The Complainant is The Liverpool Football Club and Athletic Grounds Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Namit Trivedi, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 2021, 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 December 3, 2021, the Registrar transmitted by email to the Center its verification response 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 December 7, 2021.
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 December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. An informal Response was filed with the Center on December 27, 2021. On the same day, the Center sent to the Parties a communication of Possible Settlement, which was replied by the Complainant requesting the suspension of the proceeding. The Notification of Suspension was sent to the Parties on December 27, 2021. On February 2, 2022, the Respondent requested the extension of the suspension period. However, the Complainant did not agree with the extension and requested the reinstitution of the proceeding on February 24, 2022. The reinstitution of proceeding communication was sent on March 1, 2022. On the same day, the Center sent to the Parties the Commencement of Panel Appointment process.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 25, 2022. 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 BackgroundThe Complainant is a professional football club based in Liverpool, United Kingdom. The Complainant was founded in the year 1892. The Complainant won several European Cups, most recently in 2005 and 2019, and a nineteenth League title in 2020, the Complainant’s first during the Premier League era. The Complainant has won 19 League titles, seven FA Cups, a record of nine League Cups and fifteen FA Community Shields. In international club competitions, the Complainant has secured six European Cups/UEFA Champions League, more than any other English football club, three UEFA Cups, four UEFA Super Cups, and one FIFA Club World Cup.
In 2002, the Complainant began to utilize the domain name
The Complainant owns numerous trademark registrations comprising of LIVERPOOL FC, including, for instance the United Kingdom trademark registration No. 907024565, registered on May 22, 2009.
The Disputed Domain Name was registered on February 12, 2015 and resolves to a landing page mentioning that the Disputed Domain Name is registered and secured with CrazyDomains.com.
5. Parties’ Contentions A. ComplainantThe Disputed Domain Name is identical or confusingly similar to the trademark
The Disputed Domain Name wholly incorporates the trade mark LIVERPOOL FC in its entirety, with no additional elements.
The Complainant has registered trademarks for the LIVERPOOL FC term, stemming back to 2009, predating the registration of the Disputed Domain Name by the Respondent. Aside from this, the Complainant has used and continues to use other names comprising of “Liverpool” as a key part, such as LIVERPOOL FOOTBALL CLUB, having built up substantial recognition in the public domain, under these names, alongside a portfolio of registered trademarks.
Previous panels have acknowledged the well-established repute of the Complainant’s rights in the LIVERPOOL FC name, as early as 2002, under separate UDRP proceedings (see The Liverpool Football Club and Athletic Grounds Public Limited Company and the LiverpoolFC.TV Limited v. Andrew James Hetherington, WIPO CaseNo. D2002-0046).
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Disputed Domain Name was created on February 12, 2015. By this point, the Complainant already had extensive registered rights in the LIVERPOOL FC brand dating back to 2009 and undisputed worldwide reputation, as a result of not only its successes and achievements as a professional football club, but also various commercial activities carried out under the LIVERPOOL FC brand name.
The Disputed Domain Name fails to resolve to any relevant content. Instead, it redirects to a landing page mentioning that the Disputed Domain Name is registered and secured with CrazyDomains.com. This substantiates the fact that the Respondent has not made any bona fide offering of goods and services under Policy.
The Complainant submits that to the best of their knowledge, the Respondent has never been known as “Liverpool FC” at any point in time.
The Complainant submits that nothing about the Disputed Domain Name suggests that the Respondent is making a legitimate noncommercial or fair use of it. The Disputed Domain Name does not resolve to any relevant content, despite having the LIVERPOOL FC trademark wholly incorporated in the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith in accordance with Policy, Paragraph 4(a)(iii).
By using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their website or location or of a product or service on their website or location.
