The Forum panelist who handled the UDRP filed against the domain LiverpoolFC.us did not mince his words.
After examining the Respondent’s business plan and assorted claims that the domain was registered for a “fitness corporation” located in Liverpool, the panelist said:
“Respondent’s Response and annexed document fail to provide any evidence of Respondent having rights or legitimate interests in the at-issue domain name. In fact, Respondent’s tedious and lengthy annexed submission crudely pretends to be some sort of business plan but is nothing more than what appears to be based on a generic template for a business plan where the populating content is lacking any real substance and comes across as either non-sense or gibberish. The ginned up submission is nothing more than an attempt to fool the Panel into believing that there is some bona fide offering of goods or services connected with the domain name and its registration. The Panel finds that Respondent’s submission of fabricated evidence, in itself, demonstrates that Respondent lacks right and legitimate interest in the at-issue domain name.”
The Complaint was filed by Liverpool FC, officially The Liverpool Football Club And Athletics Grounds Ltd. The panelist ordered the domain’s transfer which means that the Respondent will have to find another name for their fitness corporation.
DECISION – The Liverpool Football Club And Athletics Grounds Ltd v. MATTHIEU VIGNE
Claim Number: FA2401002079455
PARTIES
Complainant is The Liverpool Football Club And Athletics Grounds Ltd (“Complainant”), represented by Stobbs IP Ltd, United Kingdom. Respondent is MATTHIEU VIGNE (“Respondent”), represented by Lydie DELMOTTE of SIBYL AVOCAT, Réunion Island.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is liverpoolfc.us, registered with OVH sas.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 17, 2024; Forum received payment on January 17, 2024.
On January 18, 2024, OVH sas confirmed by e-mail to Forum that the liverpoolfc.us domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@liverpoolfc.us. Also on January 19, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 12, 2024.
On February 14, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
The Complainant is a professional football club based in Liverpool, United Kingdom. The club was founded in 1888 and is now one of the most widely supported football clubs in the world.
The domain name www.liverpoolfc.tv had been used for the purposes of a website at www.liverpoolfc.tv since as early as 2000 serving as the official website for Complainant. In 2002, the Complainant began to utilize the at-issue domain name as its primary website for the club, initially as a redirect to www.liverpoolfc.tv, and then as a website at www.liverpoolfc.com in its own right
The Complainant relies on its ownership of multiple trademark registrations for LIVERPOOL FC to demonstrate its rights in a mark for the purposes of Policy 4(a)(i).
The at-issue domain name is identical or at least confusingly similar to Complainant’s trademark as the at-issue domain name consists of Complainant’s trademark less its domain name impermissible space, with all followed by the “.us” country code top level (“ccTLD”).
Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is not authorized to use Complainant’s trademark and there is no relationship between Respondent and Complainant. Respondent is not known by the at-issue domain name and Respondent has not used, and is not using, the at-issue domain name in relation to a bona fide offering of goods and services as the domain name does not resolve to a live website.
Respondent registered and is using the at-issue domain name in bad faith. Based on the notoriety of Complainant’s mark Respondent must have had prior knowledge of Complainant’s trademark when it registered the at-issue domain name. Respondent’s non-use of the domain name does not prevent a finding of bad faith under the doctrine of passive holding,
B. Respondent
Respondent contends as follows:
Respondent’s LIVERPOOL Fitness Corporation (Liverpool FC) project is a strategic extension of a fitness and wellness complex, aiming to diversify offerings and meet the needs of the target clientele.
There is no confusion between the at-issue domain name and Complainant’s brand. In light of the constructed project, the appellation chosen since 2019 is interpreted as follows: linked to the fitness world, the term FC refers to “Fitness Corporation.” “Liverpool,” subtly combining wordplay and marketing resonance, is an invitation to “leave your pool,” symbolizing luxury and comfort.
