Culers.com, a domain related to fans of the soccer (football) team Barcelona, was struck with a UDRP at the WIPO.
Registered in 2000, Culers.com doesn’t seem to have been used actively or developed. Fútbol Club Barcelona, Spain, challenged the domain citing various trademarks that contain the “CULE” mark.
Cul literally means “backside” in Catalan. The Barcelona fans use it to describe their fan base when attending the games, according to one source.
The Respondent in this UDRP is also Spanish and mentioned the 20 year old age of the domain; the WIPO panelist agreed:
Final decision: deny transfer of the domain. The Respondent’s request for a finding of Reverse Domain Name Hijacking was also denied.
Fútbol Club Barcelona v. Oriol Gifra Durall
Case No. D2021-1412
1. The Parties
The Complainant is Fútbol Club Barcelona, Spain, represented by Herrero & Asociados, Spain.
The Respondent is Oriol Gifra Durall, Spain, represented by Gonzalez-Valentí Abogados, Spain.
2. The Domain Name and Registrar
The disputed domain name <culers.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 May 6, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2021, 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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Response was filed with the Center on May 27, 2021. On June 3, 2021 the Complainant filed a supplemental filing.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on June 8, 2021. 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 professional football club based in Barcelona (Catalonia, Spain), which was founded in the year 1899 and is commonly known as Barcelona, Barça, Barsa, or the Blaugrana team. The Complainant’s club includes not only professional and amateur football sections, but other various professional and amateur sections in different sports like basketball, handball, roller field hockey, athletics, skating, volleyball, rugby, etc. One of the hallmarks of the club is its member and fan base, currently reaching more than 140,000 members, which makes it the club with the second-largest membership in the world. The Complainant has millions of followers on social networks, including 36.4 million followers on Twitter, 96.2 million followers on Instagram and more than 103.7 million followers on Facebook. Prior decisions under the Policy have recognized the Complainant is a renowned soccer team being its trademarks FC BARCELONA, BARÇA, and BARSA well known worldwide.1
The Complainant’s fans and supporters are colloquially called “culés” (in Spanish language) or “culers” (in Catalan language), plurals of “culé” or “culer” respectively, terms which origin dates back to the second decade of the 20th century, deriving from the way these fans were sited on the walls of the Complainant’s stadium during these years. The term “culers” is currently used to identify the Complainant’s premium membership services platform (“Culers Premium Membership”), which is included in its official website “www.fcbarcelona.cat”.
The Complainant has a substantial portfolio of registered trademark rights, including various trademark registrations that comprise the terms “cule”, “culer”, or “culers”:
– International Trademark Registration No. 1577781, CULERS, word, registered on September 23, 2020, in classes 9, 16, 18, 21, 24, 25, and 41;
– Spanish Trademark Registration No. M2892775, CULER, word, registered on February 1, 2010, in classes 25 and 41;
– Spanish Trademark Registration No. M1021591, CULE, figurative, registered on September 20, 1983, 2010, in class 9;
– Spanish Trademark Registration No. M1021594, CULE, word, registered on October 5, 1983, in class 14;
– Spanish Trademark Registration No. M1021595, CULE, word, registered on February 20, 1984, in class 16;
– Spanish Trademark Registration No. M1021598, CULE, word, registered on September 5, 1983, in class 21;
– Spanish Trademark Registration No. M1021743, CULE, word, registered on July 20, 1984, in class 28;
– Spanish Trademark Registration No. M1021751, CULÉ, figurative, registered on September 2, 1983, in class 41; and
– Spanish Trademark Registration No. M1021752, CULE, word, registered on September 2, 1983, in class 42.
The Complainant is also the owner of various domain names corresponding to its trademarks, including the domain name <culers.es> (registered on March 13, 2020) and <culers.cat> (registered on July 19, 2020), which are redirected to its official website.
