ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Lega Nazionale Professionisti Serie A v. HM Case No. D2023-0095 1. The Parties Complainant is Lega Nazionale Professionisti Serie A, Italy, represented by Barzanò & Zanardo Milano SpA, Italy. Respondent is HM, United States of America ("United States"). 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 5, 2023. On January 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2023, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information already mentioned in the Complaint. The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 20, 2023. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 23, 2023. 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. page 2 4. Factual Background Complainant is a company organized under the laws of Italy, commonly known as "Lega Serie A", that is the governing body running the most important football competitions in Italy, in particular the so-called "Serie A". Complainant has evidenced to be the registered owner of various trademarks relating to its company name and brand SERIE A, including, but not limited to the following: - Word-/device mark SERIE A, European Union Intellectual Property Office (EUIPO), registration number: 016504541, registration date: August 31, 2017, status: active. Moreover, Complainant has demonstrated to own since 2010 the domain name which resolves to Complainant's official website at "www.legaseriea.it" where Complainant promotes its SERIE A football competitions and related products and services. Respondent, according to the WhoIs information for the disputed domain name is located in the United States and registered the disputed domain name on February 8, 2021. By the time of rendering this decision, the disputed domain name does not resolve to any relevant content on the Internet. Complainant, however, has demonstrated that at some point before the filing of the Complaint, the disputed domain name resolved to a website at "www.legaserie.com", publishing Complainant's SERIE A trademark and copying substantial parts of Complainant's official website at "www.legaseriea.it", including official images, thus mirroring such website, without any authorization to do so. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties' Contentions A. Complainant Complainant submits that the disputed domain name is confusingly similar to its SERIE A trademark, as it incorporates at least the distinctive part of the SERIA A trademark which is, therefore, still recognizable within the disputed domain name. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has no relationship with Respondent whatsoever, (2) Respondent has never received any approval of Complainant, expressed or implied, to use its trademark or to register any domain name identical or confusingly similar to such trademark, (3) there is no evidence that Respondent has acquired any rights in a trademark or trade name corresponding to the disputed domain name, and (4) the disputed domain name is used to impersonate Complainant and its official website, by publishing Complainant's trademark, official images and content, without any authorization to do so. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) given the distinctiveness and reputation of Complainant's SERIE A football league and trademark worldwide, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge thereof, (2) Respondent not only employed a privacy service at some point, but also hid false and/or incomplete WhoIs information behind it, and (3) publishing Complainant's SERIE A trademark, official images and website content without any authorization, thereby de facto impersonating Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant and its trademark. B. Respondent Respondent did not reply to Complainant's contentions. page 3 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the SERIE A trademark in which Complainant has rights. The disputed domain name incorporates the distinctive part "serie" of Complainant's SERIE A trademark, added by the term "lega" (Italian for "league"). Numerous UDRP panels have recognized that where a domain name incorporates a trademark in its entirety, 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 trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels, that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP (see WIPO Overview 3.0, section 1.8). Accordingly, the addition of the term "lega" (which directly points at Complainant's company name and core business) does not prevent a finding of confusing similarity between Complainant's trademark and the disputed domain name. Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent apparently has neither been granted a license nor has it been otherwise authorized by Complainant to use the SERIE A trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms "lega" and/or "serie" on its own. To the contrary, Respondent, at some point before the filing of the Complaint, was running a website under the disputed domain name at "www.legaserie.com", publishing Complainant's SERIE A trademark and copying substantial parts of Complainant's official website at "www.legaseriea.it", including official images, thus mirroring such website, without any authorization to do so. Such making use of the disputed domain name obviously neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy. Moreover, the nature of the disputed domain name, namely the combination of the distinctive part "serie" of Complainant's SERIE A trademark and the term "lega" (which directly points at Complainant's company name and core business), is inherently misleading and carries a risk of an implied page 4 affiliation as it effectively suggests sponsorship or endorsement by Complainant which is not the case (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating such rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. Given the nature of the disputed domain name (namely the combination of the distinctive part "serie" of Complainant's SERIE A trademark and the term "lega", which directly points at Complainant's company name and core business), it is rather likely than not that Respondent was well aware of Complainant's trademark rights when registering the disputed domain name and that the latter is directly targeting such trademark. Moreover, resolving the disputed domain name to a website at "www.legaserie.com", publishing Complainant's SERIE A trademark and copying substantial parts of Complainant's official website at "www.legaseriea.it", including official images, thus mirroring such website, without any authorization to do so, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant's SERIE A trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated January 26, 2023 could not be delivered. This fact at least throws a light on Respondent's behavior which supports the Panel's bad faith finding. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: March 9, 2023
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