WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Liverpool Football Club and Athletics Grounds Limited v. Amre Salim
Case No. D2021-3619
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 Amre Salim, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <liverpoolfc.football> (the “Domain Name”) is registered with 1&1 IONOS SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 3, 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 November 8, 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 November 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. The Response was filed with the Center on December 1, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on December 16, 2021 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 professional football club founded in 1892 and based in Liverpool, United Kingdom. It is in the English Premier League, is widely supported across the world, and has achieved substantial success in a number of national and international competitions over a number of years. In 2018/2019 its revenue from broadcasting was EUR 299.3 million and its commercial revenue, including that generated from the sale of sports clothing and other branded merchandise, was EUR 210.9 million.
The Complainant is the proprietor of a number of registered trademarks in respect of the mark LIVERPOOL FC, including European Union trademark number 7024565 registered on May 22, 2009 and the comparable United Kingdom trademark number 907024565, created following the United Kingdom’s exit from the European Union and also treated as registered on May 22, 2009.
The Complainant operates a website at “www.liverpoolfc.com” to promote its activities, promulgate news about the Club and its teams, and offer for sale match tickets and branded merchandise. The Complainant began to use the domain name <liverpoolfc.com> as its primary website for the Club in 2002, initially as a redirect to “www.liverpoolfc.tv”. Between April 2021 and September 2021, the “www.liverpoolfc.com” website received an average 7.8 million visitors every month. The Complainant owns other <liverpoolfc> domain names, registered from as early as 1996, including <liverpoolfc.co.uk> and liverpoolfc.eu>.
The Domain Name was registered on June 3, 2015. It resolves to a webpage showing only the words “Hello World”. According to the Internet Archive Wayback Machine, in August 2018 it resolved to a website at “www.gaminggaminggone.co.uk”. The Respondent is a lifelong fan of Liverpool Football Club. On November 10, 2015, the in-house solicitor of the Complainant wrote a cease-and-desist letter to the Respondent noting that it had registered the Domain Name, complaining of trademark infringement and requesting the transfer of the Domain Name to the Complainant in return for the Respondent’s costs of transfer and out-of-pocket expenses in registering the Domain Name.
The Respondent replied on November 15, 2015, in a letter addressed to the Chief Executive and the principal owner of the Complainant (the “November 15 letter”), complaining that the solicitor’s letter was aggressive, threatening and intimidatory; denying trademark infringement; and stating that if the letter had not been so belligerent the Respondent “would have been more than happy to part with my domain name. not for any monetary value but perhaps for three tops signed by the team for my nephews…”
The Respondent went on to say that
“…if both of you wish to contact me in a more respectful and professional manner within seven days, I would be more willing to have a conversation and come to an agreement. I would like to reiterate, I am not interested in any reimbursement or financial gains; I am merely a loyal fan.
If I do not hear from you both within seven days I will take it that you do not wish to take this matter any further.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its LIVERPOOL FC trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Complainant relies first on its registered trademarks and its longstanding use of the Mark. The Complainant contends that the Respondent does not have any rights or legitimate interests in the Domain Name since it has not used it in connection with a bona fide offering of goods or services; the Respondent has not been commonly known by the Domain Name; and the Respondent is not making any legitimate non-commercial or fair use of the Domain Name.
The Complainant alleges bad faith on the part of the Respondent in that the Respondent was bound to have been aware of the Complainant and its rights in the Mark at the time it registered the Domain Name and that the redirection of the Domain Name in 2018 to a website at “www.gaminggaminggone.co.uk” points to an intention on the part of the Respondent to attempt to attract Internet users to that website for commercial gain by creating a likelihood of confusion with the Mark. Alternatively, the Complainant suggests that the Respondent registered the Domain Name with a view to preventing the Complainant from reflecting the Mark in a corresponding domain name.
