Both of these domains, claimed FIFA, breached FIFA's rights in
its "World Cup" marks.
The US District Court for the Southern District of Florida
agreed and has granted FIFA a court order forcing Cyclelogic to
immediately remove any web sites using the CopaMundial.com and
CopaDoMundo.com domains.
According to FIFA, the district court judge has also ordered the
transfer to FIFA of the domains, in addition to corresponding trade
mark registrations and applications in 20 countries. Cyclelogic has
also been ordered to pay legal costs because its behaviour was
"knowing, wilful and intentional", according to FIFA.
"This is a major victory for FIFA in its battle against the
unauthorised use of FIFA's WORLD CUP marks on the worldwide web,"
said Jérôme Valcke, Director of FIFA Marketing and TV.
"We will continue to aggressively protect FIFA's and the FIFA
Partners' rights against the unfair commercial exploitation of
FIFA's marks and any similar ambush marketing activities in the
future. This case provides a strong legal precedent for FIFA's
future enforcement efforts," he added.
FIFA said the ruling will not prevent genuine football fans from
continuing to use the marks for their non-commercial 'fan sites' or
the press from using FIFA's marks for their editorial news
coverage.
In the US, or in the UK, such cases are often taken to a panel
of the World Intellectual Property Organisation (WIPO) or similar
bodies. On this occasion however, FIFA has taken the more expensive
route of a court action, relying on the US Anticybersquatting
Consumer Protection Act of 1999 - which has the advantage of
allowing additional remedies, including up to $100,000 in damages
for each offending domain name.
In the UK, an aggrieved trade mark owner in these circumstances
can also bring a case before national courts, but has to rely on
trade mark law and a legal wrong known as passing-off.
