ZURICH - After a mammoth legal dispute over six years and in more than six countries, the Federation Internationale de Football Assocation (FIFA) has successfully obtained a court order forcing the former US network StarMedia and its successor, Cyclelogic, Inc., to immediately remove any websites using the domain names CopaMundial.com and CopaDoMundo.com.
According to a press release by FIFA, those domain names, including their corresponding trademark registrations and applications in twenty countries, were ordered to be transferred to FIFA.
StarMedia’s use of the domain names involving the unauthorized use of FIFA’s protected WORLD CUP marks in association with FIFA’s flagship event was ended through a final judgment issued by the US District Court for the Southern District of Florida.
Due to the Defendant’s unrelenting infringement of the marks, despite FIFA’s repeated demands to cease, the judge ordered the defendant to pay FIFA’s attorney’s fees because StarMedia’s behavior was “knowing, willful and intentional”.
The order confirms that the registration and use of any domain names, for commercial purposes, incorporating any identical or similar words to FIFA’s WORLD CUP marks is illegal, including the use of local language translations of FIFA’s marks, which may be registered in English.
“This is a major victory for FIFA in its battle against the unauthorized use of FIFA’s WORLD CUP marks on the worldwide web. We were confident that the court would vindicate FIFA’s rights,” Director of FIFA Marketing & TV, Jérôme Valcke said.
In its condemnation of the conduct of violating FIFA’s rights under the Anti-Cybersquatting Consumer Protection Act, the judgment has far-reaching consequences for the protection of FIFA’s successful official website, FIFAworldcup.com.
“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.
But FIFA is keen to point out that nothing in the order prevents genuine football fans from continuing to use FIFA’s WORLD CUP marks for their non-commercial ‘fan sites’ or media from using FIFA’s marks for their editorial news coverage.