WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Club Atletico de Madrid, S.A.D. v. Contact Privacy Inc., Customer 0120684445 / Miguel Garcia, M. Garcia

Case No. D2015-1659

1. The Parties

The Complainant is Club Atletico de Madrid, S.A.D. of Madrid, Spain, represented by Agencia Chanzá, Spain.

The Respondent is Contact Privacy Inc., Customer 0120684445 of Toronto, Canada / Miguel Garcia, M. Garcia of Gran Canaria, Spain.

2. The Domain Name and Registrar

The disputed domain name <atleticodemadrid.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 26, 2015. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a further amendment to the Complaint on October 2, 2015.

The Center verified that the Complaint together with the amendments to 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 October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Center received an informal pre-commencement communication from the Respondent on September 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2015.

The Center appointed Alejandro Touriño as the sole panelist in this matter on November 6, 2015. 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 is a Spanish centenary football club formed in 1903, which plays, among other trophies and competitions, the Spanish football competition "La Liga". The Complainant is currently ranked number five according to the UEFA ranking. The Complainant is well known for its men, women and youth football sections.

The Complainant is the owner of several ATLETICO DE MADRID trademarks. In particular, the Complainant owns the following trademarks with effects in Spain, the country of residence of the Respondent:

- Spanish trademark CLUB ATLETICO DE MADRID No. 0529778 in class 41, registered April 1, 1967;

- Spanish trademark ATLETICO DE MADRID 1903 No. 2884534 in classes 38 and 41, registered July 13, 2009;

- International trademark ATLETICO DE MADRID No. 1218015 in class 41, registered April 10, 2014 with several national designations worldwide.

The Complainant is also the owner of the domain name <clubatleticodemadrid.com>, registered July 26, 2000, containing in full the trademark ATLETICO DE MADRID. Also, the representative of the Complainant has been the registrant of the domain name <atleticodemadrid.es> since 2005.

The disputed domain name <atleticodemadrid.com> was registered on October 31, 2000.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name <atleticodemadrid.com> is identical to the Complainant's trademark ATLETICO DE MADRID, since they coincide in the distinctive and dominant part of the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark ATLETICO DE MADRID or to apply for any domain name incorporating its registered trademark.

The Respondent does not have any rights or legitimate interests in the disputed domain name <atleticodemadrid.com>. The Complainant also asserts that the Respondent has not been commonly known by the name "Atletico de Madrid", at any relevant time.

The Respondent does not associate the disputed domain name with a good faith offering of goods and services, since it resolves to a link index website, "www.indice.com". In addition, the Respondent has no demonstrable intention to use the disputed domain name in connection with a bona fide offering of goods or services.

The disputed domain name <atleticodemadrid.com> was registered by the Respondent primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its trademark in a domain name with the corresponding generic Top-Level Domain ("gTLD") ".com".

The Respondent uses the privacy protection service provided by Tucows Contact Privacy Inc.

The Respondent did not respond to the cease-and-desist letter sent by the Complainant in order to reach an amicable agreement with the Respondent.

As the Respondent is domiciled at Las Palmas de Gran Canaria, Spain, where the trademark and reputation of the Complainant are well known, it is extremely unlikely that the Respondent was not aware of it at the time of registration of the disputed domain name.

The Respondent has been found by previous UDRP panels to have intentionally registered certain domain names containing well-known and famous trademarks in their entirety.

B. Respondent

The Respondent did not reply to the Complainant's contentions. The informal email communication received from the Respondent was non-substantive.

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 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 is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(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 Complainant has provided evidence of ownership of trademark registrations comprising "Atletico de Madrid" as dominant element, dating from 1967.

It is well established in previous UDRP cases that, where a disputed domain name incorporates the complainant's registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). It should be noted that the distinctive part of the disputed domain name is identical to the Complainant's trademark ATLETICO DE MADRID. Typcially, when a domain name is composed in whole or in part of a trademark, neither the beginning of the URL, nor the gTLD (in this case, ".com") have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address (see NUTREXPA, S.A. v. Juan Silher, WIPO Case No. D2000-1386; The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112; and Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617).

In view of all this, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark ATLETICO DE MADRID in which the Complainant has well established trademark rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) before any notice to the Complainant of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Under the UDRP, the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production onto the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In the case at issue, by not submitting a Response, the Respondent has not discussed the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. If the Respondent had any such rights or interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint (see 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977).

