Westmore · UDRP DecisionAsroma.net
The Panel ordered transfer of <asroma.net> to A.S. Roma S.p.A. It found the domain name identical to the Complainant’s registered AS ROMA trademark, found no evidence that the Respondent had rights or legitimate interests, and concluded that the Respondent registered and used the domain name in bad faith by attracting Internet users for commercial gain through confusion and links promoting third-party and competing products and services.
The timeline behind asroma.net
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This decision illustrates a straightforward exact-match trademark case in which the domain was used for commercial links, including links associated with competitors. The strongest bad-faith evidence was not merely the Respondent’s default, but the website conduct showing intentional diversion through the trademark. The Panel expressly cautioned that non-response alone does not establish bad faith and instead relied on the cumulative circumstances.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION A.S. Roma S.p.A., A.S.R. Media & Sponsorship S.r.l. v. Fahad Shaikh Case No. D2015-1970 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 Fahad Shaikh of Sharjah, United Arab Emirates. 2. The Domain Name and Registrar The disputed domain name <asroma.net> (the “Domain Name”) 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 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. On December 9, 2015, the Respondent sent an email to the Center asking “Who are you and what do you want?”. 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 for distinguishing between the two Complainants; the Panel will refer to them in singular as the “Complainant”. Complainant is the owner of a large portfolio of various trademark registrations 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 (“Trademark”) since at least May 29, 1999. The Domain Name was registered on June 6, 2005. 5. Parties’ Contentions A. Complainant 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 is a 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, the bad faith is clearly proved. The Respondent is making a non-legitimate and unfair use of the Domain Name with intent for commercial gain and to misleadingly divert consumers. 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, 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 name <livescoresoccer.org> shows the particular focus of the Respondent for domain names linked to the soccer sector, like the Domain Name. The Respondent’s website under the Domain Name offers to the Internet users third-parties’ products and services by means of sponsored listings in the specific sectors where the Complainant carries out its commercial activities based on the long established worldwide reputation by means of its Trademark. Consequently, the Respondent abusively exploits the high notoriety of the Trademark also to unfairly promote products and services offered by him and by third parties, including products and services offered by direct competitors of the Complainant in the same industrial sector. In addition, by browsing the various links, the link “AS Roma” in one of the internal pages fraudulently invites the Internet users to click in order to be redirected to the Complainant’s official website, but such a link – once clicked – simply shows on the right part of the web page a list of products and services by third parties, which are direct competitors of the Complainant. B. Respondent 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, if so, 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 non-commercial 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 as the Respondent is using the Domain Name for the sole purpose of misleading Internet users. 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 and the absence of a reply, the Panel finds that the Trademark and the Complainant’s activities are widely known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when he registered the Domain Name. This is emphasized by the fact that he uses the Domain Name to unfairly promote products and services offered by him and/or by third parties, including products and services offered by direct competitors of the Complainant in the same industrial sector. In addition, by browsing the various links, the link “AS Roma” in one of the internal pages fraudulently invites the Internet users to click in order to be redirected to the Complainant’s official website, but that link simply shows a list of products and services by third parties, which are direct competitors of the Complainant. This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e ., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. 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 of the Domain Name 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. 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 Domain Name <asroma.net>, be transferred to A.S. Roma S.p.A. Willem J. H. Leppink Sole Panelist Date: December 22, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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