WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Francesco Totti v. Jello Master
Case No. D2002-0134
1. The Parties
The Complainant is Signor Francesco Totti of Rome, Italy. The Complainant is represented by Dr. Fabio Pennisi of Rome, Italy, Legal Consultant.
The Respondent is Jello Master of Toronto, Canada. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is <francescototti.com>.
The domain name is registered with Stargate Communications Inc. of Oak Brook, IL, U.S.A. ("the Registrar"). The domain name was registered by the Respondent with the Registrar on July 4, 2001.
3. Procedural History
A Complaint submitted by the above Complainant was received on February 11, 2002, by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On February 14, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- confirm that a copy of the Complaint was sent to you by the Complainant, as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b);
- confirm that <francescototti.com> is registered with you;
- confirm that the Respondent is the current registrant of <francescototti.com>;
- provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for <francescototti.com>;
- confirm that the Uniform Domain Name Dispute Resolution Policy applies to the <francescototti.com>;
- indicate the current status of the <francescototti.com>.
- indicate the specific language of the registration agreement as used by the registrant for <francescototti.com>.
- indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of <francescototti.com> (Rules, Paragraph 1)
By email dated February 22, 2002, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <francescototti.com>.
- "Jello Master" of 2 Blue Jays Way, Toronto, ON, Canada is shown as the "current registrant" of the domain name. It is also shown as the administrative, billing and technical contact.
- The UDRP applies to the domain name.
- The domain name registration <francescototti.com> is currently in "active" status.
- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The Registration agreement language used is english.
- The Registration agreement was submitted to the jurisdiction of the principal office of the registrar.
The Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on February 26, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint. A copy of the Complaint was also emailed to the Registrar and ICANN. The emails sent to <francescototti.com> and to <email@example.com> (the email address given by the Registrar for the administrative, billing and technical contacts) were not delivered. The addresses were said by the service provider to have "transient non-fatal errors" and later "permanent fatal errors". Attempts made to serve the couriered documents failed because of "incomplete address".
The Complainant elected to have its Complaint resolved by a sole panelist; it has duly paid the amounts required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent did not file a Response. A Notification of Respondent Default was forwarded by WIPO Center on March 20, 2002.
A respondent cannot hide behind the provision to the Registrar of either an incomplete physical address or an email address which cannot be accessed. The inference to be drawn is that the Respondent is evading service of such communications and must face the consequences. The fact that the Complainant encountered similar difficulties in communicating by courier post with the Respondent supports the inference of evasiveness on the part of the Respondent.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.
The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On March 26, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is April 9, 2002. The Complainant sought to file a supplementary submission but the Panel declined to receive it.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules. In particular, the Panel considers that WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
4. Factual Background
The Complainant is a professional player of football (ie ‘association football’ or ‘soccer’). He has played for the ‘AS Roma’ team since he was 12 years old and is now its captain. AS Roma is an important club in European Football and many famous footballers have played for it. He made his professional debut at age 16 in 1993: in 1996 his team won the European title with the under-21 Italian National Team.
The Complainant played in the UEFA Cup for three seasons beginning in 1998/9 and there encountered other major European teams. He has represented Italy in its national team since 1998 and was nominated as ‘Man of the Match’ for the Italy-Belgium match in 2000. His club won the Italian Championship Title in June 2001 with the Complainant scoring one of three goals before a crowd of 80,000. He has played in major European tournaments. He has received many awards for his personal football qualities. He has attracted media attention not just in Italy, but in many other countries, including Canada where Respondent is domiciled. He has won many awards and has fan clubs in many countries, including China.
Complainant created a website for the name <francescototti.com> in 1999 which lapsed, allegedly through inadvertence. On July 4, 2001, some 17 days after the AS Roma Italian Title victory in which Complainant had played a major part, Respondent registered the disputed domain name. For some two weeks thereafter, Respondent used the website for advertising various products and services. Since August 2001, the site has been inactive.
On January 15, 2002, Complainant’s lawyer sent a ‘cease and desist’ letter to Respondent, which was not delivered because the address shown in the WHOIS database was incorrect or incomplete. (This was the same address to which the WIPO Center forwarded the Complaint.)
