WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Linoux
Case No. D2015-1980
1. The Parties
The Complainants are A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. of Rome, Italy (the “Complainant” collectively), represented by Studio Legale Tonucci & Partners, Italy.
The Respondent is Linoux of Gilan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <asroma.biz> (the “Domain Name”) is registered with Realtime Register B.V. (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 November 4, 2015, 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 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2015.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 10, 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 Complainant A.S. Roma S.p.A. is the holding company of the AS Roma Group of companies including also the other Complainant, A.S.R. Media & Sponsorship. Insofar there is no useful purpose in distinguishing between the two Complainants, the Panel will refer to them in the singular as the “Complainant”.
The Complainant is the owner of a large portfolio of various trademark registrations comprising AS ROMA or A.S. ROMA, including word marks, with registrations in several countries and territories worldwide, including Italy and the European Union, registered for various goods and services (the “Trademark”), since at least May 29, 1999.
The Domain Name was registered on September 29, 2013.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
As a result of the extensive use of the Trademark all over the world, the Trademark is internationally well known. The wording and logo “A.S. ROMA” serves as a unique and distinctive element, which element is determinative and well-known designation of source for the Complainant’s activities, products and services.
Internet users will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent, when in fact there is no such relationship.
The Respondent has no rights or legitimate interests with respect to the Domain Name and its registration is a typical case of abusive registration.
The Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating the Trademark, nor to make any use of the Trademark in order to distinguish its own business.
The Respondent has not been commonly known by the Domain Name, and the Respondent has not acquired any trademark or service mark rights in and to the Domain Name. In fact, the Complainant’s Trademark is so well-known that the only conclusion can be that the Respondent knew, or at least should have reasonably known, of the Complainant’s prior rights before registering the Domain Name.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, bad faith is clearly proven.
The Respondent is making a non-legitimate and unfair use of the Domain Name with intent for commercial gain and to misleadingly divert consumers.
Registering a domain name identical and confusingly similar to the marks of famous entities constitutes bad faith per se. The Domain Name is so obviously connected with the Complainant’s activities and services that its registration and use by anybody other than the Complainant suggests opportunistic bad faith.
At the moment of the registration of the Domain Name, the Respondent could not have ignored, and on the contrary he kept in mind and was perfectly aware, that the Trademark was and is one the most famous trademarks in the sports sector.
Further, bad faith can also be found in the circumstance that the Respondent owns several domain name registrations which clearly appear to amount to cybersquatting. Amongst these registrations, the domain names <asromafc.com> and <fifaday.com> show the particular focus of the Respondent on domain names linked to the soccer sector, like the Domain Name.
Consequently, the Respondent abusively exploits the high notoriety of the Trademark. Such use, which at its heart relies on exploiting user confusion, does not constitute bona fide commercial use of the Domain Name. The Complainant has an established international reputation in the use of its Trademark. It is therefore highly unlikely that the Respondent just happened to inadvertently select the distinctive Trademark and incorporate it into the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and that the Domain Name is identical or confusingly similar to such trademark.
The Panel finds that the Complainant has established registered rights in the Trademark, AS ROMA, and that the Domain Name is identical to the Trademark.
For the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “A.S. Roma” is the Respondent’s name or that the Respondent is commonly known as “A.S. Roma”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services.
It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant, the apparent lack of so-called active use of the Domain Name and the absence of a reply, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the Domain Name, particularly in light of the Respondent’s interest and familiarity in the soccer sector.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the 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 Domain name, <asroma.biz>, be transferred to A.S. Roma S.p.A.
Willem J. H. Leppink
Date: December 22, 2015