The Complainant submits that the LIVERPOOL FC trademark, as well as the trading and commercial activities of the business, significantly pre-date the registration of the Disputed Domain Name in 2015. The LIVERPOOL FC brand at the date of the registration of the Disputed Domain Name undoubtedly had widespread global recognition, supported by various worldwide news commentary, fan sites, social media activity, endorsements, collaborations and partnerships. A simple check on any of the most commonly used Internet search engines would have revealed the Complainant’s LIVERPOOL FC brand and business.
The Complainant therefore submits that the Respondent had actual knowledge of the Complainant’s LIVERPOOL FC brand before and at the time of the registration, and that the Disputed Domain Name was registered with prior knowledge of the Complainant’s LIVERPOOL FC brand.
The Complainant states that the Disputed Domain Name was registered with the sole purpose of creating an association with the Complainant, which is further highlighted by the fact that the Disputed Domain Name had been registered at the new generic Top-Level Domain (“gTLD”) “.club” which is relevant and applicable in the context of services and goods associated with the Disputed Domain Name and thus the Complainant’s brand.
This demonstrates that the Respondent was clearly aware of the Complainant’s brand, by choosing to register the Disputed Domain Name under an extension relating to a sector in which the Complainant operates in. In view of the worldwide recognition of the Complainant’s LIVERPOOL FC brand, including the colossal scope of the Complainant’s business in the United Kingdom, there is no plausible reason that the Respondent could have had for registering the Disputed Domain Name.
The passive holding of the Disputed Domain Name did not prevent previous Panels from making a finding that the Disputed Domain Name was registered and used in bad faith.
The Complainant requests the transfer of the Disputed Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
In its informal response, the Respondent stated the following: “Thank you for your email. This is the first time I am getting to know of this and this process is new to me. The correspondence has been going to my old address which I no longer reside in. I am a big LFC fan In relation to the dispute, i am not seeking to sell the domain to anyone. I am not receiving or seeking any commercial gain and I am not engaging in any disruptive conduct”.
6. Discussion and FindingsParagraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in Complainant’s favor only after Complainant has proven that the above elements are present.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in its registered trademark.
The addition of the gTLD “.club” does not impact on the analysis of whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the Disputed Domain Name consists solely of the Complainant’s trademark.
Considering the above, the Panel finds the Disputed Domain Name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has never authorized, licensed or permitted the Respondent to use the LIVERPOOL FC trademark in any way.
The Disputed Domain Name is identical to the Complainant’s trademark. Therefore, the Panel finds that it carries a high risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Respondent is also not using the Disputed Domain Name in connection with any bona fide offering of goods or services nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
Therefore, the Panel concludes that the Respondent does not have rights or a legitimate interests in the Disputed Domain Name within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
On December 27, 2021, the Respondent sent an email to the Center stating that he is “a big LFC fan”. In view of this Panel this is evidence that the Respondent had knowledge of the Complainant and its trademarks when registering the Disputed Domain Name.
According to section 3.1.4 of the WIPO Overview 3.0, 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. The Panel is convinced that the Complainant’s trademark is well-established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally (The Liverpool Football Club and Athletic Grounds Limited v. Darren Mills, Mills NZ,WIPO Case No. D2021-4132).
Thus, the Panel finds that the Disputed Domain Name identical to the Complainant’s trademark was registered in bad faith. Additionally, given the meaning of the word “club” and the nature of the Complainant’s activities in sports, the addition of the gTLD “.club” adds confusion as the Internet user may mistakenly believe the website linked to the Disputed Domain Name to be operated by the Complainant.
The Disputed Domain Name resolves to a parked page indicating that the Disputed Domain Name is registered and secured with CrazyDomains.com. Given the fame of the Complainant’s trademark, the Panel finds that the Respondent hoped to mislead customers of the Complainant to visit the website at the Disputed Domain Name trading on the Complainant’s LIVERPOOL FC trademark and its reputation.
Considering the above, the Panel finds the Disputed Domain Name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Pablo A. Palazzi
Sole Panelist
Date: March 31, 2022