WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JUVENTUS F.C. S.p.A. v. Claudio Sacco Interactive
Case No. D2001-0260
1. The Parties
Complainant is Juventus F.C. S.p.A, having registered offices in Corso Galileo Ferraris 32, Torino, Italy. The Complainantís authorized representative in this administrative proceeding are Dott. Enrico Antonielli díOulx and Dott. Luca Peyron, Corso Fiume 6, 10133, Torino, Italy.
Respondent is Claudio Sacco Interactive (hereinafter referred to as "Sacco"), Corso Garibaldi 13, Baveno (VB), Italy. The Respondentís authorized representatives in this administrative proceeding are Mr. Riccardo Roversi and Ms Yee Mun Loh, Corso di Porta Vittoria 28, 20122 Milano.
2. The Domain Name and Registrar
The domain name at issue is <juventus.net>; hereinafter referred to also as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on February 19, 2001 and in hardcopy and exhibits on February 21, 2001. On February 23, 2001, the Center transmitted via email to Network Solutions, Inc., a request for registrar verification in connection with this case. On February 27, 2001, Network Solutions, Inc. transmitted via email to the Center, Network Solutions, Inc.'s Verification Response, confirming that the registrant is Claudio Sacco Interactive and that the Domain Name registration is in "active" status.
The Center, having verified the Complaint for administrative compliance, has requested on February 28, 2001 to correct a deficiency, which was amended by the Complainant within the same day. The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
The Center transmitted on March 1, 2001, to Claudio Sacco Interactive the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachment), and by fax and email without enclosures.
On March 21, 2001, the Center received the Response from the Respondent and acknowledged receipt.
On March 29, 2001, in view of the Complainantís designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on the same date to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on the trademark registration n. 671347 of December 19, 1995 in Italy; a number of other registration for JUVENTUS and device have been declared available upon request.
The respondent registered the domain name <juventus.net> on December 5, 1996.
5. Partiesí Contentions
Juventus F.C. Spa is a well known football team established on 1897 in Torino, Italy, and is one of the greatest professional football teams in the world. The team won several major tournaments in Europe and in the world and is the team that won the most (25 times) in the Italian Premier League. On account of such great achievement, the team is no doubt absolutely well known among the football fans all over the world, especially in Italy where football is the most popular sport events. The team is known as JUVENTUS.
The domain name <juventus.net> is identical to the Complainantís trademark JUVENTUS as well as the Complainantís company name JUVENTUS. SACCO is not a licensee of Juventus, nor is authorized to use the Juventus marks, and (on information and belief) is not the owner of any registered trademark or common law right containing either the terms JUVENTUS, or any permutations thereof and he is not commonly known by his Domain Name. Further, on information and belief, the Domain Name is not, nor could it be contended to be, the nickname of SACCO or other member of his family, nor in any other way identifies a legitimate interest of Respondent. Conversely, JUVENTUS is clearly and strongly associated with Juventus and thus Juventus contends that, also provided that the word JUVENTUS is invented, it is not a designation traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant deems that SACCO has no rights on JUVENTUS and no apparent reason to handle the domain name <juventus.net>. Moreover, the Complainant may affirm, on information and belief, that SACCO has not developed or posted a Website using <juventus.net> or made any other good faith use of the domain name.
The Complainant contends that evidence of bad faith registration and use is established by the following circumstances: first, the trademark JUVENTUS is no doubt a well known trademark in Italy, and it is inconceivable that the person or persons behind the Respondent was not aware of this fact. Second, by virtue of the wide spread use and reputation of the trademark JUVENTUS, members of the public in Italy and abroad would believe that the entity owning the domain name <juventus.net> was the Complainant or in some way associated with the Complainant. Third, any realistic use of the above domain name by unauthorized third parties results in a misrepresentation and a false and illegal association with the Complainant and its goodwill, resulting in passing off, breach of Italian and European consumer protection legislation, and trademark infringement.
The Complainant states that, on information and belief, is forced to believe and conclude that the above Domain Name was registered and maintained with the only goal to recover a substantial financial consideration from the Complainant. Complainant has to point out that the above Domain Names is of no lawful interest to anybody other than the itself.
The domain name in question was not registered by Respondent for the purpose of selling, renting or otherwise transferring the same to Complainant for any consideration. Respondent never offered the domain name <juventus.net> for sale to Complainant or to any other third party; Respondent registered and is using the domain name in question for a web site, which should become the place where all Juventus F.C. fan clubs may exchange information and experiences regarding their preferred football club.
The domain name <juventus.net> was not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name. According to the Respondent, Complainant clearly does not have a strong interest to internet domain names regarding its trade mark, as it is demonstrated by the circumstance that the domain name <juventus.com> has been registered only on September 24, 1998 (i.e. two years following registration of the domain name <juventus.net>), while the domain name <juventus.org> is not held by Complainant since it has been registered by Namezero.com of Los Gatos, California. Moreover, Juventus F.C. has not registered the domain name "juventus" under the most important ccTLDs, like .fr (France), .co.jp (Japan), .se (Sweden) etc..
Parties are certainly not competing in the same economic field, nor they are operating in similar sectors. Respondent is an individual who registered the domain name <juventus.net> to the exclusive purposes of supporting the activity of Juventus fan clubs, since he is himself a Juventus F.C. fan.
