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WIPO Arbitration and Mediation Center


A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator

Case No. D2011-2054

1. The Parties

The Complainant is A.S. Roma S.p.A. of Rome, Italy, represented by Studio Legale Tonucci & Partners, Italy.

The Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / Vertical Axis Inc., Domain Administrator of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <asroma.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2011. On November 22, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On the same date, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 24, 2011.

The Center verified that the Complaint together with the amendment to 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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2011. The Response was filed with the Center on December 19, 2011. The Panel exercises its discretion under the Policy to consider the Response submitted with a minimal one day delay.

The Center appointed Adam Samuel as the sole panelist in this matter on January 12, 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 owns an internationally renowned Italian football team. It is the legal owner of an Italian trademark registration for AS ROMA, number 0000782538, registered on May 27, 1999.

The disputed domain name was created on March 24, 2002.

5. Parties’ Contentions

A. Complainant

This section sets out the Complainant’s contentions with which the Panel may or may not agree.

The Complainant owns the worldwide renowned Italian football club AS Roma and a number of trademark registrations for AS ROMA. The disputed domain name incorporates the Complainant’s AS ROMA trademark in its entirety.

The Complainant has never licensed, authorized or otherwise permitted the Respondent to register a domain name incorporating its AS ROMA mark or make any use of such marks in order to distinguish its own business. The Respondent has no connection with the Complainant. It has never been commonly known by the disputed domain name.

The Complainant’s AS ROMA trademark is so well-known that the only conclusion available is that the Respondent knew or at least should have reasonably known of the Complainant’s prior rights before registering the disputed domain name. It is highly unlikely that the Respondent just happened to inadvertently select the Complainant’s distinctive world-renowned trademark and incorporate it into its selected domain name. The registration of the disputed domain name occurred just after the Complainant’s soccer team had just won the 2001 Serie A league.

Registering a domain name identical and confusingly similar to the marks of a famous entity, like the Complainant, constitutes bad faith. The disputed domain name is so obviously connected with the Complainant’s activities and services that its registration and use by anybody other than the Complainant and with no connection with the related sector suggests opportunistic bad faith. A Google search for “asroma” produces over a million results almost all related to the Complainant with the first result being the official website of the Complainant.

The Respondent’s website under the disputed domain name offers specific third parties’ products and services by means of sponsored listings in the specific sectors where the Complainant carries out its commercial activities. The first link in the left menu of the Respondent’s website to which the disputed domain name resolves fraudulently invites the Internet users to click in order to be redirected to the Complainant’s official website. However, such a link – once clicked – simply shows in the right part of the webpage a list of products and services offered by third parties which are direct competitors of the Complainant.

The disputed domain name is not the only name which the Respondent could use to describe its business. The Respondent also prevents the Complainant from reflecting its mark in the correspondent disputed domain name.

The reputation of the company Vertical Axis Inc. appears to be that of a serial registrant of domain names that cybersquat on others’ trademarks. Although this is not conclusive, and each case must be assessed on its own facts, the Respondent’s pattern of cybersquatting in other cases can be considered as an additional factor in determining whether the Respondent’s good faith can be credible, and whether the Respondent’s conduct in this case also constitutes abusive cybersquatting.

B. Respondent

This section sets out the Respondent’s contentions with which the Panel may or may not agree.

The Respondent denies that it registered the disputed domain name in bad faith. It registered the disputed domain name when it was deleted and expired and became available for registration. On December 5, 2011, the Respondent told the Complainant’s Counsel that it would transfer the disputed domain name to the Complainant. On December 5, 2011, the Complainant’s counsel refused to accept this transfer and decided to proceed with the UDRP procedure. The Respondent requests that the Panel issues an order transferring the disputed domain name to the Complainant without carrying out an analysis under the Policy.

6. Discussion and Findings

The Respondent raises a preliminary point that as it has agreed to transfer the disputed domain name, the Panel should not conduct an analysis of the case under the Policy.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with this question at paragraph 4.13 by saying:

“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”

Paragraph 10 of the Rules ultimately provides the Panel with its powers and duties in this area. The material parts of it read:

“General Powers of the Panel

(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. […]

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. [...]”

In this particular case, the Complainant has presented a straightforward case which requires little further investigation. The Respondent has made little more than a bare assertion of good faith without giving any cogent explanation as why it registered the disputed domain name. The Complainant has alleged that this Respondent is a serial cybersquatter. If this is the case, the Respondent should not be able to escape adding to its reputation in this area by offering to transfer domain names which are the subject to proceedings under the Policy and requesting panels to desist from deciding the cases concerned.

In all the circumstances, the Panel exercises its discretion under paragraph 10(a) of the Rules to resolve this Complaint in full.

Under the Policy, the complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The disputed domain name has no independent meaning except as a reproduction of the Complainant’s trademark. The mark is fully incorporated into the disputed domain name. The disputed domain name consists of this trademark and the standard suffix “.com”. It is clearly at least confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Asroma” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its AS ROMA trademark. The Respondent has never asserted any rights or legitimate interests in that name and has not done so in its Response. For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s football team and trademark AS ROMA are extremely well-known. The Respondent has given no reason for registering the disputed domain name except that it could do so. The Response does not deal with the point that the Respondent must have known of the Complainant when registering the disputed domain name and, in the Panel’s view, must have done so because it knew of the potential for diverting to the Respondent’s website Internet searchers looking for the Complainant’s websites.

The website to which the disputed domain name resolves contains links to a variety of websites offering a number of different types of products including one to what appear to be the Complainant’s official website but which actually just resolve to further unrelated pages similar to the others.

In this Panel’s view, it is impossible, in the circumstances, at least without a Response to the Complaint on this point, to identify a reason why the Respondent registered the disputed domain name rather than any other available domain name, other than to attract business or Internet users to its website who were looking for a website connected to the Complainant’s trademark or business.

The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be one or more of the following: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain through click-through revenue or persuade the Complainant to buy the disputed domain name from the Respondent for an amount in excess of its out-of-pocket expenses. These each constitute evidence of registration and use in bad faith.

For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. As a result, it is unnecessary to deal with the Complainant’s other contentions.

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 <asroma.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Dated: January 23, 2012