.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondent, in its informal communication of March 11, 2019, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name.

As mentioned above, the disputed domain name is currently pointed to an informational website (displayed at the domain name <qatarileaks.com>) which apparently provides criticism against the Qatari government and regime, without making any reference to the Complainant or its trademark FIFA encompassed in the disputed domain name.

Nevertheless, according to the documents and statements submitted by the Complainant – which have not been challenged by the Respondent – the Respondent provided for such redirection of the disputed domain name only after receipt of the Complainant’s cease and desist letter. Moreover, the additional historical screenshots submitted by the Complainant show that the disputed domain name resolved to websites displaying the Complainant’s trademark FIFA, apparently aimed at offering the disputed domain name for sale and/or to obtain contacts from qualified sponsors of the FIFA 2022 World Cup in Qatar.

Furthermore, the Complainant has provided copy of an exchange of correspondence in which the Respondent requested an amount well in excess of the out-of-pocket costs for transferring the disputed domain name to the Complainant.

Moreover, the disputed domain name’s composition is such that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In view of the above-described use of the disputed domain name, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark FIFA in connection with the Complainant’s football’s major international championships, including the widely known quadrennial world football championship known as the FIFA World Cup, which was first held in 1930, ii) the well-known character of the trademark, recognized also in prior panel decisions (such as ISL Worldwide and the Fédération Internationale de Football Association v. ActFit.com Inc., WIPO Case No. D2001-0424), and iii) the combination in the disputed domain name of the trademark FIFA with the number “2022”, which corresponds to the year in which the next FIFA World Cup will be held, the Respondent was more likely than not aware of the Complainant’s trademark at the time of its registration of the disputed domain name.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent suggests that the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

Furthermore, the Respondent’s actual knowledge of the Complainant’s trademark is demonstrated by the explicit references to such trademark made on the websites to which the disputed domain name previously resolved, as per historical screenshots attached to the Complaint.

The Panel also finds that, based on the evidence on records showing the prior use of the disputed domain name made by the Respondent, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

The exchange of correspondence occurred between the parties before the commencement of this proceeding also shows the Respondent’s intention to offer the disputed domain name for sale to the Complainant at an amount well in excess of the out-of-pocket costs directly related to the disputed domain name (EUR 150,000) pursuant to paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith as prescribed by paragraph 4(a)(iii) of the Policy.

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 disputed domain name <fifa2022.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: April 19, 2019


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