The Complainant is Paris Saint-Germain Football of Paris, France, represented by Cabinet Plasseraud, France.
The Respondent is MHP Private of Utrecht, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2019.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2019.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 4, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant Paris Saint-Germain Football, commonly known by its acronym “PSG”, is a famous French football club established in 1970 and based in Paris. The Complainant owns numerous trademarks incorporating its PSG trademark, including the French trademark registration No. 1564786, registered on February 14, 1989, and the International Registration No. 588303, registered on February 8, 1992.
The Respondent is an entity based in the Netherlands. The disputed domain name was registered on October 2, 2017 and redirects to a parking page containing sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the PSG trademark, which is reproduced in its entirety in the disputed domain name.
The disputed domain name differs from the Complainant’s PSG trademark only by the addition of the term “football”. It is the consensus view of UDRP panels that the addition of such descriptive terms does not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Moreover, the term “football” refers to the main activity of the Complainant.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is not commonly known by the disputed domain name, not affiliated with the Complainant, not authorized to use the disputed domain name by the Complainant, and not making any bona fide use of the disputed domain name.
Furthermore, UDRP panels have found that the use of a domain name to host a parked page comprising (sponsored) pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (WIPO Overview 3.0, section 2.9).
Based on the Complainant’s credible contentions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It can be inferred in the present case that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.
The disputed domain name resolves to a landing page containing sponsored links. Particularly with respect to “automatically” generated pay-per-click links, UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith (WIPO Overview 3.0, section 3.5).
It should also be noted that that MX records have been set up by the Respondent on the disputed domain name (Annex 18 to the Complaint). This is a clear indication that the Respondent has made preparations to circulate emails with a handle “@”, i.e. messages that could potentially contain spam or (fraudulent) phishing emails (see WIPO Overview 3.0, section 3.4).
Under these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent for commercial gain (in the sense in paragraph 4(b)(iv) of the Policy). Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Date: February 18, 2019
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