Federación Mexicana de Futbol Asociación, A.C. v Clegg Brenda

WIPO Case No. D2024-5173

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Federación Mexicana de Futbol Asociación, A.C. v. Clegg Brenda

Case No. D2024-5173

1. The Parties

The Complainant is Federación Mexicana de Futbol Asociación, A.C., Mexico, represented by Silverio

Sandate Morales, Mexico.

The Respondent is Clegg Brenda, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <ligamxshop.com> is registered with TLD Registrar Solutions Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2024. On December 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2024, 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 December 24, 2024.

On December 20, 2024, the Center informed the parties in English and Spanish, that the language of the registration agreement for the disputed domain name is English. On December 24, 2024, the Complainant submitted the Complaint translated into English. The Respondent did not submit any comment on the Complainant’s submission.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 3, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2025. The Respondent sent an email communication to the
Center on December 24, 2024.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 4, 2025. 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 is Federación Mexicana de Fútbol Asociación, it is the official governing body of football in
Mexico.

The Complainant administers the men's and women's national teams with all its youth teams, the national teams of futsal and beach soccer, the Liga MX with all its professional divisions, all affiliated amateur sectors, and controls promoting, organizing, and supervising competitive football in Mexico. The Complainant was established on August 23, 1927.

The Complainant is the owner of several trademark registrations for the term LIGA MX (and design),
Registration numbers 1332193 , 1332194 , 1332195 , 1332196, 1332197, 1332198, and 1332199, filed in
the Mexican trademark office for classes 16, 25, 28, 32, 35, 38, and 41. The trademarks were filed on June

12, 2012, and duly renewed in the year 2022, until July 20, 2032.

The Complainant owns a website located at

The disputed domain name was registered on July 24, 2018, and it currently resolves to an online shop in soccer teams members of the Liga MX.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name.

Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

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However, an email was sent to the Center on December 24, 2024 stating the following:

“Hi, Our domain name just seems to overlap with liga mx, but we have not infringed its rights. In fact, we are
a website that specializes in providing soccer jerseys to people in Spanish-speaking countries. Our
customers come from all over the world. Our website has its own unique logo and slogan. If LigaMX likes our
domain name, they can buy it from us or negotiate with us instead of taking legal action to seize the website
we have operated for many years.
Thanks

[xxx]@xuemail.com”

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the disputed domain name carries a risk of implied affiliation with the Complainant. The composition of the disputed domain name, comprising the Complainant’s trademark in its entirety with the addition of the term “shop” and the content of the disputed domain name related to the sale of soccer shirts of teams closely associated with the Complainant’s organization of sporting activities creates a risk of Internet user confusion.

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The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that:

- the Complainant registered the trademark LIGA MX (and design) and has been using it since 2012;
- the Respondent registered the disputed domain name in 2018;
- the disputed domain name currently resolves to an online shop in Spanish language offering soccer jerseys
from local and international soccer teams, including Mexican soccer teams members of the Liga MX.

While the Respondent claims that their customers come from all over the world, and that the website has its own unique logo and slogan, the Panel finds these would not alter the fact that the disputed domain name is identical to the Complainant’s trademark, and that part of the content on the website refers to the

Complainant.

In light of these facts, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Paragraph 4(b)(iv) of the Policy, and WIPO Overview 3.0, section 3.1.4.

The Panel finds that the Complainant has established the third element of the Policy.

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 name <ligamxshop.com> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: February 21, 2025