Tottenham Hotspur Limited v yanlu lu

WIPO Case No. D2022-4693

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tottenham Hotspur Limited v. yanlu lu

Case No. D2022-4693

1. The Parties

Complainant is Tottenham Hotspur Limited, United Kingdom, represented by Walker Morris LLP, United

Kingdom.

Respondent is yanlu lu, China.

2. The Domain Name and Registrar

The disputed domain name <tottenhmhotspur.com> (the “Domain Name”) is registered with Dynadot3 LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2022. On December 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 8, 2022, 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 Complainant on December 9, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 2022.

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 Respondent of the Complaint, and the proceedings commenced on December 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2023.

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The Center appointed Marina Perraki as the sole panelist in this matter on January 9, 2023. 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

Complainant is an English professional football club founded in 1882 based in Tottenham, London, which
competes in the Premier League. The team is traditionally referred to as “Tottenham Hotspur” or “Spurs” for
short. Complainant enjoys a worldwide reputation as one of the most successful football clubs in the world, it
was the tenth highest-earning football club in the world, with an annual revenue of GBP 406.2 million in
2021. Complainant has over 57.4 million followers on their social media accounts and regularly over 60,000
people to each of their home games.

Complainant is the owner of trademark registrations for TOTTENHAM HOTSPUR, including the United services in International Classes 26, 27, 30, 35, 38, 39, 41, and 43.

The Domain Name was registered on June 8, 2022 and leads to a website (the “Website”) distributing pornographic content and selling gambling products. Currently it leads to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       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

Complainant has demonstrated rights through registration and use on the TOTTENHAM HOTSPUR trademark.

The Panel finds that the Domain Name is confusingly similar to the TOTTENHAM HOTSPUR trademark.

The Domain Name incorporates Complainant’s TOTTENHAM HOTSPUR mark in its entirety, apart from the letter “a”, as a clear misspelling of the word “tottenham”, which does not avoid a finding of confusing

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similarity as the TOTTENHAM HOTSPUR mark remains recognizable within the Domain Name (Express
Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No.
D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO
Case No. D2013-0904, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), sections 1.7 and 1.9).

The generic Top-Level Domain (“gTLD”) “.com” may be disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the TOTTENHAM HOTSPUR mark.

Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii)      Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not replied to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name.

There is no evidence that Respondent has been commonly known by the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant has demonstrated, the Domain Name leads to the Website that features pornographic content and sells gambling products.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:

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(i)        circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. before the time of the Domain Name registration by Respondent. Therefore, noting also the composition of the Domain Name, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (

Moreover, considering the distinctiveness and worldwide reputation of Complainant’s marks, Respondent knew or should have known about Complainant’s rights, noting also that such knowledge is readily obtainable through a simple browser search (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).

Moreover, panels have consistently found that the mere registration of a domain name that is confusingly similar, (particularly domain names comprising typos) to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

As regards bad faith use, Complainant demonstrated that the Domain Name leads to a website displaying
pornographic content and selling gambling products. Accordingly, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion

with Complainant’s mark.

The Domain Name use furthermore tarnishes Complainant’s well-known trademark by suggesting a
connection between Complainant and adult services. This is an indication of bad faith use (WIPO Overview
3.0, section 3.12; Christian Dior Couture v. Identity Protection Service / Tom Birkett, WIPO Case No.

D2014-1053).

The Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent
a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003; WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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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 <tottenhmhotspur.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: January 23, 2023