WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Premier League Limited v. c/o Woistrustee.com Limited / Domain Administrator, Beyond the Dot

Case No. D2014-1222

1. The Parties

Complainant is The Football Association Premier League Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Lane IP Limited, United Kingdom.

Respondent is c/o Woistrustee.com Limited of Johnsonville, Wellington, United States of America / Domain Administrator, Beyond the Dot, Domain Administrator, Beyond the Dot, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <premierleague.club> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2014. On July 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2014, 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 Complainant on July 31, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 5, 2014.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2014.

The Center appointed Mark Partridge as the sole panelist in this matter on September 8, 2014. 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 The Football Association Premier League Limited, an English professional league for men’s football teams, which is commonly referred to as the Premier League. Complainant was incorporated in 1992 and has used the PREMIER LEAGUE trademark continuously since then.

Complainant has dozens of registrations in the PREMIER LEAGUE trademark around the globe, notably the Community Trade Mark registration No. 000979153, registered on January 1, 2000. Complainant operates a website at “www.premierleague.com”, which is “The Official Website of the Barclays Premier League” and serves as a hub for Premier League information.

Respondent is identified as Domain Administrator, Beyond the Dot, with an email address of “[…]@ylds.com.au”.

Respondent registered the disputed domain name <premierleague.club> on May 1, 2014.

5. Parties’ Contentions

A. Complainant

Complainant alleges rights in the PREMIER LEAGUE trademark as evidenced by its international registrations and based on use since 1992. Complainant argues that based on revenue and international recognition, the PREMIER LEAGUE trademark is a well known mark.

Complainant asserts that the disputed domain name is identical or confusingly similar to its PREMIER LEAGUE mark.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant is not affiliated with, does not endorse, and has not sponsored Respondent’s use of the disputed domain name; (2) the disputed domain name directly copies Complainant’s official <premierleague.com> website without permission and is fully functional, even requesting user names and passwords; (3) Respondent has no trademarks in PREMIER LEAGUE and is not commonly known as PREMIER LEAGUE; and (4) Respondent is using Complainant’s PREMIER LEAGUE brand for commercial gain.

Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has registered a domain name that is identical to Complainant’s PREMIER LEAGUE trademark; (2) Respondent’s use of the disputed domain name will confuse Internet users as to the source of the website because the website content is identical to Complainant’s official “www.premierleague.com” website; and (3) Respondent is using the PREMIER LEAGUE brand to increase traffic to its website and is intentionally deceiving Internet users to benefit financially.

Complainant requests the transfer of the disputed domain name from Respondent to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant is required to prove each of the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used by Respondent in bad faith.

Further, paragraph 14 of the Rules states that:

“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

This Panel finds that Respondent has been afforded a fair opportunity to present its case, so the Panel will proceed to a decision on the Complaint.

Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant is still required to prove each of the three elements required under paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Complainant has rights in the PREMIER LEAGUE mark, as demonstrated by its dozens of international trademark registrations. Most notable of these registrations is the PREMIER LEAGUE word mark registration, Community Trade Mark registration No. 000979153, which was registered on January 1, 2000. A trademark registration constitutes prima facie evidence of the validity of the mark. See, e.g., National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147.

Where a domain name includes an identical match to a complainant’s mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co., WIPO Case No. D2000-0163.

It is a well-established rule that the Top-Level domain (“TLD”) may be disregarded in determining whether a trademark is identical or confusingly similar to a domain name. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762; Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223. Panels have consistently applied this logic where the disputed domain name incorporates a new gTLD. See, e.g., The Royal Bank of Scotland Group plc, National Westminster Bank plc, and Coutts & Co. v. Domain Manager / yoyo.email / Giovanni Laporta, WIPO Case No. D2014-0825; Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique, WIPO Case No. D2014-0393; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206.