The disputed domain name was registered on July 27, 2000, and it is currently inactive resolving to an Internet browser error indicating that it is not possible to access to the website. According to a screen capture included in the Complaint, the disputed domain name has been linked to a parked website including pay-per-click (PPC) links related to the Complainant and to third parties’ websites in various sectors (including word processors, signed documents, and cooling fans).
The Respondent had a trademark registration comprising the term “culers” that expired on March 28, 2012, namely Spanish Trademark No. M2340882, CULERS, word, registered on July 5, 2001, in class 42. On November 21, 2001, the Respondent applied for the registration of two other trademarks in different classes comprising the term “culers”, which were denied by the Spanish Patent and Trademark Office due to various oppositions filed, among others, by the Complainant.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
As it has been recognized by prior decisions under the Policy, the trademarks FC BARCELONA and BARÇA (or BARSA) are well known. The Complainant is member of a leading brands of Spain forum (Foro de Marcas Renombradas) and various publications have recognized these trademarks (FC BARCELONA and BARÇA or BARSA) among the most valuable sports brands in the world. Various news about the Complainant include the terms “culé” or “culers”, and any Internet search for these terms verifies that the results obtained refer to the Complainant’s club, being the trademarks CULE, CULER, and CULERS also well known.
The disputed domain name is identical or practically identical to the Complainant’s trademarks. The disputed domain name reproduces it its entirety the mark CULE adding, at its end, the letters “rs”, which turns the term “culé” into plural and forms the mark CULERS. As the term “culers” is commonly used to identify the Complainant’s club supporters, it enhances the likelihood of confusion and association between the disputed domain name and the Complainant’s trademarks, and the generic Top-Level Domain (“gTLD”) “.com” is usually disregarded under the confusing similarity test. The disputed domain name is further practically identical to the Complainant’s domain name <culers.es>, which redirects to its official website.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trademark rights comprising the terms “culer” or “culers”, has not been licensed or otherwise authorized to use the Complainant’s trademarks, and there is no relationship between the Parties. The disputed domain name is not used for a bona fide offering of goods or services, being inactive (linked to a parking website including PPC, which screen capture in reproduced in the Complaint).
The disputed domain name was registered and is being used in bad faith. As the Complainant and its trademarks are well-known and its first registration of the mark CULE (in 1983) predates the registration of the disputed domain name, the Respondent was necessarily aware of the existence of this brand (CULE) when registering the disputed domain name, particularly considering that, according to the WhoIs record, the Respondent in located in Barcelona. The disputed domain name is not being used to offer products or services or to carry out a legitimate professional activity. On July 21, 2020, the Complainant sent a cease and desist letter to the Respondent through the Registrar’s platform, and a subsequent reminder to an email address that seems to belong to the Respondent, with no reply. The disputed domain name was registered targeting the Complainant’s trademarks with the intention to avoid that the Complainant could register it and probably to get an economic benefit from its sale, infringing the Complainant’s trademarks and trying to benefit from the Complainant’s reputation. In addition, “the Respondent was ordered on July and September 2020, to transfer the domain to the Complainant because of having registered it in bad faith”. The fact that Respondent has engaged in a pattern of registering similar domain names, is an evidence of bad faith in accordance with paragraph 4(b)(ii).
The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.
After the Response, the Complainant filed a supplemental filing indicating that in the light of the new information provided by the Respondent, it considered “convenient and necessary to make some clarifications and complementary allegations”.
In its supplemental filing the Complainant essentially reiterates prior allegations and indicates that the fact that the Complainant has allowed 20 years to pass since the registration of the disputed domain name, does not prove its lack of interest in the disputed domain name, as it was unaware of its existence. Equally, for lack of knowledge, not for lack of standing, the Complainant indicates that it did not oppose or canceled the Respondent’s trademark (Spanish Trademark No. M2340882, CULERS). The fact that the term “culers” is descriptive of the services offered by the Complainant, being associated with its fans, does not imply that anyone can use it, thereby infringing the Complainant’s rights. The content that the Respondent wishes to host in the domain name (provided in its Response), does not justify the use of the Complainant’s trademarks and corroborates the Respondent’s bad faith targeting the Complainant’s reputed trademarks with the intention to attract traffic to its site, as the Respondent’s site capture displays the club’s logo and slogan. Although it is a fan site, the Respondent is not entitled to register a domain name identical to the Complainant’s trademark.
