WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fédération Internationale de Football Association (FIFA) v. Tae Sung Park

Case No. D2020-2505

1. The Parties

The Complainant is Fédération Internationale de Football Association (“FIFA”), Switzerland, represented by Pointer Brand Protection and Research, Netherlands.

The Respondent is Tae Sung Park, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <fifashop.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 September 28, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2020, 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 October 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2020.

The Center appointed William R. Towns as the sole panelist in this matter on November 4, 2020. 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, founded in 1904 and incorporated in Switzerland, is the international governing body of a football association presently comprising 211 member associations. The Complainant is the organizer of world championship football tournaments, including the widely known quadrennial world football championship known as the FIFA World Cup, the first of which was held in 1930. According to the Complainant, the final of the 2018 FIFA World Cup attracted a viewing audience of over 1.1 billion persons.

The Complainant is the owner of numerous trademark registrations for its FIFA marks, including the following:

- Swiss Trademark Registration No. 2P-415299 for FIFA, registered on February 22, 1995;

- International Trademark Registration No. 633108 for FIFA, registered on February 22, 1995;

- Korean Trademark Registration No. 378507 for FIFA, registered on October 17, 1997;

- Korean Trademark Registration No. 394886 for FIFA, registered on February 10, 1998;

- International Trademark Registration No. 747778 for FIFA (figurative mark), registered on June 2, 2000;

- Korean Trademark Registration No. 75043 for FIFA (figurative mark), registered on April 11, 2002;

- Korean Trademark Registration No. 73675 for FIFA (figurative mark), registered on February 19, 2002 (registered in Class 35 for advertising, including internet advertising).

The Complainant holds several domain names incorporating the FIFA mark, including <fifa.com>, registered on August 9, 1995, <fifa.org>, registered on January 10, 1995, and <fifa.gg>, registered on February 13, 2017. The Complainant explains that the domain names are used to inform users of its activities and events, as well as for internal purposes and email service.

The disputed domain name <fifashop.com> was registered on January 20, 2005, according to the Registrar’s WhoIs records. The disputed domain name until recently had been redirected by the Respondent to a website at “www.fifakorea.net” (“FIFA Korea website” or “Respondent’s website”) which prominently displays the Complainant’s FIFA mark, features advertising and solicits advertising services.

The Complainant issued a notice letter to the Respondent on August 5, 2020, with a second communication directed to the Respondent on September 14, 2020. The Respondent did not acknowledge either of the Complainant’s communications; however, it appears that the Respondent for now has suspended the redirection of the disputed domain name to the Respondent’s website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <fifashop.com> is confusingly similar to the Complainant’s FIFA mark and incorporates the mark in its entirety. The Complainant maintains that the descriptive term “shop” does not dispel the confusing similarity of the disputed domain name to the Complainant’s FIFA mark, and observes that the generic Top-Level Domain (“gTLD”) “.com” typically is disregarded for purposes of evaluating the confusing similarity of the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that it has not authorized, licensed, or otherwise permitted the Respondent to use the FIFA mark in the disputed domain name or for any other purpose. The Complainant submits that the Respondent prior to notice of the dispute was not using the disputed domain name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainant maintains that the Respondent has not been commonly known by the disputed domain name, and has no registered trademarks or trade names that correspond to the disputed domain name.

The Complainant contends that the Respondent’s use of the descriptive term “shop” in the disputed domain can be interpreted by Internet users as a website related to an official shop run by the Complainant, thus precluding any noncommercial use of the disputed domain name. The Complainant reiterates that the disputed domain name has been used to redirect Internet users to the Respondent’s website, where FIFA-related content and commercial advertisements are displayed. The Complainant submits this creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the Respondent’s website content. The Complainant concludes that the Respondent’s website does not accurately and prominently disclose the Respondent’s relationship with the Complainant, and that as such the use of the disputed domain name cannot be considered “fair” under well-established UDRP precedent.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the disputed domain name was registered on January 20, 2005, long after the Complainant’s registration of its FIFA marks. The Complainant maintains that its world football championship FIFA World Cup and FIFA trademarks have been well known internationally for many years in the sports industry, making it unlikely that the Respondent would have been unaware of the Complainant and the Complainant’s FIFA mark when registering the disputed domain name.

