Case number | CAC-UDRP-106089 |
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Time of filing | 2023-12-20 09:25:37 |
Domain names | uefaeuro2032.com |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | Union des Associations Européennes de Football |
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Complainant representative
Organization | Stobbs IP (Stobbs IP) |
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Respondent
Name | Steven Luty |
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The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
The Complainant submitted evidence that it is the registered owner of the following trademark registrations and applications:
- United Kingdom registration No. UK00800931376 for “UEFA”, registered since 7 July 2008 for the international classes 1, 4, 35, 37 and 42;
- United Kingdom registration No. UK00907464084 for “UEFA”, registered since 22 July 2009 for the international classes 3, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 36, 38, 39, 40, 41, 43, 44 and 45;
- United Kingdom registration No. UK00908774812 for “UEFA”, registered since 28 June 2010 for the international classes 1, 4, 35, 37 and 42;
- International registration at WIPO No. 718096 for “UEFA”, registered since 16 April 1999 for the international classes 6, 9, 12, 14, 16, 18, 20, 21, 25, 28, 29, 30, 32, 38, 41 and 42, designating the United Kingdom;
- United Kingdom registration No. UK00910433944 for “UEFA” (logo), registered since 26 April 2012 for the international classes 14, 16, 21, 25, 28, 35, 38 and 41;
- United Kingdom registration No. UK00003205047 for “THE EUROS”, registered since 7 April 2017 for the international classes 3, 4, 9, 12, 14, 16, 18, 28, 30, 32, 35, 36, 39, 42 and 43;
- Swiss registration No. 704982 for “EURO 2028”, registered since 19 July 2017 for the international classes 16, 25, 28, 38 and 41;
- United Kingdom application No. UK00003967314 for “EUROS 2028”, filed on 13 October 2023 for the international classes 16, 25, 28, 38 and 41; and
- United Kingdom application No. UK00003965893 for “UEFA EURO2028 UK&IRELAND” (logo), filed on 10 October 2023 for the international classes 1, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant claims to have a significant reputation and a vast amount of goodwill in the UEFA and EURO trademarks in the UK and abroad in relation to football in Europe.
The Complainant was founded on 15 June 1954 as the administrative body for association football in Europe and the umbrella organisation for the 55 national football associations across Europe. The headquarters are currently in Nyon, Switzerland. The Complainant represents the national football associations of Europe, runs national and club competitions, including the UEFA European Championship, UEFA Nations League, UEFA Champions League, UEFA Europa League and UEFA Super Cup, and controls the prize money, regulations and media rights to those competitions.
The Complainant has an active online presence, including owning the domain name <uefa.com>, which is the main operating website used by the Complainant to provide news, information, updates, and features relating to UEFA competitions and related services, including but not limited to the UEFA Store for purchasing merchandise. The Complainant is also active on social media and has generated significant endorsement.
The UEFA European Championship is a prestigious European football tournament at the national level, which has taken place every four years since 1960. The UEFA European Championship is the primary association football competition contested by the senior men's national teams of the members of UEFA, determining the continental champion of Europe. Held every four years since 1960, in the even-numbered year between World Cup tournaments, it was originally called the UEFA European Nations Cup.
As early as 1984, the UEFA European Football Championship, commonly known as the EURO, has been commercially identified as ‘EURO’ coupled with the year of the event. In the case of the 1984 tournament, the form this name took was ‘EURO 84’, and in subsequent years the names used have been ‘EURO 88’, ‘EURO 92’, ‘EURO 96’, ‘EURO 2000’, ‘EURO 2004’, ‘EURO 2008’, ‘EURO 2012’, ‘EURO 2016’, ‘EURO 2020’ and for the future ‘EURO 2024’ event. In each case, the name was used to refer to the tournament many years prior to the date of the tournament itself. For example, the name “EURO 2000” has been in use since at least 1997, with the draw for the tournament taking place in January 1998 in Belgium. As a result of such use, the Complainant has generated considerable goodwill and a reputation in respect of the mark ‘EURO’. The EURO 2032 Championship will take place in Italy and Turkey.
The disputed domain name was registered on 29 May 2018.
The Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.
The Respondent has not filed a Response.
