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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juventus F.C. SpA v. Mythos Srl
Case No. D2001-0583
1. The Parties
Complainant is Juventus F.C. S.p.A. (hereinafter Juventus), a joint stock company incorporated in Italy, having registered offices in Corso Galileo Ferraris 32, Torino, Italy. The Complainant’s authorized representative in this administrative proceeding are Dott. Enrico Antonielli d’Oulx and Dott. Luca Peyron of the firm Buzzi, Notaro & Antonielli d’Oulx, Corso Fiume 6, 10133, Torino, Italy.
Respondent is Mythos Srl (hereinafter Mythos), Via Vittorio Veneto 25, Borgomanero, Italy.
2. The Domain Name and Registrar
The domain name at issue is <juvetv.com>. The registrar is Tucows.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a Complaint (hereinafter the Complaint) by email on April 23, 2001, and in hardcopy and exhibits on April 25, 2001. On April 27, 2001, the Center transmitted via email to Tucows.com, Inc., a request for registrar verification in connection with this case. On April 30, 2001, Tucows.com, Inc. transmitted via email to the Center, the Verification Response, confirming that the registrant is Mythos Srl and that the domain name registration is in "active" status.
The Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
The Center transmitted on May 1, 2001, to Mythos Srl the Notification of Complaint and Commencement of the Administrative Proceeding by post (with attachments), and email without enclosures.
On May 22, 2001, having received no Response from the Respondent, the Center issued to both the postal and email addresses a Notification of Respondent Default.
No reply by Respondent to the Notification of Respondent Default was received.
On June 6, 2001, in view of the Complainant’s designation of a single member panel the Center invited Mr. Luca Barbero to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Luca Barbero's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on the same date to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
Therefore, the Panel shall issue the Decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complaint is based on the trademark registration No. 615601 "JUVE & device" first filed on June 27, 1991, and renewed with application No. TO2001C476 on February 8, 2001, Italian trademark registration No. 734783 filed on October 21, 1997, "JUVE" (word mark), Italian trademark registration No. 744181 filed on January 31, 1996, "VIDEO JUVE".
The respondent registered the domain name <juvetv.com> on September 24, 1999.
5. Parties’ Contentions
Complainant underlines that Juventus is a well known football team established in 1897 in Torino, Italy, and is one of the most famous professional football teams in the world. The team won several major tournaments in Italy, in Europe and in the world and is the team that has won the most (25 times) in the Italian Premier League. On account of such great achievement, the team is no doubt absolutely well known among football fans all over the world. The team is known as JUVENTUS as well as JUVE, which is the common nick name always used by fans and supporters and by the general public - and in any case - in the football field.
The domain name <juvetv.com> includes the nickname JUVE - which is also the registered trademark of Juventus and is no doubt confusingly similar with VIDEO JUVE.
Mythos is not a licensee, agent, distributor of Juventus, nor is it authorized to use the Juventus marks, and (on information and belief) is not the owner of any registered trademark or common law right containing either the terms JUVE or JUVETV, or any permutations thereof, and it is not commonly known by the domain name. Further, on information and belief, the domain name is not, nor could it be contended to be, the nickname of Mythos, nor in any other way identifies a legitimates any interest of the Respondent.
Conversely, according to the Complainant, JUVETV could be clearly and strongly associated with Juventus. Juventus contends that the word JUVETV is invented and it is not a designation traders would legitimately choose unless seeking to create an impression of an association with the Complainant. It is also noted that, on the basis of the information provided by Mythos on the <juvetv.com> web site, a huge number of "netsurfers" contacted the web site <juvetv.com> and, taking into account the content of the said web site (a mere list of names), it could be affirmed that all these contacts are reached because the "netsurfers" tried to find a web site concerning Juventus TV programs or such. Summing up, according to the Complainant, Mythos has no rights on JUVETV, nor any apparent reason to handle the domain name <juvetv.com>. As to element (iii), the Complainant contends that evidence of bad faith registration and use is established by the following circumstances: first, the trademark JUVE is a well known trademark and it is inconceivable that the person or persons behind the Respondent was not aware of this fact. Second, by virtue of the wide spread use and reputation of the trademark JUVE, members of the public would believe that the entity owning the domain name <juvetv.com> was the Complainant or in some way associated with the Complainant. Conversely, JUVENTUS is clearly and strongly associated with Juventus and thus Juventus contends that the word JUVENTUS is invented and it is not a designation traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
Complainant states that any realistic use of the above domain name by unauthorized third parties results in a misrepresentation and a false and illegal association with the Complainant and its goodwill, resulting in passing off, breach of consumer protection legislation, and trademark infringement. Moreover, the web site is in Italian and thus is clearly intended to the Italian public or to people that are familiar with the Italian language. Therefore, the public that could reach the web site at <juvetv.com> are well aware of the prominence of Juventus trademark since JUVENTUS and JUVE are well known trademarks in Italy and among people that are familiar with the Italian language. It is finally noted that the web site shows a list of domain names owned by Mythos and most of them are identical or nearly identical to different trademarks that are well known by the Italian public such as <canale5.com>, <fonopoli.com> and others.
