Decision for dispute CAC-UDRP-104137

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

In these proceedings, the Complainant relies mainly on the following trademark:

- UEFA WOMEN’S EURO (word), EU Trade Mark Registration No. 017141839, registered as of August 24, 2018, in the name of Union des Associations Européennes de Football (UEFA) (the Complainant).

The Complainant has also mentioned in annex of the Complaint a few other trademark registrations in the EU and in France, concerning specific past “EURO” championships.

The Complainant owns hundreds of other trademarks containing “EURO” in various countries, which have not been mentioned in the Complaint. In any case, it is noted that the United States of America (the country of the Respondent) is among the countries concerned.

According to its official website (www.uefa.com), the Complainant is the governing body of European football and the umbrella organisation for 55 national football associations across Europe. It is famous all around the world, including in the U.S.A., where the Respondent is located. Many of its competitions, such as the classic European Championships (“Euro”) and the “Women’s Euro” – more recently – are well-known.

The Complainant owns a large-sized portfolio of trademarks including the wordings "EURO" and “WOMEN’S EURO” in many countries, among which an EU registration for the latter dating back to 2018. It also owns dozens of domain names, notably <uefa.com> since May 9, 1997.

The disputed domain names <womenseuro.com> and <womenseuro2022.com> were registered on July 11, 2021 by the Respondent.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant contends that the disputed domain name is identical to its “UEFA WOMEN’S EUROPE” trademark, as it - in essence - wholly incorporates this trademark. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is neither known by the disputed domain name nor has it used in connection with a bona fide offering of goods or services, the Complainant is neither affiliated with nor has it ever authorised the Respondent to register its trademark as a domain name and the Complainant has no business with the Respondent.

According to the Complainant, given the distinctiveness and reputation of the “UEFA WOMEN’S EURO” trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain name was registered in bad faith.

With respect to use in bad faith, the Complainant points out that the Respondent has used the disputed domain name in order to deceive the Complainant’s customers and attract them for commercial gain at a sponsored pay-per-click website directing to various third party websites, a fact that -in combination with the incorporation of a well-known trademark in a domain name- proves use in bad faith. As further arguments, Complainant has highlighted the Respondent’s behaviour in putting the disputed domain names for sale, as well as the Respondent’s choice of time to register the disputed domain names.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.


RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are 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 disputed domain names consist of the Complainant's whole registered trademark (WOMEN’S EURO), without its own name “UEFA”. The addition of the number “2022” in the second domain name reinforces a connection with the Complainant, in view of the upcoming UEFA Women’s Euro Championships 2022, scheduled to be held in England in July this year.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Respondent has not demonstrated any use of the disputed domain names in connection with a bona fide offering of goods and services.

Further, the Respondent has not demonstrated any legitimate non-commercial or fair use of the disputed domain names.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain names.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

As far as registration in bad faith is concerned, given the reputation of the Complainant's trademark and the fact that the disputed domain names fully incorporate – in essence – this trademark, it is evident that, at the time of the registration of the disputed domain names, the Respondent was well aware of the Complainant's trademark. The registration as domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith. What is more, the Respondent opportunistically registered both disputed domain names, when the Complainant’s EURO 2020 competition ended and when the Women’s Euro 2022 was just one year away.

With respect to use in bad faith, the disputed domain names resolve to pay-per-click websites, with links that direct consumers to various websites. This fact is to be combined with the full incorporation of the Complainant’s known trademark in the disputed domain names. For this Panel, same as for many previous panels, such misleading behaviour clearly amounts to use in bad faith. Therefore, it is impossible to conceive any plausible active use of the disputed domain names that would be legitimate.

Further, the Respondent put the disputed domain names for sale, as he seems to have done also in some other cases in the past (per Complainant’s unchallenged allegations). All this shows a pattern of bad faith behaviour on behalf of the Respondent.

Therefore, the Panel finds it clear that the disputed domain names were used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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.

The disputed domain names wholly incorporate – in essence – the Complainant's trademark. The disputed domain names are therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademark in the disputed domain names, and the Complainant never licensed its trademark to the Respondent. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the disputed domain names with full knowledge of the Complainant's reputable trademark. His use of the disputed domain names is in bad faith as there is no conceivable use of the disputed domain names that could amount to a legitimate use.