On top of that, there is no evidence showing that the Respondent has any rights or legitimate interests in the disputed domain name. Indeed, in view of the Complainant's well-known trademark ATLETICO DE MADRID, the Respondent must in all likelihood have known, when registering the disputed domain name, that the Respondent could not have claimed any such rights or interests.

Furthermore, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name resolves to the website "www.indice.com", which contains no original content but only links to other websites not legitimately related to the Complainant's trademark or activities. As stated in previous UDRP decisions, the use of a domain name that merely offers links to other websites, except under certain specific conditions, is not a bona fide offering of good and services pursuant to paragraph 4(c)(i) of the Policy (see QVC, Inc. and ER Marks, Inc. v. ActiveIdeas.com, WIPO Case No. D2005-1303).

In addition, there is no indication before the Panel, that the Respondent has been authorized or licensed by the Complainant to use the Complainant's trademark ATLETICO DE MADRID in the disputed domain name. Indeed, the adoption by the Respondent of a domain name identical to the Complainant's trademark inevitably leads to the diversion of the Complainant's fans and supporters to the Respondent's website and the consequential tarnishing of the Complainant's trademark, pursuant to paragraph 4(c)(iii) of the Policy.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.

In accordance with prior UDRP decisions, the Panel finds that a failure to respond the Complaint can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008 1003, in which the Panel stated: "any such bad faith is compounded when the domain name owner, upon receipt of notice that the disputed domain name is identical or confusingly similar to a registered trade mark, refuses to respond".

In addition, noting that both Parties are located in Spain and that the Complainant's trademark is widely know in Spain, especially for football fans, the Panel finds it is also unlikely that the Respondent would not have been aware of the Complainant's famous trademark when registering the disputed domain name. In this regard, it must be taken into consideration the fact that the Respondent has been found by previous UDRP panels to have intentionally registered certain domain names containing well-known and famous trademarks in their entirety (see Excmo. Ayuntamiento de Las Palmas de Gran Canaria vs. Miguel García Quintas, WIPO Case No. D2002 0833; Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140; Port Aventura, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0751; Don Algodón H, S.A. v. Miguel García Quintas, WIPO Case No. D2000-1042; AUDI AG v. Asociación Usuarios de Internet and Miguel García Quintas, WIPO Case No. D2001-0204; Metrovacesa, S.A. v. Miguel García Quintas, WIPO Case No. D2001-0511; Eresmás Interactiva, S.A. v. Miguel García Quintas, WIPO Case No. D2001-0949; Canal Plus v. Miguel García Quintas, WIPO Case No. D2001-1227). In view of the Panel, the Respondent's prior registrations of domain names in bad faith are evidence of bad faith registration in this case too. See, e.g., Weather Shield, Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052.

The Respondent's apparent pattern of abusive registration and cybersquatting has also been found in the football sector by a previous UDRP panel. In FC Bayern München e.V v. Miguel Garcia, WIPO Case No. D2000-1773, concerning the domain name <fcbayern.com>, the Panel concluded that the Respondent had registered and used the disputed domain name in bad faith by incorporating in full a well know trademark FC BAYERN, distinctive of a German football club. In view of the abovementioned, the Panel finds that it is very unlikely that the Respondent was not aware of the notorious and well know trademark of the Complainant at the time of registration of the disputed domain name.

The Respondent's failure to respond to the Complainant's efforts to resolve this dispute is further evidence of bad faith. See Deutsche Telekom AG v. Pimptel Inc., WIPO Case No. D2005-0928.

Based on the evidence provided in the case file, the Panel finds that the Respondent, by registering and using the disputed domain name incorporating the Complainant's widely known trademark, ATLETICO DE MADRID, the effect of which is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, is evidence of bad faith. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, the fact that the disputed domain name includes the entire trademark of the Complainant is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.

The Panel, for the above reasons and in accordance with the previous UDRP cases cited by the Complainant, agrees with the Complainant's contentions that the Respondent's previous pattern of behavior of cybersquatting also constitutes bad faith on the part of the Respondent. See, in particular, Weather Shield, Mfg., Inc. v. Domain Magic, LLC, WIPO Case No. D2007-0052, where it was held that "Respondent's bad faith is also evidenced in its pattern of abusive registration, infringement, and cybersquatting."

The Panel also finds that the Respondent's use of the disputed domain name to redirect Internet users to a page with links, from which the Respondent presumably derives a form of "pay-per-click" profit, is evidence of bad faith use of the disputed domain name for the purposes of paragraph 4(b)(iv) of the Policy.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 disputed domain name <atleticodemadrid.com> be transferred to the Complainant.

Alejandro Touriño
Sole Panelist
Date: November 20, 2015