WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Manchester United Football Club Ltd v. WhoisGuard Protected, WhoisGuard, Inc. / kathleen Obregon and WhoisGuard Protected, WhoisGuard, Inc. / Sherri Aiken

Case No. D2020-1849

1. The Parties

The Complainant is Manchester United Football Club Ltd, United Kingdom, represented by Stobbs IP Limited, United States of America (“United States”).

The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / kathleen obregon, United States and WhoisGuard Protected, WhoisGuard, Inc., Panama / Sherri Aiken, United States.

2. The Domain Names and Registrar

The disputed domain names <cheapjerseysmanchesterunited.com> and <cheapmanchesterunitedshop.com> are registered with NameCheap, Inc. (the “Registrar”).

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 Registrar a request for registrar verification in connection with the disputed domain names. On July 16, 2020, the Registrar 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 July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 20, 2020.

The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on September 3, 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 Manchester United Football Club Ltd is a professional Premier League football club based in the United Kingdom.

The Complainant is the proprietor of several trademark registrations including or consisting of MANCHESTER UNITED, inter alia:

- United Kingdom trademark MANCHESTER UNITED FOOTBALL CLUB (figurative) no 2001836A registered on November 3, 1995 in classes 9, 16, and 25.

- European Union (“EU”) trademark MANCHESTER UNITED (figurative) No. 000761312 registered on October 27, 1999 in classes 9, 14, 16, 18, 20, 21, 24, 25, 26, and 28.

- EU trademark MANCHESTER UNITED No. 001333640 registered on February 12, 2002 in classes 9, 14, 16, 18, 20, 21, 24, 25, 26, 28.

- EU trademark MANCHESTER UNITED No. 004057667 registered on January 25, 2006 in classes 36, 38, and 41.

- EU trademark MANCHESTER UNITED (figurative) No. 004057964 registered on July 10, 2006 in classes 36, 38, and 41.

The disputed domain names <cheapjerseysmanchesterunited.com> and <cheapmanchesterunitedshop.com> were registered on November 28, 2017 and May 23, 2018 respectively and at the time of filing the Complaint, both disputed domain names redirected to the website “www.soccersportsshop.com”, currently inactive.

5. Parties’ Contentions

A. Complainant

- The Complainant submits consolidation request of both Respondents in the same Complaint, based on several facts affecting the disputed domain names and their common control.

- The Complainant, a professional Premier League football club based in the United Kingdom, is one of the most famous, popular and successful sports teams in the world. The club was initially founded in 1878 and has been using the brand MANCHESTER UNITED since 1902.

- The Complainant owns the trademark registrations for MANCHESTER UNITED mentioned before.

- The Complainant has an extensive presence on the Internet and social media under its name and trademark MANCHESTER UNITED.

- The disputed domain names wholly incorporate the MANCHESTER UNITED trademark, along with other descriptive words.

- The Respondent has no rights or legitimate interests in respect of the disputed domain names. Bearing in mind the considerable reputation of the MANCHESTER UNITED brand, there is no believable or realistic reason for registration or subsequent use of the disputed domain names other than to take advantage of the Complainant’s rights.

- The disputed domain names resolve to the Respondent’s website, “www.soccersportsshop.com”, which is neither commercial (legitimate or otherwise), or being used fairly.

- The Respondents never gave a response to the letters sent by the Complainant.

- The Complainant’s brand has received widespread recognition, supported by their endorsement on social media and their substantial fan base. This circumstance demonstrates the bad faith of the Respondents.

- The email address associated with one of the disputed domain names has been used to register other suspect domain names related to football clubs.

As a consequence, the Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Procedural Issue: on the Consolidation Request

The Complainant submits the following factors to support the consolidation request:

- Both disputed domain names feature the Complainant’s trademark MANCHESTER UNITED and the generic term “cheap”

- Close registration dates

- Common hosting provider

- Common privacy service

- Common Registrar

- Common email provider, unusual in the Respondents’ country

- Common content

According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, 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.

In the present case, the Complainant has demonstrated that there are certain common elements in the disputed domain names, but above all a common control. This circumstance of common control is, in the opinion of this Panel, the decisive factor in order to grant the consolidation requested by the Complainant.

6.2. On the merits of the case

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, the Panel shall grant the remedies requested if the Complainant proves that:

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

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

(iii) the disputed domain names have been registered and are being used in bad faith.

Pursuant to paragraph 4(a) of the Policy and 15 of the Rules, for this purpose the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has trademark rights for its name MANCHESTER UNITED. Evidence of the well-known character of this trademark has been filed and certainly “Manchester United” is one of the best known and most reputable football clubs in the world.

The disputed domain names wholly incorporate the Complainant’s trademark MANCHESTER UNITED with the additional expressions “cheap jerseys” and “cheap shop”, that can be considered as descriptive. The MANCHESTER UNITED trademark is clearly recognizable in both disputed domain names.

As stated in Crédit Industriel et Commercial v. Manager Builder, Builder Manager, WIPO Case No. D2018-2230:

“The disputed domain name incorporates the CIC trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (‘WIPO Overview 3.0, section 1.8), that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term ‘banks’, which even is the English translation of the French term ‘banques’ as it is reflected in Complainant’s CIC BANQUES trademark, does not avoid the confusing similarity arising from the incorporation of Complainant’s CIC trademark in the disputed domain name.”

The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s MANCHESTER UNITED trademarks as provided under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established based on the facts set out above a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. Having done so, the burden of production shifts to the Respondents to come forward with appropriate evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0 , section 2.1 ). Given that the Respondents have defaulted, they have not met that burden.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondents’ use cannot be considered as a bona fide offering of services or fair use, since the Complainant has provided evidence that the disputed domain names resolved to a website that is not active but was apparently seized for selling counterfeit products.

Neither did the letters sent by the Complainant apparently get any kind of response. If the Respondents had any right or legitimate interest in the disputed domain names, it seems logical to think that they would have responded by disclosing it.

In summary, the Panel finds that paragraph 4(a)(ii) set forth in the Policy is present.

C. Registered and Used in Bad Faith

According to paragraph 4(b)(iv) of the Policy, registration or use of a domain name will be considered in bad faith when:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant’s MANCHESTER UNITED trademark is well known and reputed, well before the registration of the disputed domain names. The Respondents‘ registration and use of the disputed domain names wholly incorporating a well-known third-party mark is, in the Panel’s view, indicative of bad faith, since, as proven by the Complainant, the disputed domain names resolved to a website apparently intended for the sale of sports equipment.

As mentioned in Andrey Ternovskiy dba Chatroulette v. Alexander Ochkin, WIPO Case No. D2017-0334:

“It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).”

As reminded in section 3.1.4 of the WIPO Overview 3.0:

“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

The use of a privacy service also seems to confirm the bad faith of the Respondents. While there may be circumstances that make the use of a privacy service legitimate, several UDRP decisions have considered it a circumstance that contributes to consider bad faith proven when it is combined with other types of circumstances. In GVC Holdings plc / ElectraWorks Limited v. Registration Private, Domains By Proxy, LLC / Adnan Atakan Alta, WIPO Case No. D2016-2563, the panel found that:

“Although privacy services might be legitimate in certain circumstances, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.”

In the light of the above, the Panel finds that the Complainant has established registration and use of the disputed domain names in bad faith and concludes that paragraph 4(a)(iii) of the Policy is satisfied.

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, <cheapjerseysmanchesterunited.com> and <cheapmanchesterunitedshop.com>, be transferred to the Complainant.

José Ignacio San Martín Santamaría
Sole Panelist
Date: September 10, 2020