Newcastle United Football Company Limited v Lee Bishop

WIPO Case No. D2025-3190

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Newcastle United Football Company Limited v. Lee Bishop

Case No. D2025-3190

1. The Parties

The Complainant is Newcastle United Football Company Limited, United Kingdom (“UK”), represented by

Gateley Legal, UK.

The Respondent is Lee Bishop, UK.

2. The Domain Name and Registrar

The disputed domain name <newcastleunitedmerchandise.com> (the “Domain Name”) is registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2025. On August 11, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2025, 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 August 13, 2025.

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 Respondent of the
Complaint, and the proceedings commenced on August 15, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 4, 2025. The Respondent sent email communications to the
Center on August 12, 2025, August 13, 2025, August 15, 2025 and September 3, 2025.

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The Center appointed Ian Lowe as the sole panelist in this matter on September 9, 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 Newcastle United Football Company Limited, a football club established in 1892 and
competing in the Premier League in England. The Complainant operates under the trading name “Newcastle
United” and is based at St James' Park in Newcastle upon Tyne, UK.

The Complainant is the proprietor of numerous registered trademarks for NEWCASTLE UNITED, including UK trademark number 3886183 registered on June 9, 2023, covering a broad range of classes typical of a professional football club; European Union trademark number 8285637 registered on December 1, 2009; and United States of America trademark number 97368714 registered on September 12, 2023.

The Complainant operates its official website at <newcastleunited.com> and sells a broad range of merchandise bearing the NEWCASTLE UNITED mark.

The Domain Name was registered on April 14, 2025. It does not currently resolve to an active website.

The Respondent is Lee Bishop, with a contact address in the United Kingdom, where the Complainant is located.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its NEWCASTLE UNITED trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent sent a number of informal email communications to the Center but did not submit a formal merchandise. It offered to transfer the Domain Name to the Complainant.

Response to the Complaint. The Respondent raised questions about the procedure, and stated that the

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the Domain Name is 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

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

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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 for the purposes of the Policy through its registered trademarks for NEWCASTLE UNITED in multiple jurisdictions. WIPO Overview 3.0, section 1.2.1.

Ignoring the generic Top-Level Domain “.com”, the Domain Name incorporates the entirety of the between the Domain Name and the trademark. WIPO Overview 3.0, section 1.8.

Complainant's NEWCASTLE UNITED trademark with the addition of the descriptive term “merchandise.“ The
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the

Complainant has rights, and 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. Accordingly, 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.

The Complainant has made out a strong prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent is not authorized by the Complainant to use its trademark, is not commonly known by “Newcastle United” or any variation thereof, and there is no evidence of any trademark rights in related terms.

The Domain Name does not currently resolve to an active website, and there is no evidence of the offering of goods or services.

The nature of the Domain Name, incorporating a famous football club's trademark with “merchandise,“ suggests an intention to create an impression of official association with the Complainant's commercial activities rather than any legitimate independent use.

The Respondent chose not to submit a formal Response despite multiple informal communications with the Center, providing no evidence of rights or legitimate interests in the Domain Name. The Respondent argued in its emails that the Domain Name was registered to create a small fan base. However, it failed to explain the choice of incorporating the word “merchandise” in the Domain Name.

In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

The Panel finds the second element of the Policy has 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.

The Complainant is a well-known Premier League football club with a history dating back to 1892. The
Complainant's trademark is widely recognized, particularly in the UK where both the Complainant and
Respondent are located. Given this context, it is inconceivable that the Respondent was unaware of the

Complainant and its rights in the NEWCASTLE UNITED mark when registering the Domain Name.

The composition of the Domain Name strongly suggests targeting of the Complainant. The combination of
“newcastleunited” with “merchandise” creates a domain name that directly corresponds to the Complainant's
commercial activities, as professional football clubs commonly sell branded merchandise. This suggests the
Respondent had the Complainant's business model specifically in mind.

Internet users seeking official Newcastle United merchandise could easily be deceived by the Domain Name into believing they are accessing an authorized retailer. The nature of the Domain Name suggests that it is unlikely that the Respondent intended to use the Domain Name for a fan base, as claimed by the Respondent.

Even though the Domain Name is currently inactive, panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Given the distinctive nature of the Complainant's trademark, the obvious targeting through the addition of “merchandise,” and the lack of any conceivable good faith use by the Respondent, the Panel finds that passive holding of the Domain Name constitutes bad faith in these circumstances.

The Panel cannot conceive of any legitimate purpose for which the Respondent might use the Domain activities.

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith, and the third element of the Policy has been established.

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 Domain Name <newcastleunitedmerchandise.com> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: September 23, 2025