Key contentions of the Response may be summarized as follows:
The disputed domain name was registered 20 years before the Complainant’s trademark CULERS, and generates no confusion with any of the Complainant’s brands. The Respondent’s trademark CULERS (Spanish Trademark No. M2340882, CULERS) was applied for on August 11, 2000. The Complainant did not file any opposition to the registration of this trademark accepting its registration, which evidences that both this trademark and the disputed domain name generate no conflict with the Complainant or its trademarks. The disputed domain name is 20 years older than both the Complainant’s trademark and the domain name comprising the term “culers”, and during all these years there has been a tolerance and peaceful coexistence, not having the Complainant sent any cease and desist letter or any other communication to the Respondent, because it was. During these years, the Complainant was only interested and had rights over the mark CULE, while it did not use for commercial purposes this term (“culé”) or the term “culers” over the Internet or on its social media pages.
The terms “culés” and “culers” are used freely independently from any commercial and lucrative aspects, and should be considered and preserved for public use. The terms “culers” has been used for two centuries in popular culture and the Complainant has never wanted to appropriate it for commercial purposes. This term (“culers”) describes in a casual manner the Complainant’s supporters, being a vulgarized term of public domain (for social use) with a non-exclusive relationship with the Complainant’s official branding or image rights. This term has never been a commercial brand of the club nor has it been the name of the club (which is FC BARCELONA), and nor is it the name used by its affiliated club members. The term “culer” refers to a supporter or fan of the Complainant’s club, to a social mass of millions of people who do not necessarily have any link or affiliation with the Complainant (beyond that they like soccer and its team), but not to its official members, staff, or partners. The term “culers” in included in the Catalan official dictionary (of l’Institut d’Estudis Catalans) indicating, among other meanings, that its meaning is “barcelonistes”, fans of Barça or FC Barcelona soccer team. On the contrary, in 1940, the Complainant created the term “penyes” to refer to the group of official supporters financed by the club. The Respondent includes various links to the Catalan official dictionary and Wikipedia to corroborate these allegations.
Furthermore, the terms “culés” and “culers” are in different languages (the first is Spanish and the second Catalan), so it is almost impossible for someone to get confused when writing these terms on the Internet because both are in different languages and a person using one language does not change to another.
The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, misleadingly divert consumers or to tarnish the Complainant’s trademarks. The disputed domain name was registered in good faith with the aim to create a global Internet project dedicated to the supporters of the Complainant’s soccer team that failed to become a reality due to “the .com crisis in 2001”. A screen capture of the project’s website of 2000 is included in the Response. During the following years, various projects related to the disputed domain name have been postponed for lack of funding, but, in the last few years, the Respondent is working to launch a new fan community project, which is being developed by Keblar Solutions, a cloud solutions and services company that provides services and solutions in the field of sports. The Respondent has no intention to take advantage of the Complainant or its trademarks, being only a fan with the motivation of developing an online platform for other fans, which started more than 20 years ago and is being developed little by little, investing vast amounts of time and resources beyond its professional obligations.
