Football team went after colloquial term culers.com.
Fútbol Club Barcelona (FC Barcelona) has lost a cybersquatting challenge it brought against the domain name Culers.com.
Culers is a Catalan dictionary term for supporters of the football (soccer) team. FC Barcelona’s fans are colloquially called “culés” (in Spanish language) or “culers” (in Catalan language).
The owner of the domain registered it in 2000 and was granted a trademark related to the term culer in Spain. That trademark expired ten years later.
While FC Barcelona argues that the name has been used for a century to refer to its fans, it didn’t obtain formal trademarks until after 2000. There’s also an open question on how it was used commercially, especially given inclusion in the dictionary. It seems to have begun using it commercially recently for a fan club.
World Intellectual Property Organization panelist Reyes Campello Estebaranz found that the domain was confusingly similar to a mark in which the football club has rights, and that the registrant didn’t show he had rights or legitimate interests in the domain. (I’m a bit surprised by the legitimate interests decision given that the domain owner went through the effort to get a trademark.)
However, Estebaranz found that FC Barcelona did not show that the domain was registered in bad faith. He wrote:
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.
Herrero & Asociados represented FC Barcelona and Gonzalez-Valentí Abogados represented the domain name owner.
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