The Complainant is The Liverpool Football Club and Athletic Grounds Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is samiul ahmed, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 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 13, 2021 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 16, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Response was filed with the Center on January 6, 2022, and at the same time, the Respondent expressed his willingness to negotiate a settlement of the dispute. The Center sent the Possible Settlement email to the Parties on January 7, 2022, and received an email from the Respondent on January 11, 2022 further to an email communication from the Complainant to the Respondent on January 6, 2022. In the absence of the Complainant’s suspension request to explore settlement with the Respondent, the Center notified the commencement of the Panel appointment process on January 17, 2022.
The Center appointed Gareth Dickson as the sole panelist in this matter on January 24, 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, founded in 1892. It has won a number of national and international titles and competitions.
The Complainant has been using “Liverpool” in association with its football club activities for over 100 years, with an Internet presence for over 20 years. It is widely known as LIVERPOOL FC (the “Mark”) and in 2002 a UDRP Panel ordered the transfer of the domain name
The Complainant has also partnered and collaborated with a number of well-known brands over the years and offers a variety of goods in connection with the Mark on their own domain and via other authorized outlets.
The Complainant claims to be the owner of a number of international and national trade mark registrations for the Mark around the world, including European Union trade mark registration number 007024565, registered on May 22, 20091 .
The Complainant’s use and registration of the Mark pre-dates the registration of the disputed domain name, which was registered on March 6, 2019. The disputed domain name currently directs Internet users to a webpage featuring what appear to be sponsored links.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world, including as set out at section 4 above, and its longstanding use of the Mark for over 100 years, which has generated substantial recognition of the Mark in the public domain and substantial reputation and goodwill in the Mark for the Complainant. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) in its entirety, under the country code Top-Level Domain (“ccTLD”) “.co”.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to attract Internet users to the website, which contains click-through-links, by creating a likelihood of confusion as to the source, sponsorship, affiliation and/or endorsement of the disputed domain name, to trade off the goodwill and reputation of the Complainant and for the Respondent’s commercial gain.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name on the basis that the Mark is distinctive of the Complainant, has been used (in its current or in a very similar form) by the Complainant for over 100 years and, together with the Complainant, is well known throughout the world. The Complainant also submits that the Respondent registered the disputed domain name in order to prevent the Complainant from registering it themselves. In addition, the Respondent’s own use of the disputed domain name to attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Mark, is contrary to the Policy. As such, the Complainant submits that the disputed domain name was registered and is being used in bad faith.
Together, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
B. RespondentAlthough the Respondent expressed his willingness to negotiate a settlement of the dispute, he also filed a Response which may be summarized as following.
The Respondent submits that trade marks can be registered for different goods or services and by different proprietors. Furthermore, someone may have already, and quite legitimately, registered the domain name, perhaps with its use being connected with unregistered goods or services.
The Respondent admits that Liverpool Football Club is very successful. However, the Complainant’s failure to secure the disputed domain name cannot force upon the Respondent to surrender the legitimately purchased disputed domain name. The Complainant could have purchased the disputed domain name over 12 years ago.
The Respondent has never tried to contact the Complainant to sell the disputed domain name at a premium price. The disputed domain name was not registered to prevent the Complainant from using it. It has been available in the open market for purchasing since 2010. The Complainant failed to register it and it was registered by the Respondent in March 2019 in good intention and faith.
The Respondent submits that he legitimately bought the disputed domain name from the Registrar, and the Registrar did not provide any notice or warning that it was a trademarked domain nor did the Registrar provide any legal notice to indicate that there would be a problem at a later stage.
The Respondent contends that he purchased the disputed domain name in good faith for an unspecified community project which has not been pursued due to the current pandemic. The Respondent maintained in his Response that he is “open to negotiation and offer from the complainant for the transfer of ownership for a full and final settlement.” In a subsequent round of correspondence between the Complainant’s representatives and the Respondent dated January 6 and 11, 2022 respectively, the Respondent rejected the Complainant’s offer to reimburse the Respondent for his documented out-of-pocket costs relating to the disputed domain name’s registration and renewal, and made a counter-offer to transfer the disputed domain name to the Complainant for a sum of GBP 5,000.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview 3.0 provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, 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 mark for purposes of UDRP standing.”
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety. The use of the ccTLD “.co”, which is viewed as a standard registration requirement, is disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a legitimate noncommercial or fair use of it.
The redirection of Internet users to a website offering pay-per-click links does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. ”
The Respondent contends that he purchased the disputed domain name in good faith for a community project but does not describe at even a very high level of abstraction what that project was intended to be, much less provide any evidence to support the contention or to explain how the pandemic had prevented him from taking any steps to progress it. Therefore, the Panel finds that the Respondent has failed to refute the Complainant’s prima facie case.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel notes that the Mark has already been found by previous UDRP panels, as early as 2002, to be distinctive and to have a reputation, rather than being a descriptive or generic term.
The Panel also notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith in that it is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to content aimed at generating commercial benefit for the Respondent. The Panel also notes that the Respondent wrote to the Complainant’s representatives to reject their offer to reimburse his documented out-of-pocket expenses relating to the disputed domain name’s registration and renewal, and instead offered to transfer the disputed domain name for the sum of GBP 5,000. 2 While there is no evidence as to how much the Respondent paid for the disputed domain name, the fact that he expressly rejected the Complainant’s offer demonstrates that he sought to transfer the disputed domain name for valuable consideration in excess of that sum, which is itself evidence of bad faith under paragraph 4(b)(i) of the Policy.
Considering the well-known nature of the Mark, which the Respondent admits, there is also no conceivable use of the disputed domain name by the Respondent that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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
Gareth Dickson
Sole Panelist
Date: February 10, 2022
1 The Complainant asserted rights in other registered trade marks but did not provide evidence of its ownership and/or the registration of those other rights. Similarly, some of the domain names in which the Complainant alleged rights were supported by very old WhoIs information or did not disclose the Complainant as registrant of those domain names. While it is permitted for a panelist to undertake limited factual research into matters of public record (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)), a complainant controls when to bring its complaint and what evidence to provide in support of it. In the view of this Panel, it would be inappropriate to interpret that ability as permitting independent research into aspects of a complainant’s claim which were wholly within the complainant’s ability to resolve before it filed its complaint. As such, the Panel places no reliance on the other trade marks or domain names allegedly owned by the Complainant, albeit that the point is moot in light of the Complainant’s confirmed rights.
2 The Panel notes that although the Parties were engaged in some form of correspondence intended to resolve the dispute and avoid the need for the Complaint to proceed to a determination, these discussions were initiated by the Respondent in his Response and his accompanying email, were not exchanged during a suspension of the proceedings to allow the Parties to explore settlement, were copied to the Center, and conform precisely to one of the circumstances referred to in paragraph 4(b)(i) of the Policy as being evidence of bad faith. In such circumstances, the Panel has determined that the content of these messages is admissible in this proceeding. In doing so, however, the Panel makes no broader statement as to the admissibility of genuine “without prejudice” correspondence, of which confidentiality is an important component, and endorses the need for panels to balance various factors in determining whether to admit such evidence, as set out in section 3.10 of the WIPO Overview 3.0.