WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Liverpool Football Club and Athletic Grounds Limited v. Darren Mills, Mills NZ
Case No. D2021-4132
1. The Parties
The Complainant is The Liverpool Football Club and Athletic Grounds Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Darren Mills, Mills NZ, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <liverpoolfc.coach> is registered with eNom, LLC (the “Registrar”).
3. Procedural History
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 17, 2021. On December 20, 2021, the Center received an email communication from the Respondent. On December 21, 2021, the Center invited the Parties to explore settlement options. On December 22, 2021, the administrative proceeding was suspended. In the absence of a settlement, the proceeding was reinstituted on January 25, 2022.
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 January 27, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the commencement of Panel appointment process on February 18, 2022.
The Center appointed Taras Kyslyy as the sole panelist in this matter on February 23, 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
The Complainant is a professional football club founded in 1892 and based in Liverpool, United Kingdom. The club won several European Cups, most recently in 2005 and 2019, and a nineteenth League title in 2020, the club’s first during the Premier League era. The club has won 19 League titles, seven FA Cups, a record nine League Cups and fifteen FA Community Shields. In international club competitions, the club has secured six European Cups/UEFA Champions League, more than any other English football club, three UEFA Cups, four UEFA Super Cups, and one FIFA Club World Cup.
The Complainant owns and operates a number of domain names featuring “Liverpool FC”, including <liverpoolfc.tv>, <liverpoolfc.com>. The Complainant’s significant Internet presence under the Liverpool FC name is further demonstrated by a variety of social media accounts acquired and registered under handles “@liverpoolfc” with over 18 million followers on Twitter, 34 million on Instagram, and over 40 million on Facebook.
The Complainant owns numerous trademark registrations comprising of LIVERPOOL FC, including, for instance the United Kingdom trademark registration No. 907024565, registered on May 22, 2009.
The disputed domain name was registered on September 2, 2019 and resolves to a parking page.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name wholly incorporates the Complainant’s trademark in its entirety, with no additional elements. The generic Top-Level Domain (“gTLD”) shall be ignored for the purposes of the similarity assessment.
The Respondent has no rights or legitimate interests in the disputed domain name. Bearing in mind the considerable reputation of the 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 Complainant’s trademark rights. The disputed domain name fails to resolve to any relevant content, thus the Respondent has not made any bona fide offering of goods and services. The Respondent has never been known as “Liverpool FC” at any point in time. Nothing about the disputed domain name suggests that the Respondent is making a legitimate noncommercial or fair use of it.
The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark and respective trading and commercial activities of the business, significantly pre-date the registration of the disputed domain name. It undoubtedly had widespread global recognition, supported by various worldwide news commentary, fan sites, social media activity, endorsements, collaborations and partnerships. Thus, the Respondent had actual knowledge of the Complainant’s trademark before and at the time of the registration. The disputed domain name was registered with the sole purpose of creating an association with the Complainant, which is further highlighted by the fact that it had been registered at the new gTLD “.coach”, which is relevant and applicable in context of services and goods provided by the Complainant. In view of the worldwide recognition of the Complainant’s trademark, there is no plausible reason that the Respondent could have had for registering the disputed domain name.
Registration of the disputed domain name which incorporates the Complainant’s trademark must have been to prevent the Complainant from reflecting their mark in a corresponding domain name. The passive holding of the disputed domain name does not prevent from making a finding that it was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions. In its informal response, the Respondent commented that the disputed domain name was registered in the interest of a few Complainant’s fans for fun, and to use it as an email address with no intention of seeking a commercial gain.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its registered trademark.
The addition of the gTLD “.coach” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name consists solely of the Complainant’s trademark.
Considering the above, the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe,/ Victoria McCann / Robert Hope, WIPO Case No. D2008-0642).
The Respondent has no rights or legitimate interests in the disputed domain name resolving to a parking page (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Also, according to section 2.7.1 of the WIPO Overview 3.0 for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. The Panel finds that in the present case the disputed domain name registered by a group of the Complainant’s fans does not meet the above requirements, since it remains inactive after the registration.
Noting the high risk of implied affiliation between the disputed domain name and the identical well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, as also indirectly admitted by the Respondent, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well-established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United Kingdom and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith. Additionally, given the meaning of the word “coach” and the nature of the Complainant’s activities in sports, the addition of the gTLD “.coach” adds confusion as the Internet user may mistakenly believe the website linked to the disputed domain name to be operated by the Complainant for its coach team (see, e.g., Telstra Corporation Limited v. Zhen Yang, WIPO Case No. D2016-1680).
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard, the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to provide any evidence of actual or contemplated good faith use, and (iii) the implausibility of any good faith use to which the disputed domain name may be put.
Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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.coach> be transferred to the Complainant.
Date: March 5, 2022