The burden of proof falls on the Complainant, but it has not proven (because there is no) any unfair act or act of bad faith on the part of the Respondent. The size, resources, or power of the Complainant should not be not taken into account. The Parties are not competitors and the disputed domain name was registered 20 years before the Complainant’s rights related to the term “culers”, for a noncommercial or fair use purpose that has not yet come to fruition. The Respondent has not received any cease and desist communication from the Complainant, being the first email received related to this conflict an email communication sent by the Center dated May 11, 2021. Upon receiving the said communication, the Respondent tried to contact the Complainant’s director of legal services to find an amicable solution, with no response. The Respondent is a professor and a specialist in digital marketing, who has led different technology companies since 1997 and have worked with various clients having to register various domain names to launch projects for these clients, not having any prior complaint or case under the Policy. The Complainant’s accusations of being a hacker or cybersquatter with a pattern of registering domain names in bad faith are false. The Respondent is a person of integrity who loves the Complainant’s club and even helped to prevent cyberattacks conducted against its official website by Chinese hackers (in February 2020), warning the Complainant’s technological services department.
The Complainant has acted in a dominance position by registering the mark CULERS and the domain name <culers.es> (in 2020), 20 years after of the Respondent’s registrations, without any prior communication or notification during these years. The Complaint has been filed in bad faith, in an attempt to steal the disputed domain name. Despite the Complainant’s trademark CULE is registered since 1983, the Complainant has never registered the corresponding domain name (<cule.com> or <cules.com>), which evidences that it has never been interested in using this mark over the Internet (through such domain names or the disputed domain name), for almost 30 years. On July 2020, the Complainant registered its first domain name related to the term “culers”, <culers.cat>, which is used to redirect traffic to the Complainant’s official website. The Complainant’s real aim is to use all domain names related to the term “culer” (including the disputed domain name) to increase the traffic of its official website. The Complaint is neither legitimate nor respectful with all current fans, Internet and social media users who popularly use the term “culers” freely without bad faith.
The Respondent reserves all legal actions that may assist it to defend its honor and request the denial of the remedies requested by the Complainant.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Supplemental filing
Paragraph 10 of the Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, providing that in all cases, the panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case
Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. It is generally considered that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response. See section 4.6, WIPO Overview 3.0
The Complainant is expected to anticipate and address likely plausible Respondent defenses with supporting arguments and evidence in its Complaint, and, if the Response raises defenses that could not reasonably have been anticipated, the Complainant may request that the Panel provide an opportunity to address such unanticipated defenses, which may also include a rebuttal opportunity for the Respondent.
The Complainant has filed an unsolicited supplemental filing indicating, as sole justification, that in the light of the new information provided by the Respondent, it considered “convenient and necessary to make some clarifications and complementary allegations”.
It is the view of the Panel that the only exceptional circumstance in the Response that may have been unanticipated by the Complainant is the existence of a prior registered trademark comprising the term “culers” owned by the Respondent, if, as indicated in its supplemental filing, the Complainant was not aware of its existence. Therefore, the Panel will only take into account the Complainant’s allegations related to the fact that it did not oppose or cancel this trademark registration for lack of knowledge and not for lack of standing.
All other allegations included in the Complainant’s unsolicited supplemental filing will not be taken into account, as there are no exceptional circumstances to allow a supplemental filing related to them. The Panel considers that accepting a supplemental filing related to them would imply an unjustified different treatment to the Complainant unless the Respondent would be given a rebuttal opportunity, which would imply an unjustified and unnecessary delay to the proceeding.
B. Identical or Confusingly Similar
The Panel notes that the disputed domain name was registered before some of the Complainant’s trademarks. This circumstance does not by itself preclude the Complainant’s standing to file this case, nor a Panel’s finding of identity or confusing similarity under the first element, albeit this circumstance may be taken into account in the analysis of the second and third elements of the Policy. See section 1.1.3, WIPO Overview 3.0.
It is well accepted that the first element functions primarily as a standing requirement. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy, and the applicable generic Top-Level Domain (“gTLD”) is considered a standard technical registration requirement, generally disregarded under the first element confusing similarity test. See sections 1.7 and 1.11.1, WIPO Overview 3.0.
The Complainant has rights in the registered trademarks CULE, CULER, and CULERS, by virtue of its trademark registrations. The disputed domain name incorporates these trademarks in their entirety adding to the first two marks CULE and CULER, the letters “rs” or “s” respectively, and being identical to the mark CULERS. The Complainant’s trademarks are recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.