Since the web site established by Respondent under the domain name in question has not any commercial purposes, it is also proved that <juventus.net> was not registered in an intentional attempt to attract for commercial gain internet users to the Respondentís web site. It has to be underlined that such web site contains a disclaimer which makes clear that the web site is not directly linked to Juventus F.C. S.p.A. The wording of this disclaimer is as follows: "Information on this site is for information purposes only. Nothing on this site is to be construed as an endorsement by any celebrity/team/company or personality, unless explicitly identified, for this site or for any information here. This site is in no way affiliated with Juventus FC S.p.A. Turin. THIS IS ONLY A FAN APPRECIATION SITE". Respondent is not selling products or services through the web site in question.
Respondent did make use of the domain name <juventus.net> well before this proceeding was started. This is demonstrated by the fact that the web site established under the domain name in question has been activated immediately after the registration of <juventus.net> and remained active since then.
Respondent is making a legitimate non-commercial use of <juventus.net>, having established under such domain name a web site, which could be considered as a non-profit initiative in favor of Juventus F.C. S.p.A..
The Respondent raised in the Response a number of procedural issue based on the Italian Constitution and general principles of Italian laws deemed applicable in the instant case, claiming that Respondent could not file a proper defense .
Furthermore, Respondent have indicated the Case Manager appointed by the Center made an illegitimate use of his power to verify the administrative compliance of the Original Complaint and, as a consequence, authorized Complainant to file the Amended Complaint.
In the Original Complaint, Complainant requested for the transfer of the domain name <juvestore.com.> According to the Respondent, Case Manager unilaterally held that his duty to verify the administrative compliance of the Complaint is so wide to include also the power to notify Complainant of a substantial mistake (as is certainly any mistake regarding the identification of the domain name in dispute) and to authorize the same Complainant to file a new Complaint in the course of the same proceeding. Respondent is of the opinion that Case Manager violated the ICANN Policy and Rules, since he took a decision which lies within the competence of the Administrative Panel.
6. Discussion and Findings
With reference to the Respondentís procedural issue questioning the applicability of the present procedure in light of Italian law, the Panel notes that the Uniform Domain Name Dispute Resolution Policy is incorporated by reference in any registration agreement since October 24, 1999. Therefore, the Panel finds the Uniform Dispute Domain Name Resolution Policy and its Mandatory Administrative Procedure applicable in the instant case.
The second procedural issue raised by the Respondent concerned the supposed illegitimate use of powers by the Center. Provided that a clear indication of <juventus.net> domain name as the object of the Complaint was apparent in all other paragraphs, having verified the existence of the above discrepancy within the text, which according to the Panel should not be considered a "substantial mistake", the Center has rightly requested the correction of the typo, securing the filing of the single amended page. The Panels finds that the activity performed by the Center was in compliance with the obligation provided for in paragraph 4 of the Rules.
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the 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 Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of Italian trademark registration No. 671347 for the word mark JUVENTUS and has declared the availability to provide copy of other trademark registration evidence, if required by the Panel.
In view of the above, the Panel finds that the Complainant have proved that the Domain Name is identical (obviously but for the suffix .net), to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has not provided the Panel with convincing evidence of the applicability of any of the criteria provided for in the Policy paragraph 4 c.
The web page presently published is not sufficient to establish a legitimate interest, as according to the Complainant "on information and belief, SACCO has not developed or posted a Website using JUVENTUS.NET" while Respondent indicated that it "was activated immediately after the registration of juventus.net and remained active since then".
Furthermore, as stated in prior cases such as Nintendo of America Inc. v. Alex Jones, (WIPO Case No. D2000-0998) a Complainant "has the right to decide how its trademark will be used in the context of the product or products associated with the mark. A fan-club does not exist in a vacuum;" In the instant case, the web page is aimed at promoting the team Juventus but Panel finds that the Complainant has the right to exercise some control on how its trademark is used by third parties also in Internet. Panel finds that even a genuine desire to support the Complainant, does not originate a legitimate interest of the Respondent in a domain name identical to the Complainantís trademark.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainantí trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel finds that none of the circumstances evidencing bad faith listed in the Policy apply to the instant case, nor has the Complainant indicated the existence of other evidence of bad faith. See also Unione Calcio Sampdoria SpA v. Titan Hancocks WIPO D 2000-0532, Do The Hustle, LLC v. Monkey Media, LLC WIPO D2000-0625, THE ESTATE OF TUPAC SHAKUR v. R. J. BARRANCO eResolution 0348, Edward Van Halen v. Deborah Morgan WIPO D2000-1313, Nintendo of America Inc. v. Alex Jones WIPO D2000-0998.
Respondent did not offer to sell the domain name to Complainant for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name. Respondent, prima facie, has not engaged in a pattern of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,". It should also be noted that Complainant has successful registered i.a. <juventus.com>.
No evidence was provided that Respondent has used the domain name for commercial gain by attempting to create a likelihood of confusion with Complainantís trademark. The Italian content of the web page and the disclaimer in English at the bottom of it: "Information on this site is for information purposes only. Nothing on this site is to be construed as an endorsement by any celebrity/team/company or personality, unless explicitly identified, for this site or for any information here. This site is in no way affiliated with Juventus FC S.p.A. Turin. THIS IS ONLY A FAN APPRECIATION SITE" appears to confirm the above.
Should the Respondent make a different use in the future of the web page corresponding to the domain name <juventus.net> (e.g. attracting, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of the instant website), at that time Complainant might have a better case (see also Nintendo Inc. v. Alex Jones, Case No. WIPO D2000-0998 and Edward Van Halen v. Deborah Morgan WIPO No. D2000-1313).
The Panel decides (a) that the domain name <juventus.net> is identical to the trademark Juventus and (b) that Respondent has no rights or legitimate interest in the Domain Name. However, the Panel concludes that Complainant has failed to prove (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies that the domain name <juventus.net> be transferred from Respondent to Complainant.
Dated: April 18, 2001