WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Manchester United Football Club Ltd. v. whitted john and WhoisGuard Protected, WhoisGuard, Inc. / Didi Dimtroff

Case No. D2020-1848

1. The Parties

The Complainant is Manchester United Football Club Ltd., United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondents are whitted john, United States of America (“United States”) and WhoisGuard Protected, WhoisGuard, Inc., Panama / Didi Dimtroff, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <manutdfcteamshop.com> is registered with NameCheap, Inc. (the “Registrar 1”). The disputed domain name <soccermanchesterunitedjersey.com> is registered with 1API GmbH (the “Registrar 2”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2020. On July 16, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 17, 2020, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2020, 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 July 28, 2020.

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 Respondents of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2020.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 14, 2020. 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 one of the most successful professional football clubs in the world. Based in Old Trafford, Greater Manchester, the club competes in the English Premier League and has won more trophies than any other English football club in history. Initially founded in 1878, the club has been known as “Manchester United” since 1902. The Complainant is now one of the top-three most valuable football clubs in the world, with a total value estimated to be over USD 3.5 billion.

The Complainant is known both as “Manchester United” and as “Man Utd”, a shortened version of the club’s name, which the Complainant uses in many contexts including on several of its social media channels. For example, the Complainant’s Twitter handle is @ManUtd, which has over 23 million followers. The Complainant’s Facebook page has over 72 million followers.

The Complainant owns many trademark registrations, including the following:

United Kingdom Trademark Registration No. 2001836A for MANCHESTER UNITED FOOTBALL CLUB and design, registered on November 3, 1995;

European Union Trademark Registration No. 000761312 for MANCHESTER UNITED and design, registered on October 27, 1999

European Union Trademark Registration No. 001333640 for MANCHESTER UNITED, registered on February 12, 2002;

European Union Trademark Registration No. 004057667 for MANCHESTER UNITED, registered on January 25, 2006;

European Union Trademark Registration No. 004057964 for MANCHESTER UNITED and design, registered on July 10, 2006;

European Union Trademark Registration No. 012355962 for MAN UTD, registered on May 19, 2014; and

United States Trademark Registration No. 5847510 for MAN UTD, registered on September 3, 2019.

The Complainant’s official website is found at “www.manutd.com”, which has been active since at least 2005. The Complainant also owns an extensive collection of domain names, many of which incorporate either the MANCHESTER UNITED or the MAN UTD trademarks. Official merchandise, including jerseys are offered for sale on the Complainant’s website at “store4.manutd.com”.

The disputed domain names are <manutdfcteamshop.com>, registered on September 12, 2016 and <soccermanchesterunitedjersey.com>, registered on May 12, 2017.

At the time the Complaint was filed, both of the disputed domain names resolved to inactive pages. Previously, both of the disputed domain names resolved to websites that featured many identical, or highly similar elements, including graphical layouts, website structure and content. Both websites purported to sell authentic Manchester United jerseys and both featured a banner stating “Official Online Store of the Manchester United FC” along with the club crest and a photo of former club captain and leading goal scorer, Wayne Rooney.

5. Parties’ Contentions

A. Complainant

Consolidation

The Complainant contends that its Complaint should be consolidated against the two Respondents since it appears that the disputed domain names are under common control. This assertion is based on the fact that both of the disputed domain names previously resolved to websites that featured identical or highly similar website structure, graphical layout, payment providers and website content. Furthermore, both disputed domain names resolved to homepages that featured identical banners reading “Official Online Store of the Manchester United FC”.

The Complainant submits that the possibility that two separate and unrelated domain name owners would decide to resolve their respective domain names to the same crudely-constructed website is implausible.

Further, the Complainant also submits that the disputed domain names were registered exactly eight months apart, though it does not elaborate on what inference should be drawn from these dates.

The Complainant also asserts that since both disputed domain names relate to the MANCHESTER UNITED family of trademarks, it would be procedurally efficient to consolidate the matters in order to avoid duplicative proceedings.

