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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Liverpool Football Club and Athletic Grounds Limited v. Gabriella Garlo

Case No. D2021-3903

1. The Parties

Complainant is The Liverpool Football Club and Athletic Grounds Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

Respondent is Gabriella Garlo, Brazil.

2. The Domain Name and Registrar

The Disputed Domain Name <liverpoolfc.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 23, 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 November 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 25, 2021.

The Center verified that the amended Complaint (hereinafter referred as 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 28, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on January 7, 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

Complainant is a professional football club based in Liverpool, United Kingdom. The club was founded in 1892 and is now one of the most widely supported football clubs in the world.

The club established itself as a major force in English and European football in the 1970s and 1980s. During these years, it secured eleven League titles and four European Cups. The club won two other European Cups in 2005 and 2019, the latter leading the club to a nineteenth League title in 2020, the club’s first during the Premier League era.

To date, the club has won nineteen League titles, seven FA Cups, a record eight League Cups and fifteen FA Community Shields. In international club competitions, the club has secured six European Cups, more than any other English football club, three UEFA Cups, four UEFA Super Cups and one FIFA club World Cup.

Complainant jointly owns the company LiverpoolFC.TV Ltd, alongside Granada Media plc, which are some of the largest companies in the United Kingdom within the commercial television sector, and who have been licensed by Complainant to utilize Complainant’s trademarks and brand online since the early 2000s.

The domain name <liverpoolfc.tv> had been used for the purposes of a website at “www.liverpoolfc.tv” since as early as 2000, serving as the official website for Complainant at the time, and which provides news, statistics and other information on the club, as well as selling match tickets and club merchandise.

In 2002, Complainant began to utilize the domain name <liverpoolfc.tv> and then as a website “www.liverpoolfc.com” in its own right. Based on website traffic analysis made available for the period April 2021 – September 2021 “www.liverpoolfc.tv” generates an average 7.8 million visitors every month, from various locations worldwide, and almost half of all visits originate from United Kingdom based Internet users.

Aside from <liverpoolfc.tv> and <liverpoolfc.com>, Complainant owns various other domain names using the “liverpool fc” name, which stem back to as early as 1996. Complainant’s Internet presence can thus be traced back over 20 years, the <liverpoolfc.co.uk> domain name having been registered within less than a decade of the inception of the domain name infrastructure of the late 1980s.

Complainant’s Internet presence under the “liverpool fc” name is further demonstrated by a variety of social media accounts acquired and registered under handles “@liverpoolfc”. These accounts generate a substantial fan following, with over 18 million followers on Twitter, 33 million on Instagram and over 40 million on Facebook.

Complainant’s business and brand have partnered and collaborated with a variety of household names over the years, which include: Standard Chartered, Nike, Axa, Expedia, Carlsberg, EA Sport, and Cadbury.

Complainant’s brand has a variety of revenue streams. In 2018/2019, the club earned approximately EUR 299.3 million from broadcasting. The commercial revenue stream is the second largest, amounted to EUR 210.9 million in 2018/2019, and EUR 243.4 million in 2019/2020, and included revenue generated from the sale of sport clothing and other branded merchandise. These goods are predominately being offered and sold via Complainant’s main website at “www.liveropoolfc.com” and via other authorized merchants and online outlets.

Complainant owns numerous trademark registrations for LIVERPOOL FC (“LIVERPOOL FC Mark”) including without limitation European Union Trademark Registration No. 7024565 LIVERPOOL FC registered May 22, 2009, in Classes 6, 18, 21, 24 and 25; and United Kingdom Registration No. 907024565 LIVERPOOL FC registered May 22, 2009, in Classes 6, 18, 21, 24 and 25.

The Disputed Domain Name was registered on January 12, 2021, and resolved to a parking web page containing pay-per-click (“PPC”) links related to Complainant’s products.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to its LIVERPOOL FC Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name wholly incorporates the LIVERPOOL FC Mark, with no additional elements. Complainant further contends that any assessment of similarity should exclude the generic Top-Level Domain (“gTLD”) “.shop”.

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Complainant further alleges that given the considerable reputation of Complainant’s business and brand in the football sector for over a century there is no believable or realistic reason for the registration or use of the Disputed Domain Name other than to take advantage of the LIVERPOOL FC Mark.

Complainant further alleges that the Disputed Domain Name resolves to the website “liverpoolfc.shop”. The website promotes advertising containing “Football Kits” and a “Liverpool Jersey” among other things. Complainant further alleges that Respondent generates revenue from advertisements at the Disputed Domain Name. This substantiates the fact Respondent has not made any bona fide offering of goods and services under paragraph 4(c)(i) of the Policy or a legitimate and noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

Complainant further alleges that it has found no evidence that Respondent has been commonly known by “Liverpool FC” at any point in time under paragraph 4(c)(ii) of the Policy.

