Anonymized decision for dispute CAC-UDRP-107137

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 is the owner of various trademark registrations for LIVERPOOL FC, including the following:

• European Union trademark registration No. 018708332, registered on December 7, 2022;
• European Union trademark registration No. 007024565, registered on May 22, 2009; and
• United Kingdom trademark registration No. UK00907024565, registered on May 22, 2009.

The Complainant is a professional football club based in Liverpool, United Kingdom. Founded in 1892, it is now one of the most widely-supported football clubs in the world. In the 1970s and 1980s, the Complainant secured eleven League titles and four European Cups. The Complainant won two further European Cups in 2005 and 2019, the latter leading to a 19^th League title in 2020. To date, the Complainant has won nineteen League titles, seven FA Cups, eight League Cups, fifteen FA Community Shields, six European Cups, three UEFA Cups, four UEFA Super Cups, and one FIFA Club World Cup.

 The Complainant is the co-owner of LiverpoolFC.TV Ltd, alongside Granada Media PLC, which is the largest company in the UK within the commercial television sector.

The Complainant has partnered with various household names over the years including Standard Chartered, Nike, Axa, Expedia, Carlsberg, EA Sports, and Cadbury. The Complainant has a variety of revenue streams, including broadcasting, match days, the sale of sports clothing and other branded merchandise.

The domain name <liverpoolfc.tv> was used for the Complainant’s official website in 2000. In 2002, the Complainant began to utilise the domain name <liverpoolfc.com> as its primary domain name, which also initially served as a redirect to <liverpoolfc.tv>. The Complainant’s website at www.liverpoolfc.com generated over 6 million visitors in October 2024.

The Complainant owns various domain names which comprise its LIVERPOOL FC trade mark, such as <liverpoolfc.co.uk>.

The Complainant has a significant Internet presence under the LIVERPOOL FC name through its social media accounts registered under the handle “@liverpoolfc”. Its X, Instagram, and Facebook accounts have over 24 million, 46 million, and 49 million followers, respectively.

The Respondent is identified in the registration information as Phil Dutton of Spiv Road, Liverpool, Liverpool, L44AA, UK.

The Respondent registered the disputed domain name on July 24, 2024. At the time of filing the Complaint, the disputed domain name resolved to an inactive webpage.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in the LIVERPOOL FC trade mark. The Panel agrees in this regard that LIVERPOOL FC is a well known trademark.

The disputed domain name contains the entirety of the Complainant’s LIVERPOOL FC trademark with the addition of the prefix “mobiletickets“. These words are descriptive in nature, considering that the Complainant promotes and makes available tickets to football matches and hospitality events via its official websites. The Complainant’s LIVERPOOL FC trademark is recognizable within the disputed domain name. The addition of the descriptive term “mobiletickets” does not prevent a finding of confusing similarity but in fact adds to the confusion with the Complainant’s trademark. See sections 1.7 and 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant provided evidence that it owns trademark rights in the LIVERPOOL FC mark long before the disputed domain name was registered. The Respondent is not affiliated with the Complainant and was not licensed or otherwise authorized by the Complainant to use the Complainant’s LIVERPOOL FC trademark or to register it in a domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name.

The Respondent did not submit a formal Response and did not provide any explanation or evidence to show he has rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)).

The LIVERPOOL FC mark is a distinctive and well-known trademark, having been registered and used for many years, with an extensive global reputation. The trademark is exclusively associated with the Complainant and it would be hard to conceive of any good faith registration and use of the disputed domain name which incorporates the LIVERPOOL FC mark.

Although the disputed domain name resolves to an inactive webpage, UDRP panels have taken the view 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“. See  WIPO Overview 3.0, section 3.3.  The Panel determines that the doctrine of passive holding applies in this case in view of: (i) the degree of distinctiveness and reputation of the Complainant’s trademark; (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the Respondent’s concealing his true identity and use of false contact details; and (iv) the implausibility of any good faith use to which the domain name may be put. In relation to point (iii), the Panel notes the Complainant’s assertion that in the domain name registration, the Respondent adopted the name of one of the Complainant’s employees. The Panel considers the Respondent‘s conduct of impersonation and the provision of a false address to be strong indicators of bad faith  registration.

The Panel therefore concludes that the disputed domain name was registered and used in bad faith.