Identical or Confusingly Similar

The Complainant contends that it owns all MANCHESTER UNITED and MAN UTD trademarks and associated rights by virtue of its trademark registrations, some of which are listed in paragraph 4, above. The Complainant submits that it has built up substantial recognition in the public domain, which has been recognized in previous decisions.

The disputed domain names contain the MAN UTD and the MANCHESTER UNITED trademarks, respectively. The Complainant contends that each disputed domain name merely incorporates one of the Complainant’s trademarks and combines it with words that reinforce an association between the Complainant’s brand and the disputed domain name.

The <manutdfcteamshop.com> disputed domain name comprises the Complainant’s MAN UTD trademark, and the terms “FC”, “team” and “shop”. The terms “FC” and “team”, serve to reinforce the association with the Complainant since “FC”, a common acronym for “football club”, and “team” point to the nature of the Complainant’s business. The generic word “shop” does not distinguish the disputed domain name from the Complainant. On the contrary, it reinforces the association between the website and the Complainant since the Complainant is also in the business of selling its shirts online on its official online store.

The <soccermanchesterunitedjersey.com> disputed domain name comprises the MANCHESTER UNITED trademark, plus the words “soccer” and “jersey”. Both words reinforce the association with the Complainant. The word “jersey” is descriptive of the product that was being sold on the associated website.

The disputed domain names imply an association with the Complainant. None of the words in either disputed domain name serve to alter the overall impression of association in the eyes of unsuspecting Internet users.

Rights or Legitimate Interest

The Complainant submits that it did not authorize, approve or otherwise sanction use of its trademarks in either of the disputed domain names nor in the content of the associated websites. The Complaint contends that the Respondents have not demonstrated a right or legitimate interest in the disputed domain names because: i) The statement displayed on each website was an “Official Online Store of the Manchester United FC”, combined with the look and feel of the website that is similar to that of the Complainant’s official online shop, indicates that the Respondents’ intention was to mislead the public and to falsely suggest that the websites were associated with the Complainant. Therefore, the Respondents’ use of the disputed domain names is not in connection with a bona fide offering of goods or services; ii) The Respondents have never legitimately been known as either “Manchester United” or “Man Utd”; and iii) The Respondents’ attempt to attract the public to its websites using the Complainant’s trademarks is not a legitimate noncommercial or fair use of the disputed domain names.

Registered and Used in Bad Faith

The Complainant also contends that the disputed domain names have been registered and used in bad faith. Due to the considerable reputation of the MANCHESTER UNITED/MAN UTD trademarks, there is no credible reason for the registration or use of the disputed domain names other than to take unfair advantage of the Complainant’s rights.

The disputed domain name <manutdfcteamshop.com> was registered on September 12, 2016 and <soccermanchesterunitedjersey.com> was registered on May 12, 2017. On both of these dates, the Complainant’s trademarks were very well known around the world. The content on the Respondents’ websites indicate that the disputed domain names were registered with the sole purpose of creating an association with the Complainant. The Respondents used the disputed domain names to attract the Complainant’s customers to their own stores. The Respondents did not disclose their relationship with the Complainant trademark owner, rather they falsely suggested that each website was an official website owned by the Complainant.

Further, the Complainant contends that the Respondents have ignored a previous attempt by the Complainant to amicably resolve this matter. The Complainant also notes that one of the Respondents, Didi Dimitroff, has been a respondent in a previous UDRP proceeding, in which the Respondent did not provide a response and the disputed domain name was transferred to the Complainant.

B. Respondents

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

6. Discussion and Findings

6.1 Consolidation

The Policy provides that multiple respondents may be joined in one dispute in certain circumstances. WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, provides useful commentary on the relevant procedures:

Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

In this case, the disputed domain names resolved to websites that featured many identical elements, including: photographs in the foreground and background, choice and use of colour, website layout and structure, use and placement of the Complainant’s and other trademarks, the text and placement of the banners on the homepages that state “Official Online Store of the Manchester United FC” and “Manchester United FC Apparel and Manchester United FC Gear at the Official Manchester United FC Store”, the products sold, and the payment options. The websites share too many features in common for this overlap to be merely coincidental. The Panel finds that the many identical elements on the websites strongly indicate that the disputed domain names and corresponding websites are subject to common control.