The Complainant contends that evidence of bad faith registration and use is established by the following circumstances: first, the trademark JUVENTUS is no doubt a well known trademark in Italy, and it is inconceivable that the person or persons behind the Respondent was not aware of this fact. Second, by virtue of the wide spread use and reputation of the trademark JUVENTUS, members of the public in Italy and abroad would believe that the entity owning the domain name <juvetv.com> was the Complainant or in some way associated with the Complainant.
According to the Complainant, particularly remarkable and a clear evidence is that Mythos has no intention to post a proper web site, most probably acting as a cybersquatter even though on said web site there is a statement which reads as follows (English translation): "These domain names are not for sale. On a later date I will decided whether to permit a link from theses domain names to an interested parties". The Complainant informs the panel that, "very recently, a new web site was posted, which refers to a Company called United Cargo Link that, apparently, operates in the shipping of goods. Of course, this activity has nothing to do with Juventus and thus the use of <juvetv.com> in this way is illegal. The web site is in Italian and, thus, it is clear that Mythos and Cargo Link are using the JUVE trademark to gain more netsurfers. In fact, there is no apparent reason to use JUVETV – a Juventus nickname and the word TV – for this web site and not, as an example CARGOLINKSRL or any other domain name clearly and strongly related to this company. This course of action is not acceptable and violates the Italian and International trademark law". The Complainant provided the Panel with printouts of the web site.
Complainant concludes that " Juventus, on information and belief, must conclude that the above domain name was registered and maintained with the only goal to recover a financial consideration from using the Juventus trademarks from the Complainant or to prevent Juventus to register and use <juvetv.com>. Juventus has to point out that the above domain name is of no lawful interest to anybody other than itself".
Respondent has not contested the allegations of the Complainant and is in default.
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 in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the trademark registration No. 615601 "JUVE & device" first filed on June 27, 1991, and renewed with application No. TO2001C476 on February 08, 2001, Italian trademark registration No. 734783 filed on October 21, 1997, "JUVE" (word mark), Italian trademark registration No. 744181 filed on October January 31, 1996, "VIDEO JUVE".
In view of the above, the Panel finds that the Complainant has proved that the domain name is similar to the trademarks of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that he has made preparations 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 the dispute;
(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
Panel finds the paragraph (ii) of the Policy applicable in the instant case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain. Respondent is to be considered as engaged in a pattern of such a conduct as it has registered, in addition to <juvetv.com>, a number of other domain name identical or confusingly similar to third parties trademarks, such as: <asticinzano.com>, <canalecinque.com>, <italiauno.com>, <retequattro.com> <radiouno.com>, <raidue.com>, <rai3.com>, <telemontecarlo.com> and others, which are advertised on the same web page to which <juvetv.com> presently points.
Panel finds the paragraph (iv) of the Policy also applicable in the present case since, as indicated by the Complainant, the domain name pointed to a page where the web site is posted, linking to a Company called United Cargo Link Italy Srl. It should be noted that at the time of the decision the link was not active any more, but from the annexes enclosed to the Complaint could be inferred the commercial activity advertised and performed via such a web site. Therefore, the site may have attracted Internet users seeking information about the famous Italian soccer team and was likely to create confusion as to the source, sponsorship, affiliation or endorsement by the Complainant.
In light of the foregoing, the Panel decides that a) the Domain Name registered by the Respondent is confusingly similar to the Complainant's trademarks, that b) the Respondent has no rights or legitimate interests in respect of the Domain Name and c) that the Domain Name has been registered and used in bad faith. Accordingly, the Panel requires that the registration of the domain name <juvetv.com > be transferred to the Complainant.
Dated: June 20, 2001