Although the Respondent acknowledges that the Domain Name is similar to the Mark, it denies that it is identical or confusing. The Respondent asserts that its original intention was to make a legitimate noncommercial or fair use of the Domain Name by creating and hosting a fan site at the Domain Name. It maintains that the failure of the Complainant to respond to its letter of the November 15 letter within seven days had the effect of the Complainant giving the Respondent all rights to the Domain Name.
The Respondent denies any bad faith on its part, relying on the November 15 letter as evidence that it had been willing to transfer the Domain Name in return only for a fair exchange. It denies that the link with the website at “www.gaminggaminggone.co.uk” is evidence of bad faith, explaining that the redirection was the result of the Domain Name and the <gaminggaminggone.co.uk> domain name that he previously owned both being in the root folder of the Respondent’s web hosting.
The Respondent alleges that the Complaint amounts to Reverse Domain Name Hijacking on the part of the Complainant, as evidenced by the Complainant’s failure to respond to the November 15 letter and its failure to disclose the November 15 letter in the Complaint.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove 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 Respondent 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.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over very many years. The Respondent does not dispute this. Ignoring the generic Top-Level Domain (“gTLD”) “.football”, the Domain Name comprises the entirety of the Mark, save for the space between LIVERPOOL and FC. Panels determining disputes under the UDRP have invariably found that for the purposes of comparison between the disputed domain name and the mark in which the complainant claims rights, it is appropriate to ignore the gTLD suffix and spaces that cannot be included in a domain name. Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has put forward a prima facie case as to why the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has countered this by indicating in its Response that its original intention was to use the Domain Name for a fan site. The Panel considers that there are a number of difficulties with this contention. First, there is no mention of this intention in the November 15 letter. Second, despite the Domain Name having been registered over six years ago, the Respondent has apparently not taken any steps at all to establish a fan site at the Domain Name. Third, the Respondent would face the difficulty, as noted at paragraph 2.7.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that:
“…panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner.”
The Panel agrees with this view. The Respondent goes on to contend that the failure of the Complainant to respond to the November 15 letter had the effect of ceding all rights in respect of the Domain Name to the Respondent. The Panel considers this to be misconceived and without any foundation.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
It is clear from the November 15 letter and the Response that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. Since the Domain Name is identical to the Mark and so obviously associated with the very well-known Complainant, the Panel cannot conceive of a legitimate use to which the Respondent could put the Domain Name.
There is no substantive evidence of the Respondent having made any use of the Domain Name. The historic link to the website at “www.gaminggaminggone.co.uk” is inconclusive and the Respondent denies that the link reflects any use of the Domain Name. However, as numerous panels have found, the failure to use a domain name does not prevent a finding of bad faith use under the doctrine of passive holding. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As the WIPO Overview 3.0 sets out at section 3.3, panels will look at the totality of the circumstances in each case, but relevant factors include the failure of the respondent to provide any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put. Although the Respondent claims in its Response that it intended to use the Domain Name for a fan site, it has not put forward any specific evidence of its intention to use the Domain Name in this way and, in the circumstances, the Panel finds it implausible that the Respondent ever intended to do so. Furthermore, as the Panel has indicated above, use of a domain name identical to a complainant’s registered trademark for a fan site would be most unlikely in any event to amount to good faith use.
The Panel does not accept that the offer made by the Respondent in the November 15 letter assists in negating a finding of bad faith registration or use. In the letter the Respondent rejected the Complainant’s offer to take a transfer of the Domain Name in return for payment of the Respondent’s costs of transfer and registration of the Domain Name. The Panel also considers that no adverse inferences should be drawn from the failure of the Complaint to refer to the November 15 letter.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
The Respondent has asked for a finding of Reverse Domain Name Hijacking (“RDNH”) on the part of the Complainant. Since the Panel has found that the Complainant has proved the three elements required to succeed in relation to the Domain Name, there is no question of a finding of RDNH.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <liverpoolfc.football> be transferred to the Complainant.
Date: December 30, 2021