Futbol Club Barcelona (FC Barcelona) recently succeeded in arbitration proceedings concerning “a clear case of cyber-squatting”. The domain name in question, <fcbarcelona.soccer>, was registered by a cyber-squatter who allegedly requested “assistance” of over $400,000 in return for transferring the domain name to the football club. An administrative panel ultimately found that <fcbarcelona.soccer> had in fact been registered for the primary purpose of selling it to FC Barcelona and, consequentially, ordered that it be transferred to the club.
The <fcbarcelona.soccer> Dispute
Ali Mohamedali of Dubai (the Respondent) registered the domain name <fcbarcelona.soccer> in August 2015. Correspondence between the Respondent and FC Barcelona followed, with the latter eventually issuing a “cease and desist” letter in April 2017. In reply, the Respondent allegedly sought “assistance” of between $400,000 and $450,000.
The Respondent, who had in fact registered two domain names containing the “FC Barcelona” brand name, allegedly claimed to have received offers of $190,000 from prospective buyers. While the Respondent later retreated from this position and requested that FC Barcelona pay only for his “time and effort”, the administrative panel found that he was still seeking to gain substantially more than out-of-pocket expenses.
On 30 June 2017, FC Barcelona submitted a complaint to the World Intellectual Property Organisation (WIPO), which in turn appointed an administrative panel to rule on the complaint. FC Barcelona claimed that:
- the domain name <fcbarcelona.soccer> was identical to its trade marks;
- the cyber-squatter had no legitimate interest in registering the domain name; and
- the domain name was registered in bad faith.
On 15 August 2017, the WIPO-appointed administrative panel ordered that <fcbarcelona.soccer> be transferred to FC Barcelona.
FC Barcelona is no stranger to domain name disputes. In 2004, it successfully challenged registrations for <fcbarcelona.net> and <fcbarcelona.org> under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). It did not however succeed in 2014, when it sought to challenge the registration of <fcb.email> under the Uniform Rapid Suspension System (a fast–track procedure). In that particular case, FC Barcelona failed to make a clear and convincing case that the registrant (an FC Bayern Munich fan) did not have a legitimate interest in the domain name.
Contributed by John Sugrue
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