WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Mr. Marco Violi
Case No. D2015-1973
1. The Parties
The Complainants are A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. of Rome, Italy, represented by Studio Legale Tonucci & Partners, Italy.
The Respondent is Mr. Marco Violi of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <asromaradio.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on December 7, 2015. 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 first Complainant is A.S. Roma S.p.A., a joint-stock company enrolled in the Italian stock exchange, with principal place of business in Rome.
The second Complainant is A.S.R. Media & Sponsorship S.r.l., a limited liability company with principal place of business in Rome.
Founded in 1927, and publicly traded since 2000, the first Complainant is one of the most popular world-wide professional Italian football club, with more than 700,000 average attendance at the stadium for football season, and about 4 million fans in the world.
The first Complainant participates in the National Football League Serie A TIM and is one of the teams to have attained a greater number of sporting success, having won three national titles in Italy, nine Italian Cups, two Italian Super Cups and one League Super Cup. In the last 15 years, the first Complainant's main team was ranked eight times among the top three in Serie A and participated eight times in the UEFA Champions League, the most important football competition in Europe.
In 2010, the first Complainant was placed among the top three teams in the world ranking performance of the club published by the International Institute of Football History and Statistics ("IFFHS") in July 2010. As of December 31, 2014, the team is ranked 40.
Since 1999, the first Complainant has been a joint stock company: along with the football clubs S.S. Lazio and F.C. Juventus, it is one of the only three Italian clubs listed in the Italian stock exchange.
According to the Football Money League published by Deloitte, in the season 2005–06, the first Complainant's main team was the twelfth highest earning football clubs in the world with an estimated revenue of EUR 127 million.
The second Complainant A.S.R. Media & Sponsorship is a subsidiary of the first Complainant, and has been formally assigned the divisions "Sponsorship" and "Media" of the A.S. Roma Group controlled by the first Complainant. It is in charge of the management of licensing and sponsorship activities and of the management of the direct media rights related to the TV channel "AS Roma TV" and to the radio channel "AS Roma Radio", beyond the activities carried out on digital platforms.
The first Complainant is the owner of several Italian trademark registrations incorporating AS ROMA, including the Italian trademark Nos. 0000826298 for A.S. ROMA (word mark), registered on October 6, 2000, in classes from 1 to 42, 0000857701 for AS ROMA MUSIC (figurative mark), registered on December 12, 2001, in classes 9 and 41, and 0001097326 for AS ROMA STORE (figurative mark), registered on February 25, 2008 in classes 3, 6, 8, 9, 11, 12, 14, 15, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35 and 41.
The second Complainant is the owner of several Community Trademark registrations incorporating AS ROMA, including the Community Trademark No. 001685031 for A.S. ROMA (word mark), registered on August 1, 2001, in classes 3, 9, 14, 16, 18, 25, 28. The second Complainant is also the owner of International Trademark registrations encompassing AS ROMA, including the International trademark No. 746853 for A.S. ROMA (word mark), registered on October 11, 2000 in classes from 1 to 42.
The first Complainant is the owner of the domain name <asroma.it>, registered on May 2, 2002. The second Complainant is the owner of the domain name <asroma.com>, registered on March 24, 2002.
The disputed domain name <asromaradio.com> was registered on April 27, 2014 and, at the time of the drafting of the decision, is pointed to a website promoting a purported web radio operated by the Respondent named "Roma Web Radio", publishing news, photographs and videos about the Roma football club as well as sponsored banners advertising apparently unrelated services. According to the screenshots on record provided by the Complainant, prior to the Panel appointment a logo similar to the mark AS ROMA was published on the web site to which the disputed domain name resolved, and the Respondent's web radio was identified as "AsRomaRadioWeb".
5. Parties' Contentions
The Complainants brought a consolidated Complaint stating that they have a specific common grievance against the Respondent, that the Respondent has engaged in common conduct that has affected the Complainants' individual rights in a similar fashion and that it would be equitable and procedurally efficient to permit the consolidation.
More in details, the Complainants state the following to support their request for consolidation:
(i) the Complainants are both exclusive holders of different trademark registrations entirely including the distinctive sign AS ROMA;
(ii) the registration of the disputed domain name commonly and simultaneously breaches the exclusive rights on the related trademarks hold by the Complainants;
(iii) the first Complainant is the holding of the AS Roma Group of companies including also the second Complainant;
(iv) the first Complainant has formally assigned to the second Complainant the divisions "Sponsorship" and "Media" of the Group, in particular the management of licensing and sponsorship activities and the management of the so called "direct media rights" related to the TV channel "AS Roma TV" and to the radio channel "AS Roma Radio", beyond the activities carried out on digital platforms;
(v) the first Complainant has in part delegated the AS Roma Group's trademark portfolio management and commercial exploitation thereof to the second Complainant;
(vi) the first Complainant keeps on directly carrying on also activities related to the commercial exploitation of its trademarks and media rights.
