ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Liverpool Football Club and Athletics Grounds Limited v. Privacy service provided by Withheld for Privacy ehf / Egzy Gomez Jr Case No. D2022-1145 1. The Parties The Complainant is The Liverpool Football Club and Athletics Grounds Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom. The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Egzy Gomez Jr, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2022. On April 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2022, 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 April 11, 2022, 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 April 15, 2022. 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 April 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2022. The Respondent submitted an informal communication to the Center on April 29, 2022. Accordingly, the Center proceeded to Panel Appointment on June 7, 2022. page 2 The Center appointed George R. F. Souter as the sole panelist in this matter on June 13, 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 Background The Complainant is a world-famous football club. It is the proprietor of United Kingdom registration 00001099121 in respect of its LIVERPOOL FOOTBALL CLUB trademark, figurative, registered on July 22, 1978, for goods in Classes 3, 8,14, 20, 21, 24, and 27, and the European Union Trade Mark registration number 005232053, also in respect of its LIVERPOOL FOOTBALL CLUB trademark, word, registered on August 28, 2008, for goods and services in Classes 6, 9, 14, 16, 18, 24, 25, 28, 32, 36, 41.. The disputed domain name was registered on March 3, 2022, and at the time the Complaint was filed, it was resolving to a website with click-advertising referencing the Complainant and/or the Complainant's goods and services. Furthermore, it is being used to impersonate the club's Head of Academy Players Care in connection with email correspondence with universities and other football clubs, under the "@liverpoolfootballclubacademy.com" extension. 5. Parties' Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its LIVERPOOL FOOTBALL CLUB trademark, containing its LIVERPOOL FOOTBALL CLUB trademark in its entirety. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, particularly that, to the best of the Complainant's knowledge, the Respondent is not generally known by the disputed domain name, and has never received permission from the Complainant to use its LIVERPOOL FOOTBALL CLUB in connection with a domain name registration, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. On April 29, 2022, the Center received an email from a third party stating: "I don't know what this case is even about but I've just received an email that states that a complaint has been filed against me which I don't have a clue what's it about. All's I know is that I LEGALLY bought an email domain of namecheap for a 1 month trail. I have not done anything wrong so whatever complaint was filled against me is not for me so you must have got the wrong guy." 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and page 3 (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. Identical or Confusingly Similar The Panel recognizes that the Complainant has, in addition to its registrations of its LIVERPOOL FOOTBALL CLUB trademarks, acquired common law rights to its trademark over the years. It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain ("gTLD") may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the gTLD ".com" to be irrelevant in the circumstances of the present case, and finds that it may be disregarded here. The Complainant's LIVERPOOL FOOTBALL CLUB trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the Complainant's trademark, and the additional element, the word "academy" in the disputed domain name does not detract from this finding. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Respondent did not advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Furthermore, the nature of the disputed domain name, incorporating the Complainant's well-known LIVERPOOL FOOTBALL CLUB trademark with the additional term "academy", carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.5.1. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant's LIVERPOOL FOOTBALL CLUB trademark was deliberately appropriated in the disputed domain name are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds. The Complainant supplied the Panel with details of what the Panel regards as an egregious example of use of the disputed domain name impersonating the Complainant in bad faith, in connection with email correspondence under the "@liverpoolfootballclubacademy.com" extension, with a United States of America University (name redacted, for privacy protection purposes). Accordingly, the Panel has no difficulty in finding that the disputed domain name is being used in bad faith. page 4 The email correspondence referred to above, using the disputed domain name, is a clear example of use of a domain name in bad faith, and the Panel so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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. /George R. F. Souter/ George R. F. Souter Sole Panelist Date: June 27, 2022
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