Newcastle United Football Company Limited v li jiang

WIPO Case No. D2025-3191

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Newcastle United Football Company Limited v. li jiang

Case No. D2025-3191

1. The Parties

The Complainant is Newcastle United Football Company Limited, United Kingdom, represented by Gateley

Legal, United Kingdom.

The Respondent is li jiang, China.

2. The Domain Name and Registrar

The disputed domain name <booknewcastleunited.com> is registered with Cosmotown, 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 disputed domain name. On August 14, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on August 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 filed an amended Complaint on August 14, 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 18, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 7, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 10, 2025.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on September 15, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 company organized under the laws of the United Kingdom. Established in 1892, the
Complainant is a football club in the Premier League in England. The Complainant’s trading name is

“Newcastle United”.

The Complainant owns several word trademarks consisting of the terms “NEWCASTLE UNITED”, including:

- United Kingdom Trademark registered under n° UK00003886183 in numerous classes on June 9,

2023, with a priority date as of March 7, 2023.
- European Union Trade Mark registered under n° 008285637 in classes 6, 16, 18 and 24 on December 1, 2009, with a priority data as of April 23, 2009.

- United States Trademark registered under n° 97368714 in classes 6, 9, 14, 16, 18, 25 and 28 on

September 12, 2023, with a priority date as of April 18, 2022.

The Complainant notably owns the domain name <book.newcastleunited.com>, which is used as its online
location for Newcastle United fans to buy tickets for football matches and other events hosted by the
Complainant at its football ground at St. James’ Park.

On August 5, 2024, the Respondent registered the disputed domain name. The disputed domain name is passively held and does not lead to any active website.

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.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its
“NEWCASTLE UNITED” trademark as it entirely incorporates such trademark with the addition of the non-
distinctive term “book”.

The Complainant then is of the view that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not commonly known under the disputed domain name, has not made any use of the disputed domain name nor any bona fide offering of goods or services.

The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. <book.newcastleunited.com>, the Respondent was obviously aware of the Complainant’s trademark. The Complainant contends that such registration took place to either disrupt the Complainant’s business, to impersonate the Complainant in an attempt to commit fraud or to attract for commercial gain Internet users to a website operated by the Respondent by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

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6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] 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.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i)        the disputed domain name registered by the Respondent is identical or confusingly similar to a

trademark or a service mark in which the Complainant has rights;

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

(iii)      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 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 confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here “book” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

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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 Respondent was obviously aware of the Complainant’s trademark when it registered the disputed domain name as the Complainant’s trademark is a well known football club in the Premier League, and the composition of the disputed domain name mirrors Complainant’s official subdomain <book.newcastleunited.com>. As such, the disputed domain name was registered in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed

domain name, the lack of any potential good faith use particularly noting the misleading nature of the
disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed
domain name, which has been registered for more than a year without leading to any active website or bona

fide offering of goods or services, does not prevent a finding of bad faith under the Policy.

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 <booknewcastleunited.com> be transferred to the Complainant.

/Philippe Gilliéron/
Philippe Gilliéron
Sole Panelist
Date: October 6, 2025