World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Juventus Football Club S.p.A. v. Private Registrations Aktien Gesellschaft

Case No. D2012-2162

1. The Parties

The Complainant is Juventus Football Club S.p.A. of Turin, Italy, represented by Buzzi, Notaro & Antonielli d'Oulx, Italy.

The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain name <juventuschannel.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 31, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2012.

The Center appointed Joan Clark as the sole panelist in this matter on November 30, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of several trademarks consisting of or including the word “Juventus”, and in particular is the owner of an Italian trademark registration for the trademark JUVENTUS and also an international trademark registration for the trademark JUVENTUS, both filed on December 19, 1995 and both registered on February 27, 1996.

The Respondent is the registrant of the disputed domain name <juventuschannel.com> which was registered on March 9, 2004 and is scheduled to expire on March 9, 2013.

5. Parties’ Contentions

A. Complainant

The Complaint states that the Complainant is Juventus Football Club SPA, a well-known football club founded in 1897 in Turin, Italy, one of the most famous professional football teams in the world. The Complaint further states that the JUVENTUS trademark and trade name were adopted in 1897 and that the Complainant has spent substantial amounts of money, time and effort to promote and advertise its trademarks and trade name, and that as a result these have obtained a high degree of fame and recognition among the relevant public and are considered to be a valuable asset of the Complainant.

The Complaint provides a summary of the Complainant’s long-standing and successful history and sport achievements as a result of which the Complaint states that the Complainant is no doubt absolutely well-known all over the world and not only among football fans.

The Complaint states that the Complainant is the owner of several registrations consisting of or including the word “Juventus” including Italian trademark registration filed on December 19, 1995 and granted on February 27, 1996, as well as a Community trademark registration filed on May 7, 1998 and granted on June 18, 2004 and International trademark registration filed on December 19, 1995 and granted on February 27, 1996. According to the Complaint the trademark JUVENTUS is used in relation to a number of goods and services including sporting and cultural activities, entertainment as well as clothing, footwear, head gear and stationery.

The Complaint declares that the Complainant owns about three hundred and eighty domain name registrations including <juventuschannel.biz>, <juventuschannel.eu>, <juventuschannel.info>, <juventuschannel.it>, <juventuschannel.net> and <juventuschannel.org>.

The Complaint asserts that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Further, the Complaint asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that the Complainant did not consent to the Respondent’s registration of the disputed domain name and did not give the Respondent any license or other authorization to use and/or register the disputed domain name. The Complaint further states that there are no business or commercial connections between the Complainant and the Respondent and that the disputed domain name is not the name or the nickname of the Respondent.

The Complaint notes that the disputed domain name is composed of the word “Juventus”, which corresponds to a registered trademark owned by the Complainant, and the word “channel” which has a descriptive meaning.

Further, the Complaint asserts that the combination “juventuschannel” is not a designation that any person would be legitimately interested in choosing and/or adopting, unless it were deliberately willing to create an association with the Complainant and to misleadingly attract Internet users for commercial gain.

Further, the Complaint states that the disputed domain name was registered and is being used in bad faith. The Complaint asserts that the disputed domain name was registered and passively held with the sole aim to intentionally divert potential customers of the Complainant and to misleadingly attract Internet users on the web page for illegitimate commercial purposes only.

In view of the wide-spread use and reputation of the Complainant’s trademark JUVENTUS, the Complaint asserts that Internet users may be led to believe that the owner of the disputed domain name is in fact the Complainant or that it is somehow linked to the Complainant.

Further, the Complaint states that Internet users may be led to believe that the disputed domain name is linked to the other “juventuschannel” domain names already owned by the Complainant, such as <juventuschannel.it>, and others which are active and regularly used by the Complainant.

It is also noted in the Complaint that the web page identified by the disputed domain name is parked on a portal displaying a number of links which point to commercial websites operated by third parties in relation to sport activities and also to the same business as that of the Complainant. The Complaint declares this to be called “passive holding” which is commonly recognized as evidence of bad faith. Furthermore, such links are clearly commercial in nature and are used for commercial gain, according to the Complaint.