Respondent has a legitimate interest in the domain name. The domain name refers to a fitness complex project Respondent intends to develop in the United States. Respondent incurred numerous expenses to enable deployment. The at-issue domain name corresponds to the name of the activity. The target clientele is distinct from Complainant’s clientele. Taking into account its investment and the implementation of a distinct identity for its target clientele, the Respondent has a genuine legitimate interest due to the project dedicated over several years.
There is an absence of bad faith in Respondent’s registering and using the at-issue domain name. Respondent does not compete with or capture the Complainant’s clientele. The holder of a trademark cannot oppose the use in business of a sign identical to his trademark unless the use harms or risks harming the essential functions of the trademark. Considering the fitness project in the United States, the visual identity, and absence of any reference to Complainant, no risk of confusion could be generated in the minds of the public. It is purely a business devoid of fraudulent intent from the Respondent. Respondent registered the domain in relation to its project. The project is presented in the Annex.
FINDINGS
Complainant has rights in the LIVERPOOL FC trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the LIVERPOOL FC trademark.
Respondent holds the at-issue domain name passively.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has multiple national trademark registrations for its LIVERPOOL FC trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the LIVERPOOL FC mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018)(“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
Respondent’s liverpoolfc.us domain name consists of Complainant’s LIVERPOOL FC mark less its domain name impermissible space, followed by the “.us” top-level. The slight difference between Complainant’s trademark and the at-issue domain name fail to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s liverpoolfc.us domain name is identical or confusingly similar to Complainant’s LIVERPOOL FC trademark pursuant to Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s boniva.top domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
Respondent’s claims and annexed document are wholly irrelevant to the issue of confusingly similarity.
Rights or Legitimate Interests
Under Policy ¶ 4(a)(iii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “MATTHIEU VIGNE” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the liverpoolfc.us domain name. The Panel therefore concludes that Respondent is not commonly known by liverpoolfc.us for the purposes of Policy ¶ 4(c)(iii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Respondent holds the at-issue domain name passively. Doing so indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iv). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018)(“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Respondent’s Response and annexed document fail to provide any evidence of Respondent having rights or legitimate interests in the at-issue domain name. In fact, Respondent’s tedious and lengthy annexed submission crudely pretends to be some sort of business plan but is nothing more than what appears to be based on a generic template for a business plan where the populating content is lacking any real substance and comes across as either non-sense or gibberish. The ginned up submission is nothing more than an attempt to fool the Panel into believing that there is some bona fide offering of goods or services connected with the domain name and its registration. The Panel finds that Respondent’s submission of fabricated evidence, in itself, demonstrates that Respondent lacks right and legitimate interest in the at-issue domain name. And, even if Respondent had some actual project planned for the domain name, the fact that Respondent registered a domain name knowingly containing Complainant’s trademark to identify such project would hardly constitute a bona fide use.
Given the forgoing the Panel finds that Respondent lacks of rights and legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Registration or Use in Bad Faith
As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to the Policy regarding the at-issue domain name.
Respondent holds the at-issue confusingly similar domain name passively. Respondent’s current failure to actively use liverpoolfc.us indicates Respondent’s bad faith registration and use of such domain name under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Notably, passive holding of a domain name has been viewed as a disruption to a complainant’s business under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
Next and as discussed above, the Panel finds that Respondent has, in bad faith, submitted what overtly appears to be fabricated evidence and false statements in an attempt to influence the outcome of this proceeding.
Moreover, Respondent had actual knowledge of Complainant’s rights in the LIVERPOOL FC mark when it registered liverpoolfc.us as a domain name. Respondent’s prior knowledge of Complainant’s LIVERPOOL FC trademark is evident from the wide and long term notoriety of Complainant’s mark. Respondent’s registration and use of liverpoolfc.us with knowledge of Complainant’s rights in LIVERPOOL FC further shows Respondent’s bad faith registration and use of liverpoolfc.us pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant’s mark when registering the disputed domain name); see also, Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the liverpoolfc.us domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 13, 2024