It is further to be noted that, contrary to the Respondent’s allegations, a domain name that consists or is comprised of a translation or transliteration of a trademark will normally be found to be identical or confusingly similar to such trademark. See section 1.14, WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate Interests
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 Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence as set out above effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Respondent has alleged that it registered the disputed domain name for a noncommercial or fair use purpose that has not yet come to fruition. It alleges that its aim was to create a website dedicated to the supporters of the Complainant’s soccer team that failed due to the “.com crisis in 2001”, provides a screen capture of its projected website in 2000, and indicates that during the following years, various similar projects under the disputed domain name were postponed for lack of funding. Within its initial project, the Respondent provides evidence of having acquired trademark rights related to the term “culer” in Spain, which were valid and in existence during 10 years since its trademark registration in 2000 (until its expiration).
The Respondent further indicates that during the last few years, it has been working to launch a new fan community project, which is being developed by Keblar Solutions, a cloud solutions and services company, which provides services and solutions in the field of sports.
The Panel notes that the Respondent’s projected website (in 2000), according to the screen capture provided, displays a site, in Catalan language, containing information related to the Complainant’s soccer team, including its league agenda, programed retransmissions on television, a forum for exchange of merchandising or other articles related to the team, information about newcomers and star players, etc. This website include in its heading the emblem of the Complainant’s club and a cup, and the disputed domain name above the tagline “…som més que un club…” in smaller letters. This website further includes various icons like an image of a shopping bag (with the logo of the Complainant’s club) or a stadium, which presumably were intended to include links to the boutique and the tickets box of the club. The Panel notes that these icons and other images included in this site (like an old television, and not a flat screen television) as well as the general appearance or design of the site look old or outdated.
The Panel further notes that the Respondent has not provided any evidence supporting its allegations of a new fan community project, and that it has passed more than 20 years since the registration of the disputed domain name with no fruition of the Respondent’s various projects. The Respondent has admitted not having used the disputed domain name for all these years.
With reference to demonstrable preparations in connection with a bona fide offering of goods or services or a noncommercial or fair use purpose, panels generally consider that, if the alleged preparations are not independently verifiable, they should be inherently credible and supported by relevant pre-complaint evidence. It is further considered that the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual. See section 2.2, WIPO Overview 3.0.
It is important to note that in order to assess claimed rights or legitimate interests, the point in time to consider is the present, in view of the circumstances prevailing at the time of the filing of the Complaint. See section 2.11, WIPO Overview 3.0.
Therefore, the Panel considers that the Respondent’s allegations with reference to its noncommercial or fair use purpose should have been supported by relevant evidence related to its alleged preparations related to a new fan platform project.
The Panel further considers important to clarify that the fact that the Respondent registered a trademark comprising the term “culer” (even if that trademark would still be valid), does not automatically confer rights or legitimate interests on the Respondent. See section 2.12, WIPO Overview 3.0.
On the other hand, the Panel further notes that, according to a screen capture of the disputed domain name content included in the Complaint, the disputed domain name has been linked to a parked website including PPC links. Such use may represent a bona fide offering only if such links do not compete with or capitalize on the reputation and goodwill of the Complainant’s mark, or otherwise mislead Internet users. It may be accepted, for instance where the domain name consists of dictionary word and is used to host PPC links genuinely related to the dictionary meaning of such word, and not to trade off the complainant’s (or its competitor’s) trademarks. See section 2.9, WIPO Overview 3.0.
The Respondent has alleged and proved that the term “culers” is the plural of the term “culer”, included in the Catalan dictionary with, among others, a meaning related to the members or fans of the Complainant’s club. The PPC links included in the parked site linked to the disputed domain name were related to sites not genuinely in connection to the said meaning (or other meanings of the word “culers” according to the Catalan dictionary), but to third parties’ websites in various sectors including word processors, signature of documents, or cooling fans. Therefore, the Panel considers that this use (related to PPC links) may not support and is not consistent to any rights or legitimate interests under the Policy.
