Sevilla Fútbol Club Sociedad Deportiva, SAD v Cospi Investment Group

WIPO Case No. D2024-3903

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Sevilla Fútbol Club Sociedad Deportiva, SAD v. Cospi Investment Group

Case No. D2024-3903

1. The Parties

The Complainant is Sevilla Fútbol Club Sociedad Deportiva, SAD, Spain, represented by CASAS ASIN,

Spain.

The Respondent is Cospi Investment Group, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <sevillafcusabrickell.com> is registered with Squarespace Domains LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24,
2024. On September 25, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On September 25, 2024, 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 (HF Management USA, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on September
26, 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 amendment to the

Complaint on September 27, 2024.

The Center verified that the Complaint together with the amendment 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 3, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 23, 2024. The Respondent sent an email communication to the
Center on September 26, 2024.

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The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 29, 2024. 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 football club in the city of Seville, Spain, founded in the year 1890.

The Complainant has 80 seasons in the First Division and 15 national and international titles to its credit: one League (1945/46), five Cups (1935,1939, 1948, 1948, 2007 and 2010), seven UEFA Europa League titles (2006, 2007, 2014, 2015, 2016, 2020 and 2023), one European Super Cup (2006) and one Spanish Super Cup (2007). Sevilla FC occupies sixth place in the historical La Liga ranking and is the fourth club in

the country with the most international titles, only surpassed by Real Madrid, FC Barcelona, and Atlético de
Madrid. Sevilla FC was recognized as the best team in the world in 2006 and 2007 by the International

Federation of Football History and Statistics.

The Complainant is the owner of the following trademarks:

- SEVILLA FC, European Union Trademark No. 18294765, registered on March 11, 2011;

- SEVILLA FC SOCCER ACADEMY, European Union Trade Mark No. 17704636, registered on
June 30, 2018;

- SEVILLA FC SOCCER ACADEMY, United States Reg. No. 1412377, registered on January 30, 2018; The Complainant is the owner among others, of the following domain names: <sevilafc.com>, <sevilafc.es>, <sevillafc.cloud>, <sevillafc.com>, <sevillafc.es>, <sevillafcacademy.com>, <sevillafcinnovationcenter.com>, <sevillafcinnovationcenter.es>, <sevillafcsocceracademy.com>, and <sevillafcsocceracademy.es>. - SEVILLA FC SOCCER ACADEMY, United Kingdom Trade Mark No. UK00917704636, registered on
June 30, 2018.

In addition, for a period of five years the Complainant had an agreement with a United States company for the creation of football academies under the brand name “Sevilla FC Soccer Academy” for the implementation, development, and operation in the United States of football academies under the brand name Sevilla FC Soccer Academy whose sports management includes the figure of a Director-coach who teaches “Sevilla FC’s own training methodology”. The agreement was effective for a period of 5 years, until July 1, 2022.

The disputed domain name was registered on September 21, 2022.

The disputed domain name resolves to a website that contains the logo of the Sevilla FC soccer club with the
tittle “Sevilla FC Soccer Academy USA” and a photo of several soccer players wearing the Sevilla soccer
shirt. The web page also contains the tittle “Welcome to Sevilla FC Soccer Academy USA” and the message
“Miami enrollment now open. We are back, Join us for our regular season”. In the “About us” section the
disputed domain name states: “Sevilla F.C. is known for being a successful soccer club in the Andalusian
region, playing in the Spanish first division, La Liga.”. The contact information includes an email related to

the domain name <sevillafcusa.com> and a WhatsApp number.

5. Parties’ Contentions

A. Complainant

According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

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Firstly, the Complainant submits that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant.

Secondly, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name.

Thirdly, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

However, an email was sent to the Center on September 26, 2024 stating the following

“Dear […]
I hope this message finds you well.
My name is [….] and I’m the Administrative Assistant at Sevilla FC. I’m writing on behalf of the
organization in response to your recent email regarding the complaint.
We kindly request clarification on the nature of the complaint and an explanation of the current situation,
as we do not fully understand the context.
Your assistance in this matter would be greatly appreciated, and we look forward to your prompt
response.
Thank you very much.
Sincerely,
[…]
Administrative Assistant

Sevilla FC Soccer Academy USA”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name:

(i) the disputed 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 in respect of the disputed domain name; and

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

The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), WIPO Overview 3.0, section 4.3.

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 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.

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The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms “usa” and “brickell” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 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.

Here, the disputed domain name was registered after the end of the Complainant’s license agreement to offer services in the United States under its trademarks and resolves to a website displaying the Complainant’s trademarks and falsely suggesting a current affiliation with the Complaint. Absent contrary evidence from the Respondent, the Panel does not consider these activities legitimate, at least for the purposes of the Policy.

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 notes that:

- the Complainant is a well-known soccer team in Spain that has been active for more than a century;
- the Complainant had a soccer academy in the United States for five (5) years;
- the disputed domain name is confusingly similar to the Complaint’s trademark, noting also that the addition
of the terms “usa” and “brickel” are destined to give the impression that the disputed domain name is the
soccer academy of the Complainant in the United States;
- the content of the disputed domain name is itself evidence of bad faith since the Respondent is at minimum
falsely suggesting an affiliation with the Complainant: the disputed domain name resolves to a website that
contains the logo of the Complainant with the tittle “Sevilla FC Soccer Academy USA” and a photo of soccer

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players wearing the Sevilla FC shirt, and also contains in big title the phrase “Welcome to Sevilla FC Soccer
Academy USA”.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel finds that the registration and use of the confusingly similar disputed domain name to resolve to a
website displaying the Complainant’s trademarks, without authorization, attracts Internet users, for the
Respondent’s financial gain, by creating a likelihood of confusion with the Complainant’s trademarks.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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 <sevillafcusabrickell.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: November 11, 2024