WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juventus F.C. v. Hyung Jin Park
Case No. D2001-0896
1. The Parties
The Complainant is Juventus F. C. S.p.A., a company incorporated in Italy, with place of business in C.so Galileo Ferraris 32, 10128, Torino, Italy.
The Respondent is Hyung Jin Park, 303ho Skygopo, 3-14-3 Dakadanodaba Shinjuku-ku Tokyo, 169-0075, Japan. The administrative contact is the same as the Respondent.
2. The Domain Names and Registrar
The domain names at issue are <juvecard.com> <juvebiz.com> <juvetravel.com> <juvepark.com> <juvemobile.com> (the "Domain Names"). The registrar is Network Solutions, Inc. ("NSI") with address at 505 Huntmar Park Drive, Herndon, Virginia 20170-5142, USA (the "Registrar").
3. Procedural History
On July 13, 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 17, 2001 and confirmed receipt on July 18, 2001.
On July 18, 2001, the Center requested NSI to verify the Domain Names in dispute. NSI stated on July 24, 2001, that it is the registrar of the Domain Names, that the Respondent is the current registrant and administrative contact, that the NSI Version 5 Service Agreement is in effect and that the Domain Names registration are in "hold" status.
The Center proceeded to verify whether the Complaint satisfies 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 July 25, 2001, the Center sent 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 August 14, 2001, as the last day for Respondent to file a Response.
On August 22, 2001, the Center notified the Respondent that he failed to meet the deadline and was, therefore, in default.
On August 27, 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 and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
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 and JUVE are protected by registrations in numerous countries covering various goods (including among others: printed matters, photographs and magazines, silverware and jewelry, motor vehicles and non-vehicles for locomotion, eyeglasses, videotapes and compact discs, etc.). Copies of several Japanese registration certificates for JUVENTUS (as a logo and in block letters) and an international registration certificate for JUVE (in block letters) are attached to the Complaint (Annex 3).
The Respondent registered the Domain Names in January 2001. Nothing is known about the Respondent, because of Respondent's default.
5. Parties' Contentions
- that the Domain Names are confusingly similar to JUVE, Complainant's well known nick name and registered trademark;
- that the Complainant is one of the most famous professional soccer team in the world, established in 1897, in Torino, Italy (Annex 4);
- that its trademarks are worldwide very well established and therefore the Domain Names could be solely associated with Complainant's soccer team. The Complainant argues that its trademark JUVE has been recognized as related to the soccer team Juventus in another WIPO Decision (WIPO Case No. 2001-0583). The Complainant also indicates that words like "biz", "card", "travel", "mobile" and "park" contained in the Domain Names are descriptive and, when combined with its JUVE mark, they create the impression of an association with the Complainant. Therefore, Complainant contends that the Domain Names at issue are misleading for the public;
- 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 Names have been registered in bad faith because Respondent must have been aware of the fame of Complainant's trademark. According to the Complainant, the primary purpose of registration was to exploit its notoriety and recover a substantial financial consideration;
- that the Domain Names have been registered in bad faith because under Respondent's name 45 other domain names containing the term JUVE are registered. Complainant concludes that the Respondent acts as a cybersquatter (Annex 6);
- that Respondent in April 2001 posted a "domains are free.com" default advertising site and removed it after Complainant sent a cease and desist letter in May 2001; that the Respondent's passive holding of the Domain Names registration, therefore, constitutes use in bad faith.
The Respondent did not file any Response to the Complaint.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the Domain Names are 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 Names; and
(iii) that the Respondent's Domain Names have been registered and are being used in bad faith.
Identity or Confusing Similarity
The Complainant has shown that it owns an international registration of the trademark "JUVE" in block letters. The addition of a generic term like "card", "biz" (for business), "travel", "park" or "mobile" to a famous mark is not sufficient to avoid confusion (Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 and Parfums Christian Dior v. Netpower, WIPO Case No. D2000-0022). In previous decisions, the domains <juvetv.com> and <juvemania.org> have been found to be confusingly similar to Complainant's trademark JUVE (Juventus F.C. SpA. v. Mytos srl, WIPO Case No. D2001-0583; Juventus F.C. SpA. v. Vincent Khouw, WIPO Case No. D2001-0844) . The Panel therefore finds that the Domain Names at issue are confusingly similar to Complainant's trademark "JUVE".
Legitimate Rights or Interests
The Respondent does not appear to have obtained an authorization to use Complainant's trademarks. The Respondent neither replied to Complainant's cease and desist letter nor did he file a Response. In any event, the "domains are free.com" default advertising site posted by the Respondent does not qualify as a bona fide offering of goods or services under the Policy.
Therefore, the Panel finds that the Respondent did not demonstrate any legitimate rights or interest in the disputed Domain Names.
Registration and Use in Bad Faith
According to Complainant's evidence (Annex 6) the Respondent registered 45 domain names containing the term "juve". One can therefore conclude that the Respondent has engaged in a pattern of cybersquatting conduct and thereby registered the Domain Names in bad faith (Guccio Gucci S.p.A. v. Mark O'Flynn, WIPO Case No. D2001-0270 and further cases cited therein).
The Respondent has passively held the Domain Names for several months (besides the "domains are free" default pages posted by Respondent in April 2001 which do not qualify as good faith use), and any use by the Respondent of these Domain Names 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, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Ingersoll-Rand v. Frank Gully, WIPO Case No. D2000-0021).
The Panel, therefore, finds that Respondent registered and used the Domain Names in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Names, <juvecard.com>, <juvebiz.com>, <juvetravel.com>, <juvepark.com>, <juvemobile.com> registered by Respondent are confusingly similar to the trademark "JUVE" owned by the Complainant, that the Respondent has not demonstrated any rights or legitimate interests in respect of these Domain Names, and that the Respondent registered and used the Domain Names in bad faith. Accordingly, pursuant to paragraph 4 (i) of the Policy, the Panel requires that the registration of the above Domain Names be transferred to the Complainant.
Dated: September 9, 2001