Complainant submits that Respondent has registered and used the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Complainant further submits that the LIVERPOOOL FC Mark, as well as the trading and commercial activities of the business, significantly pre-date the registration of the Disputed Domain Name. The LIVERPOOOL FC Mark at the date of the registration of the Disputed Domain Name undoubtedly had widespread global recognition, supported by various worldwide news commentaries, fan sites, social media activity, endorsements, collaborations and partnerships. Indeed, a simple check on any of the most commonly used Internet search engines would have revealed Complainant’s LIVERPOOL FC Mark and business.

Complainant further submits that Respondent had actual knowledge of the LIVERPOOL FC Mark before and at the time of the registration of the Disputed Domain Name, and that the Disputed Domain Name was registered with prior knowledge of Complainant’s rights. Complainant further submits that the Disputed Domain Name was registered with the sole purpose of creating an association with Complainant, which is further highlighted by the fact that the Disputed Domain Name had been registered at the new gTLD “.shop” which is relevant and applicable to the sale of good and services associated with the Disputed Domain Name and thus Complainant’s brand. This demonstrates Respondent was clearly aware of Complainant’s brand before choosing to register the Disputed Domain Name under an extension (gTLD) exclusively to attract and mislead Internet users that intend to transact business with Complainant.

Complainant further submits that the use of the Disputed Domain Name by Respondent is for the purpose of generating revenue through PPC advertising. Complainant further submits that the Disputed Domain Name is confusingly similar to Complainant’s registered rights and is for “commercial gain”.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the LIVERPOOL FC 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.

A. Identical or Confusingly Similar

Complainant owns numerous trademark registrations for LIVERPOOL FC (“LIVERPOOL FC Mark”) including without limitation European Union trademark Registration No. 7024565 registered May 22, 2009, in Classes 6, 18, 21, 24 and 25; and United Kingdom Registration No. 907024565 registered May 22, 2009, in Classes 6, 18, 21, 24 and 25.

Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the LIVERPOOL FC Mark.

Therefore, for purposes of this proceeding, Complainant owns enforceable trademark rights in the LIVERPOOL FC Mark.

Complainant contends that the Disputed Domain Name is identical or confusingly similar to its LIVERPOOL FC Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name wholly incorporates the LIVERPOOL FC Mark, with no additional elements. Complainant further contends that any assessment of similarity should exclude the gTLD “.shop”.

Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as (.shop) may be disregarded for purposes of assessing confusing similarity.

The Panel finds that the Disputed Domain Name is identical to the LIVERPOOL FC Mark and that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that the Disputed Domain Name resolves to the website “ww.liverpoolfc.shop”. The website containing PPC links related to Complainant’s products that promote advertising under wording such as “Football Kits” and a “Liverpool Jersey” among other things. Complainant further alleges that Respondent generates revenue from advertisements at the Disputed Domain Name. This substantiates the fact Respondent has not made any bona fide offering of goods and services under paragraph 4(c)(i) of the Policy or a legitimate and noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

Complainant further alleges that it has found no evidence that Respondent has been commonly known by LIVERPOOL FC at any point in time under paragraph 4(c)(ii) of the Policy.

Respondent has not contested Complainant’s allegations that she lacks rights and legitimate interests in the Disputed Domain Name.

Based on this record, the Panel finds that Complainant has satisfied the element of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant submits that Respondent had actual knowledge of the LIVERPOOL FC Mark before and at the time of the registration of the Disputed Domain Name, and that the Disputed Domain Name was registered with prior knowledge of Complainant’s rights. Complainant further submits that the Disputed Domain Name was registered with the sole purpose of creating an association with Complainant, which is further highlighted by the fact that the Disputed Domain Name had been registered at the new gTLD “.shop” which is relevant and applicable to the sale of goods and services associated with the Disputed Domain Name and thus Complainant’s mark. This demonstrates Respondent was clearly aware of Complainant’s mark before choosing to register the Disputed Domain Name under the gTLD “.shop” exclusively to attract and mislead Internet users that intend to transact business with Complainant.

Complainant further submits that the use of the Disputed Domain Name by Respondent is for the purpose of generating revenue through PPC advertising. Complainant further submits that the Disputed Domain Name is identical to Complainant’s registered trademark rights and is being used for “commercial gain” to take advantage of the Complainant’s trademark rights.

The Panel finds that these allegations are uncontested, and there are sufficient grounds to establish the elements of paragraph 4(b)(iv) of the Policy.

Therefore, Complainant has proven 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, <liverpoolfc.shop>, be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: January 17, 2022

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