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FIFA wins World Cup trade mark dispute


Football's governing body yesterday announced that it has won a six year dispute with former US network StarMedia, now Cyclelogic, over that company's use of the domain names CopaMundial.com and CopaDoMundo.com.

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.

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