ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chelsea Football Club Limited v. Colin Cramer Case No. D2023-3698 1. The Parties The Complainant is Chelsea Football Club Limited, United Kingdom (or "UK"), represented by Lane IP Limited, United Kingdom. The Respondent is Colin Cramer, South Africa. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the "Registrar").1 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2023. On September 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2023, 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 amendment to the Complaint on September 8, 2023. The Center verified that the Complaint, together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on September 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2023. 1 The Complaint was filed identifying the Registrar as Google LLC. On October 2, 2023, Google LLC confirmed that the disputed domain name is registered with Squarespace Domains II LLC following a purchase agreement. Google LLC has confirmed both Registrars' compliance with the UDRP and the implementation of the decision by either Registrar. page 2 The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on October 13, 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. 4. Factual Background The Complainant, Chelsea Football Club Limited, is the company behind the Chelsea Football Club which plays in the top football league in the United Kingdom, the Premier League. It uses a number of trademarks including CFC, an acronym representing "Chelsea Football Club". The Complainant uses CFC as a trademark in relation to a wide-range of goods and services. The Complainant owns multiple trademark registrations, including European Union Trademark Registration No. 017960659 for CFC in Classes 3, 9, 14, 18, 25, 28, 35, 36, 38, and 41, filed on September 25, 2018, registered on March 1, 2019, including for entertainment, sporting, and cultural activities, football camps, football training, information relating to sporting events provided online from a computer database or the Internet; and UK Trademark Registration No. UK00917960659 for CFC in Classes 3, 9, 14, 18, 25, 28, 35, 36, 38, and 41, filed on September 25, 2018, registered on March 1, 2019, including for entertainment, sporting and cultural activities, football camps, football training, information relating to sporting events provided online from a computer database or the Internet. The Complainant operates an official website at "www.chelseafc.com" and has done so since at least November 11, 1998, and has an extensive presence on social media. The disputed domain name was registered on August 5, 2023, and resolves to a website headed "The Chelsea FC Soccer Trials - SA", which reproduced elements of the Complainant's proprietary intellectual property including its logo. 5. Parties' Contentions A. Complainant The Complainant asserts that it owns the copyright in the Chelsea Football Club trademarks including CFC and in its logo. The Complainant says that it also owns the copyright in the website layout and the images used at "www.chelseasoccerschools.co.uk" which it has operated since at least January 5, 2010. It says that the website to which the disputed domain name resolves, and a number of the images there reproduced, are essentially copied from the Complainant's aforementioned site. The Complainant points out that it has a large worldwide following on social media including Facebook (at "www.facebook.com/ChelseaFC/") which has over 50 million Followers, and Twitter ("twitter.com/chelseafc"), which has over 25.2 million Followers. The Complainant says its global Instagram account ("www.instagram.com/chelseafc/") has over 41 million Followers and its global YouTube account ("www.youtube.com/channel/UCU2PacFf99vhb3hNiYDmxww") has over 4.5 million subscribers and has had over 1.1 billion views. The Complainant maintains that the disputed domain name is confusingly similar to its CFC registered trademark, as it begins with the Complainant's registered mark CFC and is followed by a term "trials" which is directly descriptive of the football trial services purportedly being offered, and the Top-Level generic TopLevel Domain ".com", which can be disregarded for purposes of comparing the disputed domain name with the Complainant's registered trademark. page 3 The Complainant also asserts that the Respondent does not own and has not used in good faith any CFC trademarks and that it has not uncovered any evidence that the Respondent is commonly known by or referred to as CFC. Nor did the Respondent register the disputed domain name in good faith in relation to goods, services or any business offered. The disputed domain name is not a generic name of a product or service in any language, the Complainant says, nor is it comprised of the legal name of the Respondent or some other common identifier. The Complainant says that it is inconceivable that the Respondent had not heard of the Complainant or its CFC trademarks and products/services at the time of registration of the disputed domain name. This is because of the fame of the Complainant, or at least the Chelsea Football Club, and its CFC Mark globally; its existence some years prior to the Respondent's registration of the disputed domain name; and the fact that the Respondent's website purportedly offers trials for the Complainant's football team. The Complainant submits that the website to which the disputed domain name resolves is effectively being used to dupe consumers into believing that the Respondent's domain, and subsequent football trial services (which do not appear to be taking place), are connected with, or provided by the Complainant when that is not the case. The Complainant also points out that as the Respondent has replicated the Complainant's official website it must have had prior knowledge of the Complainant and its activities. The Complainant