On 15 January 2024, the Respondent made the following remarks on the dispute resolution platform: „[…] I'm happy for you to transfer the domain from myself to uefa as I don't want to proceed any further with this dispute. […] I'm putting it in writing now that they can transfer the domain across. I trust you will take care of this and I won't need to do anything further.“
The proceedings were suspended so that the parties could negotiate a settlement. On 5 February 2024, the Complainant informed the Panel that the Respondent had failed to submit a response to their latest request for settlement and asked that the Panel proceed with the decision.
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
The Complainant made the following contentions:
THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR
The Complainant first refers to previous UDRP decisions that confirmed the UEFA and UEFA EURO trademarks were widely recognized in the field of European football championships. The Complainant also lists additional UDRP decisions from various arbitration centers where panels affirmed the Complainant’s rights in the UEFA brands and ordered the transfer of domain names that were confusingly similar to the Complainant’s trademarks.
To address the first UDRP element, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks as it incorporates the elements ‘UEFA EURO’ verbatim and adds the term ‘2032’, which is likely to be perceived as a reference to a future edition of the championship.
RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN RESPECT OF THE DISPUTED DOMAIN NAME
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as per Paragraph 4(c) of the Policy. The Complainant states that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, as it does not resolve to any content. Furthermore, the Complainant asserts that the Respondent has never been known by the name UEFA, UEFA EURO, or UEFA EURO 2032 and is not making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant believes that the Respondent registered the disputed domain name to take advantage of the Complainant’s significant goodwill and reputation in the UEFA brands and to prevent the Complainant from acquiring it, a practice referred to as ‘passive holding’. Given these arguments, the Complainant concludes that the Respondent does not satisfy any of the grounds under Paragraph 4(c) of the Policy to claim a defence.
THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS BEING USED IN BAD FAITH
Turning to the bad faith argument, the Complainant asserts that the disputed domain name has been registered and used in bad faith, as per Paragraph 4(a)(iii) of the Policy. The Complainant argues that its rights in the UEFA and EURO brands pre-date the registration of the disputed domain name and that the Respondent was likely aware of the Complainant's reputation at the time of registration. The Complainant believes that the Respondent registered the disputed domain name to take advantage of the Complainant’s rights and reputation.
The Complainant cites previous UDRP cases where similar circumstances were held to constitute bad faith. It argues that the Respondent had actual knowledge of the Complainant and that the disputed domain name was registered with the sole purpose of creating an association with the Complainant. The Complainant concludes that there is no plausible reason that the Respondent registered the disputed domain name in good faith and that the circumstances support a finding of 'passive holding'.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
This is a proceeding under Paragraph 4 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 CAC Supplemental Rules.
Paragraph 15 of the Rules provides that the Panel shall decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. According to Paragraph 4(a) of the Policy, a complainant must prove each of the following: (i) the 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 respect of the domain name; (iii) the domain name has been registered and is being used in bad faith.
The Panel notes that during the proceedings, the Respondent gave explicit consent to the transfer of the disputed domain name to the Complainant. Because the Parties have failed to reach an agreement on a settlement, the Panel proceeds to hand down a decision. However, as the Respondent expressly agreed to the remedy sought by the Complainant, the Panel feels it sufficient to provide only a brief reasoning for its decision.
First, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name clearly contains the Complainant’s well-known brand “UEFA” in its entirety. The combination of the UEFA brand with the also protected name “EURO” and the number “2032”, clearly alluding to the year of the future championship, makes the risk of confusion between the disputed domain name and the Complainant’s earlier rights only stronger.
Second, the Respondent has not filed a Response and has neither provided any other information that would oppose the Complainant's allegations. In fact, the Respondent agreed to the transfer of the disputed domain name to the Complainant. Thus, the Complainant successfully presented its prima facie case. The Respondent is indeed not commonly known by the disputed domain name, and the disputed domain name has not been used for a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Panel, therefore, holds that the Respondent has no rights or legitimate interest in the disputed domain name.
Third, the Panel essentially agrees with the Complainant’s submission that there is no plausible reason for the Respondent to register the disputed domain name in good faith and that the circumstances of this case support the finding of passive holding of the disputed domain name. With that in mind, the Panel concludes that the disputed domain name has been registered and has been used by the Respondent in bad faith.
- uefaeuro2032.com: Transferred
PANELLISTS
Name | Vojtěch Chloupek |
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