In connection to the Respondent’s allegations related to the term “culers” being a dictionary vulgarized term of public domain (for social use), it is further important to clarify that the fact that the disputed domain name is comprised of a dictionary word does not by itself automatically confer rights or legitimate interests on the Respondent. The domain name should be genuinely used or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning. See section 2.10, WIPO Overview 3.0.
Under these circumstances, the Panel cannot consider that the Respondent has rebutted the Complainant’s prima facie case. Particularly, taking into consideration the long period of time elapsed since the registration of the disputed domain name with no fruition of any of the Respondent’s alleged projects, and the lack of evidence provided in connection to its last and current alleged fan platform project. The Panel considers that it would have been possible for the Respondent to provide any evidence related to its last and current project, like any correspondence or contracts signed with its developing company, any testing website porotypes already designed, etc., but the Respondent has not provided any such evidence.
Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel wishes to clarify that in order to assess the third element of the Policy the point in time to consider is not only the present or the circumstances prevailing at the time of the filing of the Complaint (which may refer to the use of the disputed domain name), but also to point in time when the disputed domain name was registered.
The Panel finds that although the Complainant’s trademarks FC BARCELONA, BARÇA, and BARSA are well known worldwide, as it has been recognized by prior decisions under the Policy, 2 the Complainant has not provided sufficient evidence of the alleged well known character of its trademarks CULE, CULER, and CULERS at the time of the registration of the disputed domain name.
The Panel notes that most of the evidence provided by the Complainant in connection to the alleged well known character of its trademarks, is referred to the trademarks FC BARCELONA, BARÇA, and/or BARSA, and not to the relevant marks CULE, CULER, and/or CULERS, including only an article that specifically refers to the terms “culé” and “culers”. This article includes the term “culé” in its title (“La Cartuja will dress as culé in the Cup final”, which may be translated as La Cartuja –which is the Seville stadium – will dress as culé in the final cup), and refers to a slogan that will be displayed behind one of the stadium goals (“Sempre culers! Sempre amb vosaltres!, Siempre culés! Siempre con vosotros!)”, which can be translated as “Always culers! Always with you!). The Panel considers that in this publication, the terms “culé” and “culers” are used in connection to their dictionary meaning and not as an indication or identifier of the Complainant’s products or services, and, in any event, the Panel notes that this publication is dated April 16, 2021.
The evidence provided by the Complainant further includes a print out of a search conducted over the Internet regarding the term “culer”, noting the Panel that one of the listed results dated June 3, 2020, indicates that the Complainant launched that date its new platform “CULERS Premium Membership”.
The Complainant has not provided any other evidence related to the alleged renown or notoriety of its trademarks CULE, CULER, or CULERS (before the registration of the disputed domain name), apart from references to the historical origin of these terms and their colloquial use to refer to the Complainant’s club supporters.
In the view of the Panel, these evidences are insufficient to consider that these trademarks were well known (or even used as trademarks by the Complainant) at the relevant point in time.
Under these circumstances, it is difficult to consider that the Respondent knew or should have known about the Complainant’s trademarks when it registered the disputed domain name. The Panel finds, in a balance of probabilities, the Respondent knew that the term “culer” was commonly used to identify the Complainant’s club supporters, but no evidence in the file suggests that it may probably have known, when registering the disputed domain name, that the Complainant had registered the Spanish equivalent term “culé” as a trademark.
It is further to be noted that some of the Complainant’s trademarks, specifically the marks CULER and CULERS, were registered after the registration of the disputed domain name (in more than 10 years in the case of the mark CULER, and more than 20 years in the case of the mark CULER). In this type of scenario, where the disputed domain name was registered before the Complainant acquired trademark rights, panels do not normally find bad faith on the part of the respondent, unless very specific circumstances proved by the Complainant apply. See section 3.8, WIPO Overview 3.0.