Complainant operates a website at <francescototti.it> which gives information on him and his achievements. A company with which he is involved has registered a raft of other domain names with various suffixes.
5. Parties’ Contentions
Complainant has rights to the mark "Francesco Totti" arising out of his extensive fame as a footballer and his domain registrations – particularly, his earlier use of <francescototti.com> before its registration lapsed and his present use of <francescototti.it> and other registered names.
Respondent has been given no rights to the use of the disputed domain name by the Complainant. Respondent acted opportunistically in registering the name shortly after the Complainant and his Club had achieved a major sporting victory.
Complainant has recently renewed his engagement with AS Roma and has authorized the Club to use his name, mark and image for commercial purposes. He has licensed the use of AS Roma products which feature his mark. The sporting equipment producer Nike uses the Complainant’s name to promote widely its products.
Use of the mark in major football tournaments has acquired a secondary meaning for football clubs and football fans so as to constitute a valid common law mark. Under both Italian and Canadian law, the Complainant would be entitled to damages for the misappropriation of his name and image.
Bad faith is established by Respondent’s inaccurate address as supplied to the Registrar. The coincidence of the sporting victory and the registration is important. The victory of AS Roma was reported in, inter alia, the Toronto Star: a newspaper circulating in the city in which Respondent is domiciled as well as in other Canadian newspapers.
Immediately after registration, the disputed domain name resolved to a banner site and a link to a search engine which used the same email address as the Respondent, which was at that time involved in a "pay-per-click" enterprise. It is currently inactive.
Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
The Panel has considered the submissions and evidence and largely agrees with the Complainant’s submissions.
The disputed domain name is identical to the Complainant’s common law mark established by the Complainant’s international reputation as a successful football player. The case is similar to many WIPO decisions in which the names of famous people with a reputation in a given area – (e.g. writing, singing, acting) has been found to have generated a common law mark arising out of that reputation. There is no reason why famous sportspeople should not have a similar ability to achieve a common law mark arising out of their fame in an area of life which attracts great interest – if not extreme enthusiasm – in those many countries of the world where "soccer" is part of the way of life. See in connection with a sportsperson, Daniel C. Marino, Jr v Video Image Productions, WIPO Case No. D2000-0598.
From the wealth of material supplied in the annexures to the Complaint, there is little doubt that the registration and use by the Respondent of the disputed domain name would amount to the tort of passing off, as it is known in common law jurisdictions such as Ontario where Respondent is domiciled.
As to whether the Respondent has any legitimate rights, the Complainant gave him none. There is no evidence from the Respondent which could raise any of the matters in Paragraph 4(c) of the Policy. Accordingly, the Complainant has discharged the onus on the second criterion.
There is evidence from the newspaper clippings that the fame of the Complainant has extended to Canada. There is no allegation that the Respondent in Canada was ignorant of Complainant’s international fame at the time of registration. The Panel is prepared to infer bad faith registration and use from the following facts:
(a) The use of a famous person’s name in a domain suggests an intent to divert users seeking information on that celebrity (see Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1515).
(b) The registration of the domain name so shortly after Complainant and his team had won a major victory – one that was well-publicized in Europe, Canada and elsewhere.
(c) The initial use of the site as a "pay-per-click" exercise.
(d) The subsequent lack of development of the website.
(e) The supply of an incorrect or incomplete address by the Respondent to the Registrar.
This case is simply another in a line of attempts by domain name registrants to capitalize on the fame and reputation of persons well-known internationally. Other WIPO cases, such as Nicole Kidman’s case (supra), Julia Roberts v. Boyd, WIPO Case No. D2000-0210, Jeanette Winterson v. Hogarth, WIPO Case No. D2000-0236 and Lara Crokaert & Anor v. Buy this Domain Webmaster, WIPO Case No. D2002-0062 show that such attempts do not usually succeed.
The third criterion has been established and the Complaint must prevail.
For the foregoing reasons, the Panel decides:
(a) That the domain name <francescototti.com> is confusingly similar to the trademark to which the Complainant have rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <francescototti.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: April 4, 2002