The Complainants asserts that they pursue the goal to maximize revenue arising from the exploitation of any of their distinctive signs and trademarks, audiovisual rights, the right to broadcast through new technology and sponsorship advertising, promotional and development merchandising activities.
The Complainants inform that they have been significantly present also in sport events other than the national and international soccer competitions. The Complainants highlight that the trademark AS ROMA is further commercially employed by the Complainants, beyond the distinctive use related to the soccer team and to the other sport activities of the club, within sponsorship agreements with the main national and international key players in the markets, including but not limited to Nike, Telecom Italia Mobile T.I.M. (the first mobile telecommunication company in Italy), Sisal Matchpoint (the Italian company active in the gaming business), SKY Television, the Murdoch's Group Italian channel cable and satellite TV company, Frecciarossa Trenitalia S.p.A. (the Italian Railway Company), the car companies Toyota and Lexus, the labor recruiting company Manpower Group, the Swiss luxury goods company Philippe Plein, the Italian sport newspaper Corriere dello Sport and Radio Italia, Algida, Gatorade, Fiuggi, ACEA, Mater Dei, the Italian Region Trentino Alto Adige, the company Sparco and the company Natalucci & Partners.
The Complainants highlight that the trademark AS ROMA has been also used to identify the new stadium whose construction has been recently approved and which shall be their exclusive property, within the relevant ICT communication and commercial strategies and as main asset within the ecommerce strategies of the club carried out on electronic communication by means of the official merchandise distribution channel represented by the proprietary onlineweb portal "As Roma Store" available at "www.asromastore.it".
The Complainants further point out that the trademark AS ROMA has been used as main asset within the ecommerce strategies of the club carried out on mobile networks by means of official dedicated apps, the commercial merchandising strategies of the club carried out by means of franchisingagreements for the 21 AS ROMA stores located in several points of the city of Rome; the trademark exploitation strategies carried out by the club within the national and international audiovisual sector, having the Complainants both set up its own satellite and on-demand TV channel (the "Roma Channel") and drawn up specific agreements with third parties to manage the radio and TV broadcasting Intellectual Property rights by means of any broadcasting technology; the trademark exploitation strategies carried out by the club within the national publishing sector, being the Complainants publishers of the club's official magazine as distinguished by the trademark AS ROMA; the trademark exploitation strategies carried out by the club in the financial and banking sector; and, for the sport and institutional communication, by means of the official website "www.asroma.it".
The Complainants contend that they use the trademark AS ROMA to distinguish, promote and market their activities and services through various channels, including web sites, brochures, newspapers, radio, TV and electronic communication networks, and that they have been widely marketing their activities and services, spending huge amounts of money in advertising and other marketing activities.
The Complainants argue that, further to the spread, intense and continuous use of the trademark AS ROMA to distinguish the Complainants' services in the sport and commercial sector, the Complainants have subsequently acquired goodwill and reputation in the mark all over the world, also due to the relevant sport successes of the soccer team. As a result of the extensive use of the trademark AS ROMA, also as publicized and promoted by the international matches of the soccer team as broadcasted in international TV and radio channels and on electronic communication networks, the Complainants conclude that the trademark AS ROMA is internationally very well-known, even irrespective of the national and international registrations.
The Complainants contend that the disputed domain name is confusingly similar to the trademark AS ROMA, as it incorporates the Complainants' trademark in its entirety, without subtraction of any element of the Complainants' world-known trademark AS ROMA. The Complainants also state that the addition of the element "radio" not only is not relevant in light of the deceptive evaluation, but it is an element more seriously breaching the Complainants' rights on the trademark since – according to the official AS Roma Radio – it grounds the false belief by the Internet users that the disputed domain name is associated to the Complainants and/or to the official radio service offered by the Complainants.
The Complainants state that the Respondent has no rights or legitimate interests with respect to the disputed domain name and that its registration is a typical case of abusive registration since:
- the Complainants have never licensed, authorized or otherwise permitted the Respondent to register a domain name incorporating the AS ROMA marks, nor to make any use of such marks in order to distinguish its own business; moreover, the Respondent is neither an agent nor a licensee of the Complainants and has no connection or affiliation with the Complainants;
- the Respondent has not been commonly known by the disputed domain name, and the Respondent has not acquired any trademark or service mark rights in and to the disputed domain name;
- there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
- the Respondent is making a non-legitimate and unfair use of the disputed domain name with intent for commercial gain misleadingly to divert consumers, as the disputed domain name is pointed to an abusive website under the URL "www.asromachannel.eu" which presents counterfeited contents identical to those which the user may found on the official websites of the Complainants such as "www.asroma.it" and a specific internal section reproduces the identical contents related to the "AS Roma Radio" as published on the Complainants' official web site at "www.asroma.it/it/romaradio/index.html".
