Futbol Club Barcelona v Chris Hartanto

WIPO Case No. D2024-0541

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Futbol Club Barcelona v. Chris Hartanto

Case No. D2024-0541

1. The Parties

The Complainant is Futbol Club Barcelona, Spain, represented by Isern Patentes y Marcas, S.L., Spain.

The Respondent is Chris Hartanto, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <barcaone.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 6, 2024. connection with the disputed domain name. Also on the same day, 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 (Registration Private) and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 7, 2024, 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 amended Complaint on February 7, 2024.

The Center verified that the Complaint [together with the amendment to the Complaint/amended 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 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 29, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 6, 2024.

The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on March 18,
2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of

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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 sports association founded in year 1899, with a functional scope that includes the participation and promotion of sports activities, the most popular of which is soccer. It is also owner of the world-wide famous football club named “Futbol Club Barcelona” (in English, “Football Club Barcelona”) and popularly and widely known as “Barça”.

The Complainant owns numerous trademarks consisting of or incorporating the word “Barça” for different products and services in different countries, including:

-	European Union trademark BARÇA, registration No. 000198598, registered on September 20, 1999.
-	United States of America trademark BARÇA, registration No. 5969877, registered on January 28,
2020.
-	Mexico trademark BARÇA, registration No 716394, registered on September 25, 2001.

The Complainant also owns several device marks for FCB (“the Device Mark”), including International
Registration number No. 1472465, registered on June 19, 2018.

The Complainant also owns several domain names exactly with the same terms of the disputed domain name, including:

- <barcaone.cat>, registered on November 3, 2023.

- <barcaone.tv>, registered on November 3, 2023.

- <barcaone.es>, registered on November 3, 2023.

The Complainant is one of the most widely supported football teams in the world, and the club has
approximately 125 million followers on Instagram, 26.1 million followers on X and 16,5 million subscribers on

YouTube.

The Complainant’s well-known trademark rights have been recognized in several decisions under the

UDRP, resulting in the cancellation or transfer of the disputed domain names to the Complainant.

The disputed domain name was registered on December 22, 2022, and the Complainant has provided
evidence showing that the disputed domain name redirects to a website at “
which is used to offer activities related to gambling and betting, displaying the phrase “Barca Toto”, and also

displaying the Device Mark with slight variations (notably, the letters “BCT” are used instead of “FCB”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

1.        the BARÇA trademark is well-known at an international level.

2. It is one of the most widely supported football teams in the world, and the club has one of the largest social media following in the world among sports teams.

3.        this well-known character of the BARÇA mark has been recognized in several decisions under the

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UDRP.

4.        the Respondent is not an authorized partner or licensee of the Complainant and has never been

authorized to use the trademark BARÇA.

5.        the Respondent registered the disputed domain name when the Complainant had well-established

BARÇA exclusive rights worldwide.

6.        the disputed domain name redirects to the website “ at which the

Respondent offers an activity for profit.

7.        the website which the disputed domain name is redirected is used to offer activities related to

gambling and betting, with the aim to lead consumers to think that they are accessing a Complainant’s
official website.

8.        the Respondent has no rights or legitimate interests in the disputed domain name.

9.        the disputed domain name incorporates the Complainant’s well-known trademark with the minor

substitution of the letter “ç” -non-existent in English- for a “c”.
10. by using the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, internet users.

11.      the reproduction in the site of an almost identical version of the Club’s official crest, as well as the

colors chosen -clearly associated to the Club- suggest that the Respondent was fully aware of the

Complainant when registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name with the minor substitution of the letter “ç” -non-existent in English- for a “c”. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

WIPO Overview 3.0, section 1.8.

Although the addition of other term “one” may bear on assessment of the second and third elements, the domain name and the mark for the purposes of the Policy.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

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legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel finds that the Respondent has registered the disputed domain name in bad
faith, to create a likelihood of confusion with the Complainant’s trademark. The Panel notes that by using the
disputed domain name the Respondent intentionally attempts to attract internet users, for commercial gain,
to its “ site by leading consumers to the mistaken belief that the Complainant is the source
of or is associated with the site and of the gambling services offered through such site.The Panel finds that

the Complainant has established the third element 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 <barcaone.com> be transferred to the Complainant.

/Gonçalo M. C. Da Cunha Ferreira/
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: April 1, 2024