In this respect, the Complainant has alleged that the Respondent has engaged in a pattern of registering similar domain names indicating textually “the Respondent was ordered on July and September 2020, to transfer the domain to the Complainant because of having registered it in bad faith”. However, no evidence in the file supports this allegation.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has performed a limited research looking for prior cases under the Policy where the Respondent may be have been involved, finding none.
Under all these cumulative circumstances, in the point of view of the Panel, in a balance of probabilities, it is difficult to consider that the Respondent targeted the Complainant and/or its trademarks when it registered the disputed domain name, before the registration and use by the Complainant of the Catalan dictionary terms “culer” and “culers” as trademarks.
Other circumstances of the present case indicate that, in a balance of probabilities, the Respondent may have been acting in good faith when it registered the disputed domain name, including inter alia:
(i) the fact that the Respondent chose to use in the disputed domain name a term included in the Catalan dictionary, not identical to the one already registered as trademark at that time by the Complainant or to the Complainant’s reputed trademarks FC BARCELONA, BARÇA, and/or BARSA;
(ii) the fact that no evidence in the file shows that the Respondent tried to sell the disputed domain name to the Complainant, to any of its competitors or to any third party; and
(iii) the fact that the Respondent included its complete name in the WhoIs record of the disputed domain name.
Under these circumstances, the Panel finds that the Complainant has not met its burden of establishing that the Respondent registered the disputed domain name in bad faith.
The Panel wishes to clarify that this decision do not imply considering the Respondent’s conduct as legitimate from the point of view of other legal areas, such as Intellectual Property or Competition Law, which consideration exceeds the limited scope of this proceeding corresponding to other competent forums.
This decision is limited to the scope of the Policy, relating only to cases of “cybersquatting”, where the disputed domain name has been registered and is being used in bad faith. Consequently, the Panel wishes to clarify that this decision should not be understood as an approval of the Respondent’s registration and use of the disputed domain name, and does not prevent the Complainant from going to other competent forums.
E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules states that Reverse Domain Name Hijacking (“RDNH”) means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Paragraph 15(e) of the UDRP Rules provides that, if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Respondent alleges that the Complaint was filed in bad faith “in an attempt to steal the disputed domain name”. The Respondent indicates that the Complainant was not interested in using its trademark CULE since its registration (almost 30 years ago), and registered mark CULERS only a year before the Complaint (after more than 20 years of not being interested in this mark or the disputed domain name). The Respondent further indicates that during all this time, it received no prior communication or notification from the Complainant (not even the cease and desist letter and subsequent reminder allegedly sent before the Complaint by the Complainant), and the Complainant has not claimed the disputed domain name.
The Panel finds that the Complainant’s conduct during this proceeding is not uncommon, and the Complainant evidently and understandably wanted to add the “.com” extension of its domain names comprising its trademark CULER, being conscious that the disputed domain name is inactive and, at the time of filing the Complaint, linked to a parked website including PPC links. The facts that the Complainant’s registration for the mark CULER is recent (2020) or that the Complainant did not claim the disputed domain name before do not imply bad faith. Furthermore, trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of.
Therefore, the Panel finds that the Complaint was not brought abusively.
For the foregoing reasons, the Complaint is denied.
Reyes Campello Estebaranz
Date: June 22, 2021
1 See Futbol Club Barcelona c. B.P, WIPO Case No. D2014-1189; Futbol Club Barcelona v. Ali Mohamedali, WIPO Case No. D2017-1257; and Futbol Club Barcelona v. Javier Garcia de Leániz, WIPO Case No. D2017-1308.
2 See Futbol Club Barcelona c. B.P, supra; Futbol Club Barcelona v. Ali Mohamedali, supra; and Futbol Club Barcelona v. Javier Garcia de Leániz, supra.
Copyright © 2021 DomainGang.com · All Rights Reserved.