WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juventus F.C. S.p.A.v. Gerrard McClement
Case No. D2001-1232
1. The Parties
The Complainant is Juventus F.C. S.p.A., a joint stock company incorporated in Italy with domicile in C.so Galileo Ferraris 32, 10128, Torino, Italy (hereinafter, the Complainant). The Respondent is Gerrard McClement, with domicile in 12 Clairmont Gardens, Glasgow, Scotland G37 LW, United Kingdom (hereinafter, the Respondent).
2. Domain Name and Registrar
The domain name at issue is <juventusnews.com>. The Registrar is Tucows.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on October 10, 2001, and in hardcopy on October 12, 2001. On October 15, 2001, the Center sent the acknowledgement of Receipt to the parties.
On October 16, 2001, the Center sent the request to the Registrar for the verification of the particulars of the domain name at issue. The request was answered on October 17, 2001. The Registrar confirmed (i) it was not in receipt of the Complaint; (ii) the disputed domain name had been registered with the Registrar; (iii) the current Registrant of the domain name is the Respondent; (iv) the administrative, technical and billing details; (v) the domain name is on hold status, and finally (vi) that the Uniform Domain Name Dispute Resolution Policy was applicable.
After verifying that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, the Policy) (October 22, 2001), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules"), the Center sent the Respondent a notification under Paragraph 2(a) of the Rules together with copies of the Complaint on October 22, 2001. The same notification was sent to the administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (with enclosures) and e-mail (without attachments). Both the Complainant and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.
The Respondent answered the Complaint on November 8, 2001. Acknowledgement of receipt was sent on November 12, 2001.
On December 18, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Mr. Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. At the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panelís decision is before December 31, 2001.
The language of the proceedings is English.
4. Factual Background
The Complainant is a well-known Italian football team, not only in Italy, but also throughout the world. The Complainant has won several major tournaments in Italy, Europe and worldwide (as evidenced in Annex 4). As anyone can see in the official web site of the Complainant (see http://www.juventus.com), this club was founded in 1897, and has been participating in the most important football competitions ever since. A brief history of the Complainant can be visited at the above referenced site.
The Complainant is owner of many trademarks including the word JUVENTUS (see Annex 3). They have been registered in the United Kingdom in different dates (January 31, 1996, November 11, 1997, November 18, 1998, August 24, 1999, November 23, 1999, January 13, 2000). An international registration was done at WIPO Registry on April 25, 1996. The Complainant has attached certificates of the foregoing trademarks registrations in Annex 3.
No authorization license agreement has been submitted by and between the Complainant and the Respondent regarding the use of the trademarks "JUVENTUS."
According to the Complainantís statements, the Respondent offered the sale of the domain name for valuable consideration in excess of any documented out-of-pocket costs directly related to the domain name (see Annex 7).
5. Partiesí Contentions
5.1 Complainant contends that:
a) The domain name <juventusnews.com> is identical and therefore confusingly similar to the trademark registrations "juventus" that are registered in the name of the Complainant. The addition of a generic term to a well-known trademark is not sufficient to prevent the public from confusion as to the origin or relationship between the owner of the site and the Complainant.
b) The Respondent does not have any right or legitimate interest in the domain name at issue due to the following:
i) The Respondent has no relationship with the Complainant.
ii) The Respondent has not been known under the domain name, or under any other related name to such a domain name.
iii) The Respondent does not own any right to the trademark "juventus."
c) The domain name <juventusnews.com> was registered and is being used in bad faith, due to:
i) The Respondent has registered the domain name to impede the Complainant a fair and legitimate use of the virtual space of the domain name.
ii) The domain name is of no lawful interest to anybody than the Complainant.
iii) In Complainantís opinion, the Respondent intends to sell the domain name for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the domain name.
5.2 Respondent contends that:
Taking into consideration that the Complainant registered the domain name <juventus.com> in 1998, and has not registered it with the suffixes .org and .net, the Respondent concludes that the Complainant has no interest in Internet domain names regarding its trademarks.
He cannot evidence any right or legitimate interest save that of the wish to create a news site.
The trademark "juventus" is a well known trademark, but there is no bad faith in using the domain name including it in the sense outlined in Paragraph 4(a)(iii) of the Uniform Policy.
There is no active selling, renting or otherwise transferring for valuable consideration, nor any of the other causes detailed in Paragraph 4(a)(iii) of the Uniform Policy. There was no active pursuit of selling made by the Respondent. A Response was made to a request prompted by the Complainant.