Further, the addition of a generic term in a disputed domain name will not normally suffice to avoid a finding of confusing similarity. See, e.g., The Gates Corporation v. WhoisGuard, Embelle Litumbe, WIPO Case No. D2013-0231; Compagnie Gervais Danone v. Daniel Wang, WIPO Case No. 2009-1361. Often, the addition of a generic or descriptive word can enhance the likelihood of confusion among Internet users. See Advance Magazine Publishers Inc. v. 1&1 Internet, Inc. / Carlos Guevara, WIPO Case No. D2012-1424; Outrigger Hotels Hawaii v. William Morgan / WAM Computers, Travel Services, Inc., WIPO Case No. D2010-2133. Where that generic term is the TLD, one UDRP panel found that the adoption of a new gTLD was “apt to increase the risk of confusion [where] the Complainant’s trademark is registered and used in connection with [the] goods [identified by the gTLD].” See Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique, WIPO Case No. D2014-0393. Another UDRP panel explicitly considered the inclusion of the new gTLD in finding confusing similarity, stating “[t]he new gTLD ‘.clothing’ is directly and closely associated with Complainant's principal product line.” See Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597.

The disputed domain name incorporates Complainant’s PREMIER LEAGUE mark in its entirety. In the Panel’s view, the inclusion of the TLD “.club” does not diminish the confusing similarity. To the contrary, this Panel finds that the inclusion of the descriptive term “club” reinforces the confusing similarity between the PREMIER LEAGUE trademark and the disputed domain name because the teams that compromise Complainant’s league are commonly referred to as clubs.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's PREMIER LEAGUE trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the domain name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant asserts that Respondent has no rights or legitimate interests. Complainant argues that it is not affiliated with, does not endorse, and does not sponsor Respondent or its use of the disputed domain name. Respondent does not appear to have been commonly known by the phrase “Premier League.” Finally, Respondent has directly copied Complainant’s “www.premierleague.com” website, and it does not present a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Respondent has not proffered any evidence to rebut Complainant’s assertions.

Based on the record, this Panel finds that Complainant has satisfied its burden of presenting a prima facie case that Respondent lacks rights of legitimate interests in the disputed domain name. Particularly enlightening is the replication of Complainant’s official “www.premierleague.com” website by the disputed domain name. See Complainant’s Amended Complaint Annex 13. Respondent has identically reproduced Complainant’s official “www.premierleague.com” website at the disputed domain name, which cuts against any bona fide offering or legitimate noncommercial or fair uses under paragraphs 4(c)(i) and (iii) or the Policy. Respondent offers no evidence to rebut this.

Consequently, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons,

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Complainant argues that Respondent has registered the disputed domain name in bad faith by intentionally adopting Complainant’s well known PREMIER LEAGUE mark in violation of Complainant’s rights. Further, Respondent’s replication of Complainant’s official “www.premierleague.com” website evidences use in bad faith because Internet users are likely to be confused into by Respondent’s use of the disputed domain name.

This Panel finds that Respondent has registered and used the disputed domain name in bad faith. The PREMIER LEAGUE mark is internationally recognized, and Respondent’s subsequent copying of Complainant’s official website indicates that Respondent registered the disputed domain name with the intent of trading off of the goodwill of Complainant’s mark. Respondent’s use fits squarely within paragraph 4(b)(iv) of the Policy. Respondent is intentionally attempting to attract Internet users to the disputed domain name by adopting Complainant’s mark, and its duplication of Complainant’s official website makes confusion as to the source of the disputed domain name unavoidable. Particularly telling is the fact that Respondent’s website even requests usernames and passwords of Internet users, which makes it possible that Respondent is improperly using this personal information for its own gain.

Respondent has failed to defend its conduct. On the whole, this Panel finds that Complainant has sufficiently shown Respondent’s bad faith registration and use of the disputed domain name, and has satisfied 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 <premierleague.club> be transferred to Complainant.

Mark Partridge
Sole Panelist
Date: September 22, 2014