Liga Nacional de Fútbol Profesional v Venus Ms

WIPO Case No. D2025-0573

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Liga Nacional de Fútbol Profesional v. Venus Ms

Case No. D2025-0573

1. The Parties

The Complainant is Liga Nacional de Fútbol Profesional, Spain, represented by J&A Garrigues, S.L.P.,

Spain.

The Respondent is Venus Ms, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <laliga.biz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2025. On February 13, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On February 13, 2025, 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 (Registration Private) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on February 19, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 21, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on March 14, 2025.

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The Center appointed Luca Barbero as the sole panelist in this matter on March 20, 2025. The Panel f inds 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 a Spanish sports association of private nature, founded in 1984, comprising 42 clubs and sports limited companies that participate in the two professional categories of the Spanish national football league (f irst and second divisions).

Recognized as one of the best leagues in the world by the International Federation of Football History and Statistics (IFFHS), its presence extends to 41 countries through 13 of f ices and 44 delegates with over 200 million followers on social media globally, across 16 platforms in 20 dif ferent languages.

The Complainant is the professional league with the most titles in international competitions, featuring six clubs with international honors: Real Madrid, Atlético de Madrid, Barcelona, Sevilla, Valencia, and Zaragoza.

The Complainant is the owner of numerous trademark registrations, including the following, for LALIGA, as per trademark registration certif icates submitted as annexes to the Complaint:

- European Union trademark registration No. 014626097 for LALIGA (figurative mark), registered on May 11,

2016, in classes 6, 9, 16, 25, 28,35, 38, 41, 43 and 45;

- European Union trademark registration No. 018850978 for LALIGA (figurative mark), registered on October

18, 2023, in classes 6, 9, 16, 25, 28, 35, 38, 41, 42, 43 and 45;

- International trademark registration No. 1750897 for LALIGA (f igurative mark), registered on March 24,

2023, in classes 6, 9, 16, 25, 28, 35, 38, 41, 43 and 45;

- International trademark registration No. 1294736 for LALIGA (figurative mark), registered on October 12,
2015, in classes 6, 9, 16, 25, 28, 35, 38, 41, 43 and 45.

The Complainant is also the owner of the domain name <laliga.com>, which was registered on August 12, 1998, and resolves to a website dedicated to the activities of the Complainant and the clubs belonging to the Complainant.

The disputed domain name <laliga.biz> was registered on September 08, 2023, and is redirected to a website in Vietnamese featuring a logo incorporating one of the Complainant’s LALIGA f igurative mark and publishing news about LALIGA football league along with adult content. The website is presented as the “Vietnamese version” of the Complainant’s website. A description at the bottom of the website can be translated into English as follows: “La Liga (Spanish national championship) Vietnamese version has the address: Laliga.biz. La Liga is one of the tournaments that is of great interest to football fans in Vietnam. Follow Laliga.biz for the latest Spanish football news”.

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.

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Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to the trademark LALIGA in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (“gTLD”) “.biz”.

The Complainant states that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name since: i) the Respondent is in no way connected to, or af f iliated with, the Complainant nor has it ever been licensed or otherwise permitted by the Complainant to use its registered trademarks or apply for any domain name incorporating said trademarks; ii) the Respondent has not registered LALIGA o “laliga.biz” as a trademark, does not have any other rights in the disputed domain name and is not commonly known by the disputed domain name; and iii) the disputed domain name is not used in connection with a bona f ide of fering of goods and services as the Respondent impersonates the Complainant appearing to be the “Vietnamese version” of the Complainant’s website, suggesting a sponsorship or endorsement by the Complainant, which does not exist.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith because: i) the disputed domain name incorporates the Complainant’s trademark in its entirety; ii) the website to which the disputed domain name resolves displays a nearly identical LALIGA logo to that of the Complainant; iii) the Respondent is simulating an af f iliation with the Complainant and is deliberately

attempting to attract and divert traf f ic to its website, exploiting the renown, fame, and reputation of the Complainant and the LALIGA trademarks, also using them as a lure to promote sexual (and potentially illicit) content, tarnishing the Complainant’s trademarks; iv) the Complainant sent a cease-and-desist letter to the Respondent, on September 19, 2024, requesting to cease any use and cancel or transfer the disputed domain name to the Complainant, to which the Respondent never replied, continuing to use the disputed domain name illicitly; and v) the Respondent deliberately attempted to remain anonymous by using a WhoIs privacy service, with the clear intention of avoiding identif ication or being contacted by the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst 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. Indeed, the Complainant has provided evidence of the registration of LALIGA f igurative marks in numerous jurisdictions.

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Since design elements are incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the f irst element. Therefore, trademark registrations with design elements satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity. WIPO Overview 3.0, section 1.10.

The core of the Complainant’s f igurative marks, consisting of the denominative element “laliga”, 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.

In addition, the gTLD “.biz” can be disregarded under the f irst element confusing similarity test, being a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel f inds the f irst 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 of ten 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 satisf ied 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.

According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no element f rom which the Panel could infer that the Respondent has rights over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel notes that the disputed domain name resolves to a website publishing a logo encompassing one of the Complainant’s LALIGA f igurative marks, content related to the Complainant’s Spanish sports association and football league and adult content material. The website not only does not include a disclaimer of non-af f iliation with Complainant but is also presented as the “Vietnamese version” of the Complainant’s website. In view of such use of the disputed domain name, the Panel f inds that the Respondent has not used the disputed domain name in connection with a bona f ide of fering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Furthermore, Panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing of f in this case, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Therefore, the Panel f inds the second element of the Policy has also been established.

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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 finds that, in light of i) the prior registration and use of the trademark LALIGA by the Complainant, including on the Complainant’s website “ promoting the Complainant’s football league online; ii) the virtual identity of the disputed domain name with the Complainant’s LALIGA marks and the Complainant’s domain name <laliga.com>; and iii) the content of the website to which the disputed domain name resolves, featuring the Complainant’s f igurative mark and content related to the Complainant and its football clubs and claiming to be the “Vietnamese version” of the Complainant’s website, the Respondent was clearly aware of, and intended to target, the Complainant and its trademark at the time of registration of the disputed domain name.

In view of the contents of the Respondent’s website described above and considering the Respondent’s publication of news about the Complainant in association with adult content, the Panel f inds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, af f iliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy.

The Panel also finds that the use of the disputed domain name to lead to a website containing adult content is likely to tarnish the LALIGA marks and the Complainant’s reputation and, therefore, further demonstrates the Respondent’s bad faith.

Therefore, the Panel f inds that the Complainant has also 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 <laliga.biz> be transferred to the Complainant.

/Luca Barbero/ Luca Barbero Sole Panelist Date: April 3, 2025