The Complainant is Paris Saint-Germain Football, France, represented by Plasseraud IP, France.
The Respondent is Relativ Hosting, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2020, 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 contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 2020 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 September 14, 2020. 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 September 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2020. The Respondent submitted a Response on October 5, 2020. On October 14, 2020, the Complainant submitted a supplemental filing. The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 16, 2020. 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 a French football club established in 1970 and based in Paris. It has used the company name “Paris Saint-Germain Football”, registered in the legal form Société Anonyme Sportive Professionnelle (SASP), since July 5, 1991. The Complainant owns numerous trademarks incorporating the words “Paris Saint-Germain” including European Union Trade Mark no. 14968382 for the word mark MY PARIS SAINT-GERMAIN, registered on May 2, 2016, and European Union Trade Mark no. 16522062 for the word mark CAMPUS PARIS SAINT-GERMAIN, registered on July 21, 2017. The Respondent is a sole proprietor business registered and based in Canada. According to its Master Business Licence, the Respondent’s principal business activity is website hosting. The disputed domain name was registered on May 18, 2020, and redirects to a parking page containing sponsored links largely related to the Complainant’s line of business including, for example, “Live Streaming Match”. 5. Parties’ Contentions The Parties contend as follows in their submissions: A. Complainant Identical or Confusingly Similar The Complainant owns rights in its company name and in numerous registered trademarks incorporating the term “Paris Saint-Germain”. The disputed domain name integrates this in its entirety as its dominant element together with the generic word “football” which does not distinguish the disputed domain name in any significant way. The addition of the generic Top-Level Domain (“gTLD”) “.club” may usually be ignored, although in the present case it exacerbates confusing similarity in that it refers to the core nature of the Complainant. Rights or Legitimate Interests The disputed domain name does not correspond to the Respondent’s name or any trademark registered in the Respondent’s name. The Respondent has not been known under the disputed domain name, has received no permission to use the Complainant’s trademark, and has been granted no license or other rights by the Complainant to permit use of the disputed domain name. There is no evidence of any fair, noncommercial or bona fide use of the disputed domain name. The disputed domain name makes financial gain from the value of the Complainant’s well-known prior trademarks by redirecting to a parking page containing automatically generated sponsored links referencing football, including the main football broadcasters in France and the main competition league for European clubs. Registered in Bad Faith The Respondent registered the disputed domain name in the knowledge of the Complainant’s rights. The Complainant is famous worldwide. Its name and trademark are well-known. Its official “Facebook” page has more than 41 million followers. Its “Twitter” account has more than 7.9 million followers. It has won multiple championships and ranks 7th on UEFA rankings for club competitions. It has a strong multi-lingual Internet presence. The Respondent could not ignore the existence or activities of the Complainant at the time of registration of the disputed domain name, particularly given the association of the Complainant’s mark with the word “football” and the gTLD “.club”. Used in Bad Faith It is a well-established principle that registration of a domain name that is confusingly similar to a well-known trademark by an entity with no relationship to such mark can amount to sufficient evidence of bad faith use. The parking page trades off the Complainant’s reputation and provides commercial gain. There is no coincidence that the sponsored links on such page reference the Complainant and the goods or services of its competitors. This constitutes an improper use of the Complainant’s mark to attract Internet users to the Respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website concerned. B. Respondent Identical or Confusingly Similar The words “football” and “club” are generic English words. The Respondent is developing a noncommercial website for football fans of the Complainant. This in itself is a “club”. The disputed domain name reflects the intention of a fan site without intent to confuse the public. The Complainant does not have a strong interest in Internet domain names regarding its trademark as demonstrated by this dispute being filed 29 years after its company name was registered. It has not registered “parissaintgermainfootball” or “parissaintgermainfootballclub” under the most important generic or country code domain names. The Complainant is unfairly imposing its globally recognized status to acquire the disputed domain name. Rights or Legitimate Interests It is accepted that the disputed domain name does not correspond to the Respondent’s name or any trademark registered in the Respondent’s name. The Respondent is a registered web hosting and development business, which maintains a large number of domain names for present and future use by its clients and itself. The Respondent does not compete with the Complainant. The Respondent acquired the disputed domain name four months before receiving notice of the dispute. It has not had the time or means to begin developing its fan site, for which the registration of the disputed domain name was a first step. The global pandemic halted the development of said website. It is accepted that the Respondent has no license or permission from the Complainant but there was no intent for commercial gain or to tarnish the Complainant’s trademark. It is accepted that the disputed domain name directs to a parked page generating sponsored links but the Respondent did not create this or put in place the redirection. Some of the sponsored links may or may