Decision for dispute CAC-UDRP-104875

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

The Complainant is inter alia the owner of:

• United Kingdom trademark UEFA reg. no UK00907464084 registered on July 22, 2009; and
• United Kingdom trademark UEFA reg. no UK00908774812 registered on June 28, 2010.

The Complainant is the administrative body for association football in Europe. The Complainant is the umbrella organisation for the 55 national football associations across Europe.

The Complainant was founded on June 15, 1954 in Basel in Switzerland after consultation between the Italian, French, and Belgian associations.

The Complainant represents the national football associations of Europe, runs national and club competitions including but not limited to the UEFA European Football Championship, UEFA Nations League, UEFA Champions League, UEFA Europa League, UEFA Europa Conference League and UEFA Super Cup, and controls the prize money, regulations, and media rights to those competitions.

The Complainant has a significant reputation and has built up a vast amount of goodwill in the UEFA trademarks in the UK and abroad in relation to European football activities.

The Complainant has an active online presence including owning the domain name uefa.com which is used as its main operating website for providing news, information, updates, and features relating to UEFA competitions and related services, including but not limited to the UEFA Store for purchasing merchandise, and UEFA Gaming for participating in fantasy football competitions with other users.

The Complainant is also active on social media and has generated a significant level of endorsement. The Complainant has proven to be the owner of the UEFA trademark.

The disputed domain names were registered on January 1, 2022 and February 13, 2022, respectively.

The Complainant’s trademark registrations predate the registration of the disputed domain names.

The disputed domain name <2016uefa.com> currently resolves to an inactive website, while, before the complaint was filed, it was apparently used to display an unauthorised app named “UEFA football”. The domain name <uefa2017.com> resolves to a website where the “UEFA Football hedge fund” and investments in this fund are promoted, and users are invited to download an app named “EUR Football”.

 COMPLAINANT:

The Complainant contends that the disputed domain names are confusingly similar to its UEFA trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

Regarding the Respondents’ identity, the Complainant has requested a consolidation of multiple disputed domain names and the Respondents.

The Complainant claims that:

Whilst the Registrar’s verification process reveals two separate Respondents, the Complainant submits that the disputed domain names are under the control of a common operator, based on commonalities between them, which in the context of their overall use demonstrate that they are interconnected as part of an organized infringement network.

In support of the above, the Complainant submits that:

1. both disputed domain names were registered within a short period of time, namely between January 1, 2022 and February 13, 2022;
2. both disputed domain names displayed a connection to a Colorado-based registered corporation;
3. both disputed domain names were used to display an unauthorised affiliation to “The UAE consortium and City Football”, when in fact no such affiliation exists;
4. both disputed domain names resolved to a website with the primary purpose of advertising the same Google Play Store and Apple App Store mobile applications for download;
5. both disputed domain names used the same shield logo which illegally incorporates the Complainant’s UEFA trademark;
6. the anatomy of the disputed domain names is very similar; and
7. identical and/or highly similar content is displayed at the resolving websites.

On this basis, the Complainant submits that it is beyond mere coincidence that the disputed domain names have so many factors in common, and therefore they most likely are under the common control of a single domain registrant and, therefore, it is fair and equitable that the disputed domain names should be assessed and decided as part of a single consolidated complaint.

 RESPONDENT:

 NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown 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 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).

The Complainant has, to the satisfaction of the Panel, shown 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).

The complaint was originally filed against five domain names, registered by different registrants.

Following the Registrar’s verification of the registrants’ identity and before the formal commencement of the proceeding, two domain names were transferred to the Complainant.

After the formal commencement of the proceeding, and pending the subsequent suspension of the proceeding requested by the Complainant, a third domain name, namely <uefafootballfund.com>, was also transferred to the Complainant.

Consequently, the Complainant asked for the proceeding to be continued against the remaining two domain names, i.e. <uefa2017.com> and <2016uefa.com>.

Although there were other issues concerning the three transferred domain names, such as the registrants’ identity and the language of one of the registrants’ agreements, this Panel believes that, owing to the fact that these domain names have already been transferred to the Complainant, there is no need to discuss the issues related to these and that the proceeding can continue exclusively for the two remaining domain names, i.e. <uefa2017.com> and <2016uefa.com>.  

Consolidation of Multiple Respondents

 According to the registration information verified by the Registrar, the disputed domain names were registered with different registrant details. The Complainant asserts however that the disputed domain names were registered by the same domain name holder, or are at least under common control.

In accordance with the Rules, paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Although the names of the registrants of the disputed domain names are different, the Panel on the evidence available (including, for example, that both disputed domain names were used to display an unauthorised affiliation to “The UAE consortium and City Football”, when in fact no such affiliation exists; both disputed domain names resolved to a website with the primary purpose of advertising the same Google Play Store and Apple App Store mobile applications for download; and both disputed domain names were using the same shield logo which illegally incorporates the Complainant’s UEFA trademark) finds that the disputed domain names identified in the Complaint, on the balance of probability, are registered by the same domain name holder or are at least under common control. The Panel, therefore concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore accepts the Complainant’s request to address the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the “Respondent” hereinafter.

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.

Substantive Issues

In order for the Complainant to obtain a transfer of the disputed domain names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel 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 Respondent has 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.

A. Identical or Confusingly Similar

The Complainant has established rights in the UEFA trademark.

Here the disputed domain names incorporate the Complainant’s trademark in its entirety, respectively adding the numbers “2016” and “2017”.

This Panel agrees with the Complainant’s view that the renowned UEFA trademark is clearly recognizable and that the addition of the other terms do not avoid a finding of confusing similarity.

 Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent does not appear to be commonly known by the name “UEFA” or by any similar name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. In fact it appears that the Respondent (at least at the time the complaint was filed) was using the disputed domain names for a website with the primary purpose of advertising the same Google Play Store and Apple App Store mobile applications for download, and that both disputed domain names were using the same shield logo which incorporates the Complainant’s UEFA trademark. This is neither a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain names.

 The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

 The Panel, on the basis of the evidence presented, finds that the disputed domain names were registered and have been used in bad faith.

 Firstly, owing to the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent registered the disputed domain names with full knowledge of the Complainant's trademark, and so the Panel finds on the balance of probabilities that the Respondent was aware of the Complainant’s trademark when registering the disputed domain names.

 Secondly, the Panel accepts the Complainant’s unchallenged assertion that the Respondent registered the disputed domain names with the aim of creating a likelihood of confusion with the Complainant’s trademark.

In fact it appears that the disputed domain names have both been used to misled internet users into believing that the “UEFA Football hedge fund” and the investments services offered through the apps “EUR Football” and/or “UEFA Football” were authorised by and/or linked to the Complainant. This is a clear indication of the Respondent’s use of the disputed domain names in bad faith.

The Panel thus believe that by using the disputed domain names, the Respondent has intentionally attempted to attract, presumably for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its web site (par. 4(b)(iv) of the Policy).

Accordingly, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.