WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Whois Privacy Corp, Domain Admin
Case No. D2015-1974
1. The Parties
Complainants are A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l., both of Rome, Italy, represented by Studio Legale Tonucci & Partners, Italy.
Respondent is Whois Privacy Corp, Domain Admin of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <asromastore.com> (the "Domain Name") is registered with TLD Registrar Solutions Ltd. (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 Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on November 13, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 8, 2015.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on December 16, 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
Complainant A.S. Roma S.p.A. ("ASRoma") is a company incorporated in Italy. Complainant ASRoma is a well-known Italian soccer club. Complainant A.S.R. Media & Sponsorship S.r.l. ("ASR Media") is a company controlled by Complainant ASRoma to which ASRoma has assigned certain media and sponsorship activities; it is also a de facto licensee of ASRoma's trademark registrations.
According to the evidence submitted by Complainants, Complainant ASRoma has multiple trademark registrations for and including ASROMA, in particular:
- Italian trademark A.S. ROMA with registration number 0000826298, a filing date of May 17, 2000 and a registration date of October 6, 2000; and
- Italian trademark AS ROMA STORE with registration number 0001097326, a filing date of September 24, 2004 and a registration date of February 25, 2008.
According to the evidence submitted by Complainants, Complainant ASR Media also has multiple trademark registrations for and including ASROMA, in particular:
- Community trademark A.S. ROMA with number 001685031, a filing date of June 1, 2000 and a registration date of August 1, 2001.
In addition, Complainants operate multiple websites containing the ASROMA mark, including "www.asromastore.it".
The Domain Name <asromastore.com> was registered on December 14, 2005.
5. Preliminary Procedural Issue: Consolidation of Complaints
This case concerns two affiliated and closely related Complainants who each have a number of identical and similar trademark registrations. Complainants request that the Complaint filed by the two Complainants against the same Respondent be consolidated. The preliminary issue is therefore whether Complainants are entitled to bring a consolidated Complaint against Respondent, or whether it is necessary for Complainants to bring individual Complaints.
According to the WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16, consolidation is in order in situations in which complainants have a common grievance against respondent, or respondent has engaged in a conduct that has effected complainants' individual rights in a similar fashion, and it would be equitable and procedurally efficient to permit the consolidation.
In view of the fact that Complainants each have rights to identical, similar and related trademarks, be it in different countries and jurisdictions, are closely affiliated and part of the same group controlled by Complainant ASRoma, and have a common grievance against Respondent, the Panel decides that consolidation is in order, also in view of the fact that it is equitable and procedurally efficient to allow consolidation. Hereinafter Complainants are referred to as "Complainant".
6. Parties' Contentions
Complainant submits that the Domain Name is identical to its AS ROMA STORE ("ASROMASTORE") trademark and confusingly similar to its A.S. ROMA ("ASROMA") trademark, in particular as it contains the well-known ASROMA trademark in its entirety. The addition of the generic word "store" is not sufficient to distinguish the Domain Name from the ASROMA trademark.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the Domain Name. According to Complainant, Respondent is using the Domain Name to direct Internet users to a pay-per-click parking website with links not only to Complainant but also to different categories which contain links to specific third party products and services. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. Complainant asserts that the Domain Name is so obviously connected with the activities and services of Complainant that its registration and use by anybody other than Complainant – and with no connection with the related sector – suggests opportunistic bad faith. According to Complainant, Respondent abusively exploits the high notoriety of Complainant's marks to unfairly promote services of Respondent and of third parties.
Respondent did not reply to Complainant's contentions.
7. 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 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 requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant 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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must first of all establish rights in a trademark or service mark and secondly that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Complainant has established that it is the owner of various trademark registrations for ASROMA and ASROMASTORE. The Domain Name <asromastore.com> incorporates the entirety of the ASROMA trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety. The addition of the common, descriptive and non-distinctive element "store" is insufficient to avoid a finding of confusing similarity. In addition, the Domain Name <asromastore.com> incorporates the entirety of the ASROMASTORE trademark.
The fact that the trademarks of Complainant have periods and spaces is irrelevant in finding that the Domain Name is identical or confusingly similar to the trademarks of Complainant.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's trademarks.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Name resolves to a pay-per-click parking website which contains links not only to Complainant but also to different categories which contain links to products and services of third parties. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known ASROMA trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the widely-known status of the ASROMA marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known that the Domain Name included Complainant's widely-known ASROMA marks.
The Panel notes that the Domain Name currently resolves to a pay-per-click website. The Panel further notes that the Domain Name incorporates Complainant's well-known trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has proven that the Domain Name has been 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 Domain Name <asromastore.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: December 29, 2015