The Complainant contends that the Respondent was aware of and acted to exploit and profit from the Complainant’s FIFA marks. The Complainant points to screenshots captured by the Internet Archive reflecting the Respondent’s redirection of the disputed domain name to the Respondent’s website from least May 16, 2017 to August 5, 2020. The Complainant asserts that the Respondent for commercial gain intentionally redirected the disputed domain name to the Respondent’s website in order to create a likelihood of confusion with the Complainant’s FIFA mark. The Complainant further submits that the non-use of the disputed domain name would not prevent a finding of bad faith under the doctrine of passive holding.

The Complainant reiterates that the disputed domain name was used by the Respondent to redirect to the Respondent’s website, and does not accurately and prominently disclose the Respondent’s (lack of a) relationship with the Complainant. The Complainant observes that the Respondent by registering and using the disputed domain name has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s FIFA mark. The Complainant concludes that the Respondent’s behavior constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.

The Complainant notes that since the issuance of its cease and desist letter on August 5, 2020, the Respondent has ceased redirecting the disputed domain name to the Respondent’s website. However, the Complainant emphasizes that the Respondent’s non-use of the disputed domain name (described by the Complainant as a “blank page”), does not preclude a finding of bad faith under the doctrine of passive holding.

The Complainant maintains that the use of the word “shop” in the disputed domain name easily could be understood by Internet users as related to FIFA and the official FIFA online stores. The Complainant maintains that there is no plausible future active use of the disputed domain name by the Respondent that would be legitimate and not infringing on the Complainant’s well-known mark.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <fifashop.com> is confusingly similar to the Complainant’s FIFA mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s FIFA mark is recognizable in the disputed domain name.² The inclusion of the descriptive term “stop” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy. ⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s FIFA mark. Nevertheless, the Respondent has registered the disputed domain name, which misappropriates the Complainant’s distinctive FIFA mark. As previously noted, the disputed domain name has been redirected by the Respondent to the Respondent’s website, which prominently displays the Complainant’s FIFA mark on the Respondent’s website, and from which the Respondent solicits advertising.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it 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.

The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Panel considers that the Respondent in all likelihood registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s distinctive FIFA mark. The Panel concludes from the record in this case that the Respondent was aware of the Complainant and had the Complainant’s FIFA mark in mind when registering the disputed domain name. The disputed domain name appropriates the Complainant’s FIFA mark in its entirety, and Internet users redirected by the disputed domain name to the Respondent’s website likely would expect the website at which they have arrived to be affiliated with, sponsored, endorsed or in some manner associated with the Complainant.

In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain name in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and the Complainant’s distinctive FIFA mark when registering the disputed domain name. The Panel concludes that the Respondent in all likelihood registered the disputed domain name seeking to exploit and profit from the Complainant’s distinctive mark.

The Complainant has provided evidence that the prior use of the disputed domain name was to redirect to the Respondent’s website, which prominently displayed the Complainant’s FIFA mark and featured advertising and solicits advertising services, is evidence of bad faith use within the meaning of paragraph 4(b)(iv) of the Policy.

Furthermore, the Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”. “[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.

The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. As previously noted, the Complainant’s FIFA mark is well known and distinctive, and it is clear beyond cavil that the Respondent was aware of and targeted the Complainant’s mark when registering the disputed domain name. Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. The Respondent’s conduct in these circumstances suggests opportunistic bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <fifashop.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: November 18, 2020

¹ See WIPO Overview 3.0 , section 1.7 .

² See WIPO Overview 3.0, section 1.8. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

³Id.

⁴ See WIPO Overview 3.0 , section 1.11.