With reference to the circumstances evidencing bad faith, the Complainant highlights that the disputed domain name is so obviously connected with the Complainants' activities and services that its registration and use by anybody other than the Complainants – and with no connection with the related sector - suggests opportunistic bad faith. Therefore, the Complainants submit that, at the time of registration, the Respondent could not ignore, on the contrary it kept in mind and was perfectly aware, that AS ROMA was and is one of the most famous trademarks in the sports sector.
As to the use of the disputed domain name, the Complainants contend that the redirection of the disputed domain name to a website abusively counterfeiting contents, Intellectual Property assets, trademarks, distinctive signs and the structure of the official website of the Complainants, "www.asroma.it", and offering also to Internet users specific third parties' products and services by means of banners and sponsored listings also in the specific sectors where the Complainants' carry out their commercial activities, is evidence per se of the Respondent's bad faith. Therefore, the Complainants submit that the Respondent is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation or endorsement of the website according to paragraph 4(b)(iv) of the Policy.
As an additional circumstance evidencing bad faith, the Complainants state that the Respondent owns several other domain names fully including signs and trademarks of the Complainants, such as <asromachannel.eu>, <asromaradio.it>, <laromasiamonoi.com>, which correspond to the official contest organized by the Complainants "La Roma Siamo Noi", and <romagiallorossa.it>. Therefore, the Complainants conclude that there is no doubt of the full and intentional abusive will of the Respondent to specifically cybersquat the Complainants' distinctive signs, domain names and trademarks. The Complainants further state that the Respondent is preventing the Complainants from reflecting their mark in the corresponding disputed domain name according to paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainants have rights;
(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.
A. Preliminary procedural issue: Consolidated Complaint
According to paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), multiple complainants can bring a single consolidated complaint against one respondent in situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
Based on the Complainants' allegations as detailed above in sections 4 and 5.A, the Panel is satisfied that all the above criteria are met in the present case. Therefore, the Complainants' request for consolidation is accepted.
B. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of several trademark registrations encompassing the term AS ROMA together with punctuation or figurative elements or descriptive terms.
Amongst others, the Complainants have proved ownership of an Italian and a Community Trademark registration for the word mark A.S. ROMA and Italian trademark registrations for the figurative marks AS ROMA MUSIC and AS ROMA STORE, as mentioned above in section 4.
The Panel finds that the core of the mentioned trademarks of the Complainants is constituted by the denominative element AS ROMA, which is also entirely reproduced in the disputed domain name with the mere addition of the dictionary term "radio" and the generic Top-Level suffix ".com".
As found in many prior decisions rendered under the Policy, the addition of a dictionary term such as "radio", which is descriptive of a Complainants' service, and of the Top-Level Doman ".com" are insufficient to avoid a finding of confusing similarity under the first element of the UDRP. See paragraph 1.9 of the WIPO Overview 2.0.
In view of the above, the Panel finds that the Complainants have proven that the disputed domain name is confusingly similar to trademarks in which the Complainants have established rights according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
With respect to this requirement, the Complainants are required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainants have made a prima facie case and that the Respondent, by not submitting a Response, has failed to submit elements to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainants and uncontested by the Respondent, there is no relation between the Respondent and the Complainants, the Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent, whose name is Marco Violi, might be commonly known by the disputed domain name.
The Panel also finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use, since, according to the Panel's review of the screenshots on records, the Respondent has pointed the disputed domain name to a website publishing contents apt to mislead Internet users as to the source or affiliation of the web site by the Complainants, such as a logo "AS Roma Radio" similar to the Complainants' figurative marks, images and news apparently taken from the Complainants' web site. Moreover, the Respondent's publication of sponsored banners on the web site to which the disputed domain name resolves suggests that the Respondent registered and used the disputed domain name for commercial gain.
The Panel therefore finds that the Complainants have proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants' football team and trademark AS ROMA are widely known, as also recognized in the prior case A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, WIPO Case No. D2011-2054.
In view of the above, the Panel finds that the Respondent was or could have been aware of the Complainants' trademark at the time of the registration of the disputed domain name.
Moreover, the Panel infers from the Respondent's redirection of the disputed domain name to a website making explicit reference to the Complainants' trademarks and activities that the Respondent was very likely aware of the Complainants' trademarks, and that it registered the disputed domain name being aware of the potential for diverting to its web site Internet users looking for the web site of the Complainants and, specifically, to the web site of the Complainants' radio channel.
As mentioned above, according to the evidence on records, the disputed domain name has been pointed to a web site publishing a logo similar to the Complainants' mark, images and text related to the Complainants' activities along with sponsored links advertising third parties' commercial web sites. The Panel finds that such use of the disputed domain name, in addition to the absence of any accurate disclaimer, does not amount to a bona fide and/or legitimate use, and demonstrates that the Respondent intentionally attempted to attract Internet users for commercial gain to its web site by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of the site and products and services featured therein, according to paragraph 4(b)(iv) of the Policy.
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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, <asromaradio.com>, be transferred to the Complainants.
Date: December 28, 2015