not contain the Complainant’s name, depending upon the browser used (evidence provided). Registered and Used in Bad Faith The Respondent’s intent to develop a fan site for supporters of the Complainant’s football team is bona fide. It would be free of e-commerce and impossible to mislead consumers. The Respondent has never offered the disputed domain name for sale to the Complainant. The Respondent did not register the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and there is no such pattern of conduct. The parked page was set by default by the Registrar according to its terms and conditions. The Respondent has not changed the disputed domain name’s nameservers and has not inserted any DNS records such as a custom MX record. The Respondent had no intent for monetary gain and did not purchase the Registrar’s “CashParking” service. The Complainant’s false cybersquatting claims are damaging to the Respondent’s business and the Respondent requests a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Preliminary Issue: Complainant’s supplemental filing Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, any further statements or documents from either of the Parties. Paragraph 10 of the Rules provides, inter alia, that the panel has authority to determine the admissibility, materiality and weight of the evidence. Supplemental filings are generally discouraged, unless specifically requested by the panel. The Complainant filed a supplemental filing on October 14, 2020 seeking to respond to matters raised in the Response. The Panel has considered the terms of the Complaint, the amended Complaint, the Response and the Parties’ accompanying evidence, and considers that it does not require additional information from either of the Parties to allow it to reach a decision on the merits. Accordingly, the Complainant’s supplemental filing will not be considered. B. Identical or Confusingly Similar The Panel finds that the Complainant has rights in multiple trademarks that incorporate the term “Paris Saint-Germain”, including those noted in the factual background section above. Comparing the first of those listed, MY PARIS SAINT-GERMAIN, with the second level of the disputed domain name, it may be seen that all but the word “my” is reproduced, to which the word “football” has been added. The “Paris Saint-Germain” element of the Complainant’s mark, which is highly distinctive and well-known, is reproduced in its entirety in the disputed domain name and is recognizable therein. Furthermore, the absence of the word “my” and the addition of the descriptive word “football” do not prevent such recognition. The gTLD, in this case “.club”, is typically disregarded for the purposes of comparison with the relied-upon mark. The Respondent’s submissions on this topic are not relevant to the issue of identity or confusing similarity, which typically calls for a straightforward comparison between the relied-upon mark and the disputed domain name in order to determine whether the former is recognizable in the latter. These submissions may be considered, where material, in connection with the second and third element assessments under the Policy. In these circumstances, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The Complainant has therefore established the first element test. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent is not commonly known by the disputed domain name, has received no licence to use the Complainant’s mark therein, is not using the disputed domain name in connection with a fair, noncommerical or bona fide use, and that the disputed domain name redirects to a parking page containing automatically generated sponsored links referencing football, being the Complainant’s line of business. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name. The essence of the Respondent’s case is that it registered the disputed domain name for the purposes of developing a noncommercial site for fans of the Complainant’s football club. The Respondent notes that it has been delayed in such development because of the current global pandemic, adding that the pay-per-click advertising published on the website associated with the disputed domain name is a consequence of the disputed domain name being undeveloped and left on the Registrar’s default parking page. The Respondent cites Giochi Preziosi S.P.A. v. VGMD NetWeb S.L.,WIPO Case No. D2009-0542 in support of its position. The Panel notes that previous cases under the Policy have typically recognized that a respondent may be able to demonstrate a legitimate interest in a domain name where this was registered and used in order to publish a genuine noncommercial fan site (see, for example, the discussion in section 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). However, where such a claim is made, the Panel must be satisfied that the fan site concerned is entirely genuine, noncommerical, and not a pretext for cybersquatting or commercial activity. It is notable that the Respondent provides no evidence whatsoever to support its bare assertion of an intent to develop a fan site in respect of the disputed domain name. The Panel is left to consider whether such assertion is credible based upon the surrounding facts and circumstances. Dealing first with the issue of the delay in publishing the site, the Panel is unconvinced by the Respondent’s claimed reason. The Respondent does not elaborate on such reason with any credible explanation let alone evidence, leaving the Panel to proceed based upon its own experience. In any event, the Panel considers that the Respondent would have had more than enough time to place some form of holding page or similar on the website associated with the disputed domain name, however brief, identifying its forthcoming fan site if this had been its true intent. This is fortified by the evidence before the Panel that the Respondent is apparently in the business of website hosting, such that it could reasonably be expected to have such capability. The Respondent does not and cannot deny awareness of the Complainant’s very well-known mark, bearing in mind the claimed purpose for the registration of the disputed domain name. This makes its failure to remove the Registrar’s default commercial parking page all the more acute in the circumstances of this case. The