FIFA chooses wrong procedure to protect trademarks

International

In Fédération Internationale de Football Association v Mager, filed under the Start-up Trademark Opposition Policy (STOP), World Intellectual Property Organization panellist Torsten Bettinger has refused to transfer the domain name 'germany2006.biz' to the complainant. Bettinger held that the domain name, which is being used by a German national to sell automobile parts, is not identical to the complainant's trademarks and therefore cannot be transferred under STOP rules.

Although the Fédération Internationale de Football Association (FIFA), which is responsible for organizing the World Cup in Germany in 2006, has registered the trademarks WORLD CUP 2006 GERMANY and DEUTSCHLAND 2006 with the German Patent & Trademark Office, it has not registered the phrase 'Germany 2006'.

In his discussion, Bettinger stated that, although the STOP rules should not be interpreted too restrictively, one of their fundamental requirements is that the disputed domain name must be identical to the complainant's trademark. Bettinger therefore concluded that 'germany2006.biz' is not identical to any of FIFA's registered trademarks even though the phrase 'Germany 2006' is the English translation of the mark DEUTSCHLAND 2006.

In light of the clear wording of the STOP rules, it is difficult to understand why FIFA chose to pursue its opposition under this procedure rather than the Uniform Domain Name Dispute Resolution Policy (UDRP). The latter follows basic trademark law principles and allows the transfer of a disputed domain name where there is a likelihood of confusion between a trademark that is similar, but not necessarily identical, to the domain name.

However, FIFA may still have a lifeline since it is possible to file a case under the UDRP or with a civil court even if one has lost at STOP level.

Friederike Bahr, KPMG Treuhand Beiten Burkhardt GmbH, Munich

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