6. Discussion and Findings
The Policy sets forth in Paragraph 4(a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
"4.a. (i) Identity or Confusing Similarity"
The generic TLD ".com" cannot be taken into consideration as part of the comparison, since it does not give any particularity to the domain name. In other words, the suffixes used for TLDs are of no significance with respect to the question of the identity or confusing similarity. On the contrary, the examination of the Panel should be focused on checking whether there is a substantial identity between the words of the Complainantís trademarks and the Respondentís domain name. This substantial identity can be deduced from different criteria. The case law on trademarks can be helpful in this respect. From an objective point of view the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences between the words to be compared. From a subjective point of view, the Panel must pay attention to the part of the words which might lead to confusion regarding the origin or relationship between the owner of the trademark and the registrant of the domain name.
Taking the above into consideration, there is a significant coincidence between the domain name at issue (<juventusnews.com>) and the words used in the Complainantís trademarks ("juventus.") The addition of a generic word (i.e. <news>) does not make any difference.
As a result, in my opinion, the trademark "juventus", duly registered and owned by the Complainant, is confusingly similar the domain name <juventusnews.com>.
In conclusion, the requirement of Paragraph 4.a.(i) is met.
"4.a.(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Name <juventusnews.com>"
The domain name at issue is not identical to the whole or either part of the Respondentís name, or a trademark, trade name or corporate name of his property.
The Complainant has submitted evidence of the registrations of various trademarks including the word "juventus", whereas the Respondent has failed to do so regarding the use of the domain name. On the contrary, the Complainant has stated that the Respondent is no way linked or contractually bounded therewith. The Panel must point out that the fact that someone owns something does not mean that the proprietor is entitled to use the property in the way he feels most appropriate. On the contrary, there are some limits as to the use of the property to which everyone is subject. One of these limits is the respect to the rights of third parties. In other words, having proved the Complainant its legitimate interests and rights on the trademarks "juventus", the Respondent is prevented to use the denomination "juventus" in anyway.
Therefore, the requirement of Paragraph 4.a.(ii) is met.
"4.a.(iii) Respondentís Registration and Use of the Domain Name in Bad Faith"
As to the bad faith requirement, it should be stressed that the Complainant is trademark holder of several trademark rights.
The concept of bad faith has to be focused not only from a subjective, but also from an objective point of view. It is not only the knowledge of the Respondent when purchasing a domain name similar to a relevant trademark that counts; it is also relevant the fact of the continuous use of such a domain name under conditions revealing that the Respondentís activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.
Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainantís trademarks and corporate name, not only in Italy, but also throughout the world, it cannot be accepted that the Respondent did not know the name or trademark "juventus", either in the moment of purchasing the domain name at issue, or afterwards when using it. There must be a iuris tantum presumption that the Respondent is using in bad faith the domain name if the foregoing conditions are met. Another solution would mean for the Complainant a so-to-speak diabolica probatio. Consequently, the burden of the prove must be for the Respondent who must prove that he has purchased or is using the disputed domain name in good faith.
As a result, the Panelist must come to the reasonable conclusion that the Respondent was completely aware that the registration of the domain name <juventusnews.com>, on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of the Complainant.
In addition, after having accessed to the site of the disputed domain name, the Panel has verified that it aims to the registration of <co.uk> domains, which can be considered as an evidence of the bad faith of the Respondent in using it. This kind of offer is something usual in the conflicts between domain names and trademarks.
According to previous decisions of the Center (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira, D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp, D2000-0239 J. García Carrión, S.A. v. M™ José Catalán Frías and D2000-0277 Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
Accordingly, the Panel believes that the Registrant is using the domain name in bad faith by including contents referred to the sale and registrations of domain names, which shows no serious purpose of the Respondent to use in good faith the domain name. Thus, the Respondent prevents the Complainant from making a legitimate use thereof.
Finally, it should not be forgotten that "juventus" has been proved to be a notorious and well-known trademark. Therefore, it is not conceivable that in registering the domain name at issue the Respondent was not aware of this name.
Therefore, the domain name <juventusnews.com> was registered and is being used in bad faith.
The Complainant has proved that the domain name is identical to its trademark, that the Respondent has no rights or legitimate interest in the domain name at issue, and that the Respondent did register and is using the domain name in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name <juventusnews.com> to be transferred to the Complainant.
Jose Carlos Erdozain
Dated: December 31, 2001