WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Football Association Premier League Limited v. Robert Opanisga

Case No. D2019-2019

1. The Parties

The Complainant is The Football Association Premier League Limited, United Kingdom, represented by Lane IP Limited, United Kingdom.

The Respondent is Robert Opanisga, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <live-premierleague.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2019. On August 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a clarification request from the Center, the Complainant filed an amended Complaint on August 28, 2019.

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 August 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2019.

The Center appointed David Taylor as the sole panelist in this matter on October 3, 2019. 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

Founded in 1992, the Complainant is a company incorporated in England and Wales. The Complainant consists of 20 football teams playing each other twice, home and away, per season. Seasons run from August to May. In the period from 2006 to 2018, aggregate attendance at Premier League football matches consistently numbered over 13 million, making the Premier League one of the most-attended live sports events in the world. The main source of the Complainant’s revenue is through the sale of broadcasting rights of Premier League matches, which it does through its official broadcasting partners.

The Complainant is the owner of numerous trademarks, registered in jurisdictions throughout the world, for use in connection with its entertainment, competition and sporting services, including:

- European Union Trade Mark Registration No. 979153, PREMIER LEAGUE, registered on January 20, 2000;

- European Union Trade Mark Registration No. 015086333, PREMIER LEAGUE and design, registered on August 2, 2016; and

- United Kingdom Trade Mark Registration No. 1530592, PREMIER LEAGUE, registered on March 7, 1997.

The Complainant is also the owner of the domain name <premierleague.com>, from which it operates its official website.

The disputed domain name was registered using a privacy service on January 24, 2017. The disputed domain name redirects to a website at “www.football-online.live/games/” (the “Respondent’s website”), titled “Live-Premier League”, prominently displaying the Complainant’s corporate lion logo. The Respondent’s website states:

“Watch Barclays Premier League Live Streaming

You can watch the following football games online, by clicking on the match link or the Watch Now button in the right. Enjoy the best streams for English Barclays Premier League, Uefa Champions League, Uefa Europa League live matches online and for Free!”

Under the above text there appears a list of links to websites purporting to offer live streaming of fixtures. On clicking through the links, Internet users are further redirected to websites where Internet users are requested to create an account to stream content by providing their email address and a password. In the footer of the Respondent’s website, there appears a fine-print disclaimer which reads:

“DMCA DISCLAIMER: None of the video streams are hosted by this site. Streams hosted by places like Veemi, Veetle, Mips are only embedded. This website is not responsible for the legality of the content. For legal purposes, please contact the appropriate media owner / host.”

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PREMIER LEAGUE trademark, as the disputed domain name encompasses the Complainant’s trademark in its entirety. The Complainant asserts that the addition of the term “live” simply acts to describe the content of the website, in that it will provide live content in relation to the Premier League. The Complainant argues that the addition of such a term in the disputed domain name is not sufficient to avoid a finding of confusing similarity; in fact, the addition of the word “live” will increase the likelihood of confusion, as the relevant consumer will perceive the disputed domain name as hosting official live coverage of Premier League fixtures.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it is not affiliated with, nor does it endorse, nor sponsor the Respondent’s use of the disputed domain name. The Complainant further states that the Respondent is not an official broadcasting partner of the Complainant. The Complainant asserts that the Respondent has no trademarks for “premier league” and that there is no evidence that the Respondent is commonly known by or referred to as “premier league”. The Complainant submits that the Respondent is using the well-known Premier League brand for commercial gain and to increase traffic to its own website.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent has registered a domain name that includes the Complainant’s PREMIER LEAGUE trademark alongside the term “live”. The Respondent’s website makes use of the Complainant’s trademarks as well as those of the member clubs of the Premier League throughout. The Complainant asserts that the Respondent’s website clearly aims to portray itself as an official way of streaming live Premier League content. The Complainant states that users of the Respondent’s website may disclose personal details such as usernames and passwords, and that any subsequent data breach would have a damaging effect on the Complainant’s reputation. The Complainant asserts that any streaming of Premier League match footage without the Complainant’s authorization would also constitute copyright infringement and is a further indication of bad faith. In conclusion, the Complainant submits that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services provided therein.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed in its claim, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely that:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the PREMIER LEAGUE trademark in light of its registrations and longstanding use of the same in connection with its entertainment, competition and sporting services. Selected details of the Complainant’s trademark registrations are provided in the factual background section above.