Respondent cites the detailed provisions of its contract with the Registrar and is apparently familiar with the default arrangement. In any event, no explanation is given as to why a sole proprietor business whose registration indicates that its primary activity is in web hosting, presumably a wholly commercial or for-profit venture, would be interested in creating an entirely noncommercial fan site for a football club. Is the sole proprietor a genuine fan of the club concerned? The Panel does not know and there is no evidence before it to this effect. Although the Respondent cites Giochi Preziosi S.P.A. v. VGMD NetWeb S.L.,WIPO Case No. D2009-0542 in support of its position, the Panel considers that this case does not avail it in present circumstances. As here, the respondent in that case claimed that it registered the domain name concerned for a fan site related to the complainant. The domain name was not in any active use. The complainant produced some drafts and mock-ups of webpages illustrating its plans. The panel concerned was not wholly convinced by these. What turned that case in the respondent’s favor was the fact that it could point to a pre-existing fan site, dedicated to the complainant, which it had already partially built. The respondent explained that the domain name under consideration, in the gTLD “.mobi”, was intended to allow it to expand this content into a mobile-only fan site. This is a very different set of circumstances from the present case, in which there is no evidence of drafts or mock-ups, whether convincing or unconvincing, nor is there any prior evidence of any fan-based activity, relative to the Complainant’s football club, on the Respondent’s part. Furthermore, even if the Respondent had shown some evidence of use (or of its intended use of the disputed domain name) as a fan site, which it has not, the Respondent’s case would not necessarily overcome the Complainant’s case in these circumstances. UDRP panels tend to find that the respondent has a legitimate interest in using a mark as part of a domain name for a fan site if such use is considered to be fair in all of the circumstances of the case. Although the disputed domain name is not identical to the Complainant’s mark, it essentially comprises the mark plus an additional descriptive term and a gTLD related to the Complainant’s area of business. Here, such composition cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. Such risk of implied affiliation, without additional context, would tend to imply that use of the disputed domain name as a fan site would not be fair. See sections 2.5 and 2.7 of the WIPO Overview 3.0. In light of the above analysis, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and that the Respondent has no rights or legitimate interests in the disputed domain name. The second element under the Policy has been established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. The Complainant’s submissions in this case focus on the fact that the disputed domain name is currently used for a parking page featuring sponsored links keyed to the line of business of the Complainant and therefore that a case of registration and use in bad faith is made out along the lines of paragraph 4(b)(iv) of the Policy. The Respondent counters that the links concerned are not its own and that the parking page was published by the Registrar on the basis of a default setting. The Respondent does not deny that it registered the disputed domain name in the full knowledge of the Complainant and its rights but adds that it did so in order to publish a noncommercial fan site and therefore on a good faith basis. With regard to the presence of the Registrar’s automated pay-per-click links on the website associated with the disputed domain name, panels under the Policy typically take the approach that a respondent, as registrant or holder, is responsible for the use of its domain name and therefore that alleged third party involvement in the generation of such content does not prevent a finding of registration and use in bad faith. Contrary to the Respondent’s submissions concerning the fact that it did not configure the Registrar’s “CashParking” service and therefore was not seeking to make commercial gain itself, it is not a pre-requisite for a finding of registration and use in bad faith that a respondent must be profiting directly from the commercial activity involved in such a parking site (see section 3.5 of the WIPO Overview 3.0 on this topic). With regard to the Respondent’s claim of good faith activity related to the alleged creation of a fan site, the Panel’s observations in the preceding section apply equally here. There is simply a bare assertion with no supporting evidence that the Respondent intended to build such a site. There is no averment and no evidence that the Respondent itself is a fan of the Complainant and no obvious logic to the suggestion that a for-profit entity such as the Respondent’s sole-proprietor web hosting business would otherwise engage in this activity. There is no evidence of prior genuine noncommercial activity along the lines presented to the panel in Giochi Preziosi S.P.A. v. VGMD NetWeb S.L., supra. Coupled with the nature of the content on the website associated with the disputed domain name, for which the Respondent cannot disclaim responsibility, these circumstances lead the Panel to find registration and use in bad faith on the facts of this particular case. The third element under the Policy has been established. E. Reverse Domain Name Hijacking The Respondent has requested a finding of Reverse Domain Name Hijacking. The Complainant has been successful in this proceeding. It appears to the Panel that the Complainant sought to deploy the Policy to address the use of its well-known trademark in a corresponding domain name, which was displaying pay-per-click links for commercial gain. In these circumstances, the Panel finds no indication of bad faith on the Complainant’s part in connection with the bringing of the Complaint. Accordingly, the Respondent’s request that the Panel make a finding of Reverse Domain Name Hijacking is denied. 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 Andrew D. S. Lothian
Sole Panelist
Date: October 30, 2020
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