states that it is not affiliated with, nor endorses nor sponsors the Respondent's use of the disputed domain name, and that it has no relationship with the Respondent which would give rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant's CFC mark. The Complainant says that the Respondent is not making legitimate or fair use of the disputed domain name in connection with a bona fide offering of goods or services but instead using it in bad faith. That is because, the Complainant says, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. The Complainant also points out that the Respondent uses the disputed domain name to resolve to a website that is headed "The Chelsea FC Soccer Trials - SA" and makes use of the Complainant's copyright protected works there including the Chelsea Football Club Crest and images from the Complainant's official site at "www.chelseasoccerschools.co.uk/". The Complainant maintains that therefore the Respondent is clearly aware of the Complainant's Chelsea FC and CFC brands because the Respondent is using its Chelsea Football Club intellectual property throughout the impugned website. The Complainant also points out that the Respondent copies images and text in which the Complainant owns the copyright directly from the latter's website. The Complainant notes that the impugned website purports to offer football trial services for the Complainant and the Respondent's intention was to use the disputed domain name to attract, for profit, Internet users to its site. The Complainant asserts that it does not in fact charge for its own official trial services and investigations into the purported services being offered by the Respondent indicate that the venues where trials are supposedly being held are not aware of any such events. As such, the Complainant asserts that the Respondent is fraudulently charging for trial events, which appear to originate from the Complainant, but do not in fact take place. The Complainant submits that initial interest confusion will clearly occur in respect of the disputed domain name, which uses the Complainant's CFC mark to resolve to a website displaying the Complainant's distinctive CHELSEA FC and CHELSEA FOOTBALL CLUB crest marks at its head. B. Respondent The Respondent did not reply to the Complainant's contentions. page 4 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name is not identical to the CFC registered trademark of the Complainant, but that mark is immediately visible and recognizable within it. The trademark is incorporated entirely and the addition of "trials" does not prevent the trademark from being recognizable. In accordance with now well-established jurisprudence, the requirements of paragraph 4(a)(i) of the UDRP Policy are thereby met. Therefore, the Panel holds that the disputed domain name is confusingly similar to the CFC registered trademark of the Complainant. B. Rights or Legitimate Interests The Respondent has chosen not to reply to any of the Complainant's contentions and has thus made no case for the recognition of rights or legitimate interests. The latter has not authorized the Respondent to use its CFC registered trademark in any manner nor to reflect it in a registered domain name. There is no indication before the Panel that the Respondent was known by anything approximating "CFC" or had acquired prior right in this acronym by legitimate use as a mark. It appears that instead, the Respondent has established a corresponding website that misappropriates the intellectual property of the Complainant in the form of trademarks, copyright protected logos, and other copyright materials such as photographs. The relevant website purports to offer services emanating from the Complainant which in reality have no connection with or endorsement from the latter. There is thus no evidence of any use made of the disputed domain name that would support a finding that rights or legitimate interests vests in the Respondent. On the contrary, the use made of the CFC mark as incorporated in the disputed domain name is clearly illegitimate. Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith As indicated above, the disputed domain name resolves to a website that mimics a website of the Complainant that offers football trials connected to the Chelsea Football Club. It appears that the Respondent does not in fact organize such trials, but the more pressing problem here is that its website replicates aspects of the Complainant's intellectual property so as to give the false impression to Internet users that they have arrived at a site run by the Complainant. In other words, the disputed domain name resolves to a website that is misleading and deceptive as it is operated by the Respondent without any approval or input from the Complainant. Given the content of the website and the way it replicates the Complainant's marks and other intellectual property, it is highly unlikely that the Respondent stumbled upon the Complainant's use and possession of the CFC mark after registering the disputed domain name. In any case, a simple Google search by the Respondent at the relevant time would have revealed that CFC is a registered mark of the Complainant in many jurisdictions. The goodwill attaching to this mark and to the Chelseas Football Club worldwide is in any case very extensive. It is more thus much more likely that the Respondent deliberately acquired the disputed domain name in the full knowledge of the Complainant's trademark rights and with the contemporaneous intention of establishing the deceptive website that then in fact saw the light of day. Therefore, the Panel holds that the disputed domain name was registered and used in bad faith. page 5 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. /WiIliam A. Van Caenegem/ WiIliam A. Van Caenegem Sole Panelist Date: October 27, 2023
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