The disputed domain name incorporates the Complainant’s PREMIER LEAGUE trademark in its entirety, simply omitting the space between the elements “Premier” and “League” making up the Complainant’s trademark, preceded by the term “live”, separated from the Complainant’s trademark by a hyphen. The Panel finds that the Complainant’s trademark is immediately recognizable in the disputed domain name. The addition of the element “live-” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to make use of the Complainant’s trademarks in a domain name or otherwise. There is no indication that the Respondent is an authorized broadcaster of the Complainant’s fixtures. There is no evidence that the Respondent is otherwise commonly known by the disputed domain name.

The Panel considers that the composition of the disputed domain name itself, i.e., the Complainant’s trademark together with the term “live”, carries a risk of implied affiliation with the Complainant. Internet users may view the disputed domain name as an official source for live streaming of the Complainant’s fixtures. Furthermore, the prominent display of the Complainant’s trademarks, including its corporate lion logo, on the Respondent’s website gives the impression that the website is operated by or otherwise authorized by the Complainant, which is not the case. In light of the above, the presence of a fine‑print detail in the footer of the Respondent’s website does not cure the misleading impression of association created by the Respondent’s use of the disputed domain name.

Despite having no affiliation or authorization from the Complainant, the Respondent’s website purports to make available content, the broadcasting of which the Complainant reserves unto itself and from which the Complainant derives substantial revenue. Even if the Respondent does not charge for streaming content purportedly offered via its website, the provision of such content (or linking to third-party websites where such content is provided) interferes with the Complainant’s field of commercial activity in such a way that disrupts the Complainant’s business. Accordingly, the Panel finds that the Respondent’s use of the disputed domain name does not give rise to any rights or legitimate interests; see Fédération Française de Tennis (FFT) v. James Bay, WIPO Case No. D2017-0671:

“The Respondent’s adoption of the Disputed Domain Name, even if noncommercial, is in substance the adoption of the Complainant’s own trademark combined with a term which is an indication of commercial activity that the Complainant itself undertakes – namely providing (or licensing the provision of) broadcasting or streaming of the French Open tournament. In the Panel’s opinion adoption of a name which is simply too close to the Complainant’s own commercial field of activity does not establish a legitimate interest, even if the name is then used noncommercially.”

In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear from the content of the Respondent’s website that the Respondent registered the disputed domain name in order to create an impression of association with the Complainant. At the time of registering the disputed domain name, the Complainant had become a world-renowned provider of sports-related competitions, with registered trademarks significantly pre-dating the registration of the disputed domain name. There being no authorization for the Respondent to make use of the Complainant’s trademarks, the Panel finds that the Respondent registered the disputed domain name in bad faith in full knowledge of the Complainant’s rights.

As noted above, the Respondent’s website purports to provide links to third-party services allowing Internet users to stream the Complainant’s fixtures for free. It is unclear whether the Respondent receives click‑through revenue from such activities. In any event, the Panel does not consider such use to be legitimate. The contents of the Respondent’s website are intended to create an initial impression that the Respondent’s website is either operated or authorized by the Complainant, which in reality is not the case. By providing links to third‑party streaming services, the Respondent is assisting in the illegitimate provision of broadcasting services that are directly relied upon by the Complainant as a source of revenue. The Respondent’s use of the disputed domain name diverts consumers away from the Complainant’s official broadcasters, having the effect of disrupting the Complainant’s business; see Fédération Française de Tennis (FFT) v. James Bay, supra. Again, the presence of a fine-print disclaimer in the footer of the Respondent’s website does not serve to render the Respondent’s activities bona fide, as the Respondent’s website clearly creates a misleading impression of endorsement by the Complainant; see WIPO Overview 3.0, section 3.7:

“[…] the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.

On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.”

Indeed, the promotion of unauthorized distribution of the Complainant’s copyrighted materials via third-party websites cannot be justified by the presence of a disclaimer. In the circumstances, the Panel considers the Respondent’s registration of the disputed domain name using a privacy service to mask its identity to be a further indicator of the Respondent’s bad faith.

For the foregoing reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Complainant has satisfied 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 <live-premierleague.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: October 18, 2019