The Panel also finds that the principles of procedural efficiency and judicial economy favour consolidation. All of the Complainant’s submissions apply equally to the websites located at the two disputed domain names. This is because of the significant and obvious overlap in the elements and purpose of the websites at the disputed domain names.

These factors support the Complainant’s request, and accordingly the Panel finds that joinder will promote the efficient resolution of this dispute without prejudicing the fairness or equity of the treatment of the Respondents.

6.2 Substantive Issues

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(A) the disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(B) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

A. Identical or Confusingly Similar

The Panel finds that the Complainant owns rights in the MANCHESTER UNITED and MAN UTD trademarks by virtue of its trademark registrations, some of which are listed above.

The Panel further finds that the disputed domain names <manutdfcteamshop.com> and <soccermanchesterunitedjersey.com> are confusingly similar to the Complainant’s registered trademarks MAN UTD and MANCHESTER UNITED, respectively. According to the WIPO Overview 3.0, section 1.7, “[I]n cases where a domain name incorporates the entirety of a trademark or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The disputed domain names are identical to the Complainant’s registered trademarks with the addition of the terms “FC”, “team”, “shop”, “soccer”, and “jersey”. The inclusion of these words does not serve to prevent a finding that the disputed domain names are confusingly similar to the Complainant’s registered trademark.

Therefore, the Panel finds that the Complainant has satisfied the required element under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is prepared to find that, on the basis of the Complainant’s undisputed contentions, the Respondents have not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor have the Respondents been commonly known by the disputed domain names, nor can it be found that the Respondents made a legitimate noncommercial or fair use of the disputed domain names.

The Panel accepts the Complainant’s submission that it has been known as “Manchester United” since 1902 and has become one of the most famous sports organizations in the world. The Panel also accepts the assertion that the Respondents knew of the Complainant’s business and were aware of the Complainant’s trademark rights in the marks MAN UTD and MANCHESTER UNITED when the disputed domain names were registered in 2016 and 2017, respectively.

Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. According to the WIPO Overview 3.0, section 2.1, “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel notes that the Respondents did not file any response to the Complainant’s contentions.

In performing this analysis, the Panel is mindful of the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903which apply in the reselling context. In considering whether use of an allegedly confusing domain name by a reseller, distributor, or similar service provider is fair, the Panel must consider the following factors:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the website to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark owner; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Panel finds that the Respondents’ websites do not meet the third criteria, specifically, the websites do not accurately and prominently disclose the registrants’ absence of a relationship with the Complainant. On the contrary, the websites attempted to deceive potential customers by explicitly misrepresenting the source, sponsorship, affiliation, and endorsement of its website through unambiguous language such as “Official Online Store of the Manchester United”, and pervasive use of the Complainant’s registered trademarks and images associated with the Complainant, such as its stadium and players. This is a case of blatant simulation.

In these circumstances, the Panel finds that the Complainant is deemed to have satisfied the second element of the Policy, set out in paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Upon review of the evidence filed in the Complaint, and taking into consideration the Respondents’ failure to file any response contesting the facts contained therein, the Panel finds that the Respondents registered and used the disputed domain names in bad faith.

The Panel accepts the Complainant’s contention that the Respondents were aware of the Complainant’s trademark rights when they registered confusingly similar domain names, and used them to attract customers to their websites for commercial gain creating a likelihood of confusion with the Complainant’s trademark rights.

Accordingly, the Panel finds that the Complainant has satisfied the third and final required element under 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 names, <manutdfcteamshop.com> and <soccermanchesterunitedjersey.com>, be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: September 28, 2020