WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juventus F.C. SpA v. Vincent Khouw
Case No. D2001-0844
1. The Parties
The Complainant is Juventus F. C. SpA, a company incorporated in Italy, with place of business in C.so Galileo Ferraris 32, 10128 Torino, Italy.
The Respondent is Vincent Khouw, Jalan Seberang No.32, Merauke, Irian Java 452, Indonesia.
2. The Domain Name and the Registrar
The domain name at issue is <juvemania.org> (the "Domain Name"). The registrar is Network Solutions, Inc. with an address at 505 Huntmar Park Drive, Herndon, Virginia 20170-5142, USA (the "Registrar").
3. Procedural History
On July 2, 2001, the Complainant filed by e-mail a complaint (the "Complaint") with the WIPO Arbitration and Mediation Center (the "Center"). The Center received a hard copy of the Complaint on July 4, 2001.
On July 4, 2001, the Center requested Network Solutions ("NSI") to verify the Domain Name in dispute. NSI stated on July 6, 2001, that it is the registrar of the Domain Name, that the current registrant is Vincent Khouw, that the administrative contact is the same as the Respondent, that the NSI Version 5 Service Agreement is in effect and that the Domain Name registration is in active status.
On July 9, 2001, the Center proceeded to verify whether the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "WIPO Rules"), including the payment of the requisite fees. The Center concluded that the Complaint satisfies all of these formal requirements.
On the same date, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding with a copy of the Complaint to the Respondent. The Center indicated this date as the formal date for the commencement of the administrative proceeding and July 28, 2001, as the last day for Respondent to file a Response.
On July 31, 2001, the Center notified the Respondent that he failed to meet the deadline and was, therefore, in default.
On August 8, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules as the panelist submitted a signed Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Panel shall issue its decision without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant, Juventus F. C., is a famous Italian soccer team. Its trademarks JUVENTUS (& device) and JUVE in block letters are protected by registrations in numerous countries of the world for various goods. Copies of several registration certificates are attached to the Complaint (Annex 3).
The Respondent registered the Domain Name on September 5, 2000. Because of Respondent's default, nothing is known about Respondent.
The Domain Name does not resolve to an active web site.
5. Parties' Contentions
- that the Domain Name <juvemania.org> is confusingly similar to "JUVE", Complainant's well-known nickname and registered trademark;
- that the Complainant is one of the most famous professional soccer teams in the world, established in 1897, in Torino, Italy (Annex 4);
- that its trademarks are so well established, that the Domain Name could be solely associated with Complainant's soccer team. Complainant argues that the word "JUVE" has been recognized as related to Juventus in another WIPO Arbitration (WIPO Case No. D2001-0583- "juvetv") and that the word "mania" is commonly associated with the fans community;
- that the Respondent is neither a licensee, nor a distributor or agent of Complainant, and has no authorization to use Complainant's marks;
- that the Domain Name has been registered in bad faith because Respondent has been aware of the fame of Complainant's trademark. According to the Complainant, the primary purpose of registration was to exploit its notoriety;
- that the Domain Name has been registered in bad faith because Respondent's address traceable in the Whois’ database, appears to be wrong. Complainant attempted to contact the Respondent by facsimile and DHL without any success (Annex 6);
- that the Respondent's passive holding of the Domain Name registration constitutes use in bad faith.
The Respondent did not file any Response to the Complaint.
6. Discussion and Findings
To have the disputed Domain Name transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark 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 Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant has shown that it owns several trademark registrations of the marks "JUVENTUS (& device) and "JUVE" in block letters. It appears to be customary that the generic word "mania" be added to names of famous soccer clubs to identify a club’s fans' web site (e. g. <milanmania.com>; <ajaxmania.com>, <arsenalmania.com> etc.). The addition of a generic term to a famous mark is not sufficient to avoid confusion (Chanel, Inc. v. Estco Group, D2000-0413 and Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022). In a previous decision, the domain <juvetv.com> has been found to be confusingly similar to Complainant's trademark JUVE (Juventus F.C. SpA. v. Mythos Srl, D2001-0583). The Panel therefore finds that the Domain Name at issue is confusingly similar to Complainant's trademark "JUVE".
Legitimate Rights or Interests
The Respondent does not appear to be commonly known by the Domain Name, nor to have otherwise obtained an authorization to use Complainant's trademarks. The Respondent neither replied to Complainant's correspondence (Annex 6) nor did he file a Response. Therefore, the Panel finds that the Respondent did not demonstrate legitimate rights or interests in the disputed Domain Name.
Registration and Use in Bad Faith
It must be noted that Complainant registered the domain name <juvemania.com> on August 29, 2000, i.e. just six days before Respondent registered the Domain Name at issue, as the "whois" database reveals. It may, therefore, be inferred that Respondent became aware of the existing <juvemania.com> registration and attempted to appropriate this Domain Name in the ".org" gTLD. This is an indication that the Complainant registered the Domain Name in bad faith.
It further appears that the Respondent did not provide his true address or did not update his change of address as the holder of the Domain Name. The use of false contact information is a circumstance which may indicate that the Respondent registered the Domain Name in bad faith (Home Director, Inc v. HomeDirector, D2000-0111; Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138).
Respondent warehoused the Domain Name reflecting a well-known mark for almost one year without posting an actual web page thereunder. Panels have repeatedly held that the passive holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name being used in bad faith is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003; WWF Entertainment, Inc. v. Ringside Collectibles, D2000-1306). The Domain Name identifies the Complainant's famous nickname. This trademark, associated with the word "mania", is so obviously connected with Complainant that by definition its registration was made in opportunistic bad faith and, although no actual use has been made so far, any use by the Respondent of this Domain Name would necessarily create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a Respondent's web site in the sense of paragraph 4(b)(iv) of the Policy (Banca Sella S.p.A. v. Mr. Paolo Parente, D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Co., D2000-0163; Ingersoll-Rand v. Frank Gully d/b/a Advcomren, D2000-0021).
The Panel, therefore, finds that Respondent registered and used the Domain Name in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Name <juvemania.org> registered by Respondent is confusingly similar to the trademark "JUVE" owned by the Complainant, that the Respondent has no rights or legitimate interests in respect of this Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name <juvemania.org> be transferred to the Complainant.
Dated: August 17, 2001