The Complainant is The Football Association Premier League Limited, United Kingdom, represented by Lane IP Limited, United Kingdom.
The Respondent is Joso Silva, Portugal. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CloudFlare, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On August 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 August 12, 219.
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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 16, 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 is an English professional league for football teams. The Complainant owns multiple trademark registrations for the PREMIER LEAGUE word and word and design mark, such as the United Kingdom trademark No. 2147888 registered on April 6, 1999 for the word mark PREMIER LEAGUE.
The Respondent registered the Domain Name on November 14, 2016. The Domain Name directs to a website displaying the Complainant’s PREMIER LEAGUE trademark as well as trademarks of third parties. The website offers live Internet streaming of football matches and displays links to third-party websites where potential viewers are required to create accounts by providing certain personal information. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is an English professional league for football teams, which is commonly referred to as the Premier League. The Complainant states that it was incorporated in 1992 and has used the PREMIER LEAGUE trademark ever since. The Complainant claims that it owns the PREMIER LEAGUE trademarks. The Complainant argues that the Domain Name is identical or confusingly similar to its well-known PREMIER LEAGUE trademark because the Domain Name includes the Complainant’s trademark in its entirety. The Complainant contends that the addition of the generic word “lives” and of a hyphen do not detract from confusing similarity of the Domain Name with its trademark because the word “lives” simply acts to describe the content of the Respondent’s website, in that it will provide live content in relation to the PREMIER LEAGUE.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it is not affiliated with, nor does it endorse, nor sponsor the Respondent’s use of the Domain Name. The Complainant submits that the Respondent is using the Domain Name to point to a website which displays the Complainant’s trademarks. The Complainant contends that the Respondent’s website displays links stating, “stream this now”, which indicates that the Respondent is deriving financial gain from its use of the Domain Name. The Complainant claims that the Respondent has not been commonly known by the Domain Name.
The Complainant states that the Domain Name was registered and is being used in bad faith because the Respondent has registered the Domain Name that includes the Complainant’s trademark to direct to a website that uses the Complainant’s trademarks and trademarks of the member clubs of the Premier League. The Complainant assets that this shows that the Domain Name is being used in a way which will confuse Internet users as to the source of the website. The Complainant contends that the Respondent is using the well-known PREMIER LEAGUE trademark to increase traffic flow to its website, so it can benefit both commercially and financially by aligning itself with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To succeed under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The evidence on file shows that the Complainant owns multiple trademark registrations for the PREMIER LEAGUE trademark, therefore the Complainant proved its standing.
Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.1 Here, the Domain Name consists of the entirety of the Complainant’s trademark, a hyphen, the word “lives”, and the generic Top Level Domain (“gTLD”) “.com”. Because the PREMIER LEAGUE trademark is recognizable within the Domain Name, neither the addition of the descriptive term “lives”, nor the addition of a hyphen would prevent a finding of confusing similarity under the first element.2 The gTLD “.com” does not detract from confusing similarity because “[t]he applicable Top Level Domain (‘TLD’) in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.3
Thus, the Domain Name is confusingly similar to the Complainant’s PREMIER LEAGUE trademark and the first element of the UDRP has been satisfied. B. Rights or Legitimate Interests
To succeed under the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
The Complainant alleges and the Respondent does not contradict it that it has not licensed or permitted the Respondent to use the Complainant’s PREMIER LEAGUE trademark in domain names, or for any other purpose.
The evidence on file also shows that the Respondent has not been commonly known by the Domain Name.
The Respondent is not using the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services because the Respondent is using the Domain Name to direct to a website, which reproduces the Complainant’s trademark and displays links allowing to access websites offering unauthorized streaming of the Complainant’s matches.
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
First, it is well-established, that “the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.4 The evidence on file shows that the Complainant’s trademark is well-known, therefore the Respondent’s unauthorized registration of the Domain Name that is confusingly similar to the Complainant’s trademark is in bad faith.
Second, the Domain Name directs to a website displaying the Complainant’s trademark and links to third-party websites offering unauthorized live streaming of the Complainant’s football matches in violation of the Complainant’s copyright. The evidence shows that the links point to websites requesting Internet users to create “free” accounts by inputting email and password information. Users of the website may reveal personal details such as user names and passwords. Considering that the Respondent’s use of the Domain Name for per se illegitimate activity, such as phishing and copyright infringement, “such behavior is manifestly considered evidence of bad faith”.5
Therefore, the Panel finds that the Complainant satisfied the third element of the UDRP. 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 30, 2019
1 Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 3.1.4, WIPO Overview 3.0.
5 Id.
Full & Egal Universal Law Academy