Further, the Complaint asserts that since the disputed domain name includes the trademark JUVENTUS it will be thought that it was obviously linked to the well-known trademark JUVENTUS and its products or services so that its use by the Respondent, which has no connection with the Complainant, implies opportunistic bad faith.

The Complaint notes that the Complainant through its representative sent a demand letter to the Respondent informing it about the Complainant’s prior rights in the trademark JUVENTUS and asking for voluntary assignment of the disputed domain name, but that such letter remained unanswered.

Finally the Complaint notes that the Respondent has been the defending party in numerous UDRP proceedings in which the respective UDRP panels have ordered that the disputed domain names be transferred to the respective complainants. The Complaint indicates that this is further evidence of bad faith, since the Respondent appears to register and maintain several domain names for illegitimate commercial purposes only.

The Complaint requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:

(i) that the disputed 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 disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The disputed domain name <juventuschannel.com> is composed of the Complainant’s registered trademark JUVENTUS, which according to the Complaint is a mark of considerable renown, followed by the descriptive word “channel”. The addition of this descriptive word does not lessen the effect to this Panel of the first and prominent part of the disputed domain name in creating confusion with the Complainant’s trademark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complaint has shown that the Complainant has rights.

The first element required for the Complaint to succeed has been established.

B. Rights or Legitimate Interests

The Respondent has chosen not to reply to the Complaint. There has been no refutation of the prima facie assertions found in the Complaint that the Respondent has not been known by the name “juventuschannel” and that the Complainant has not licensed or authorized the Respondent to use the disputed domain name.

In view of the statements in the Complaint which have not been refuted or even commented upon by the Respondent or of any other circumstances which would provide the Respondent with a right or legitimate interest, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element required for the Complaint to succeed has been established.

C. Registered and Used in Bad Faith

As there has been no response from the Respondent in this case, there is no explanation as to why the Respondent chose to adopt a domain name the first and principal part of which is identical to the Complainant’s trademark and first part of the name of its well-known football club. It is noted that the disputed domain name was registered several years after the earliest registration of the Complainant’s trademark JUVENTUS. The copy produced by the Complainant of the web page for the disputed domain name shows references to “Juventus Football Club”, being the Complainant’s own name except for the suffix “S.p.A.”, as well as the words “Juventus” and “Juventus Turin”, Turin being the city in Italy where the Complainant and its football club are located. The conclusion is obvious that the disputed domain name was chosen with full knowledge of the Complainant’s JUVENTUS trademark and Juventus Football Club, in an effort to cause Internet users to believe that the disputed domain name is associated with the Complainant and its activities.

The web page under the disputed domain name displays a number of links which point to sports activities and in particular to the same business as that of the Complainant, that is football. These links appear to point to commercial websites of third parties and to have been used for commercial gain.

While there is no indication in the evidence submitted in this matter that the Respondent has offered for sale goods or services on its web page, the passive holding of the disputed domain name and using it to redirect Internet users by links to external websites, is evidence of bad faith, under the circumstances.

The Panel finds that the Respondent registered and has used the disputed domain name to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith.

The Complaint notes that the Respondent has been named respondent in a large number of UDRP proceedings in which the respective UDRP panels ordered that the disputed domain names be transferred to the respective complainants. It appears that the Respondent continues to be in the business of adopting domain names which are confusing to established and widely known if not famous trademarks, instead of adopting in such cases totally different domain names not designed to give rise to such confusion. This information together with the Respondent’s failure to reply to the Complaint, or previously to a demand letter sent to the Respondent complaining of the Complainant’s prior rights to the trademark JUVENTUS, is consistent with the Panel’s conclusion that the disputed domain name was adopted and has been used in bad faith.

The third element required for the Complaint to succeed has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <juventuschannel.com>, be transferred to the Complainant.

Joan Clark
Sole Panelist
Date: December 11, 2012

 

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