A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. v. Simone Giacometti
Claim Number: FA1512001652203
Complainant is A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. (“Complainant”), represented by Avv. Alessandro del Ninno of Studio Legale Tonucci & Partners, Italy. Respondent is Simone Giacometti (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <asroma.us>, registered with 1&1 Internet AG.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2015; the Forum received payment on December 14, 2015.
On December 16, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <asroma.us> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ asroma.us. Also on December 16, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and found compliant on December 31, 2015.
On January 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(c)(viii).
“AS ROMA” (logo)
Italian Registration No. 0000782538 of December 4, 1996 in the Nice classes 3, 4, 5, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 33, 34, 41, 42.
“AS ROMA” (denominative)
Italian Registration No. 0000826298 of May, 17 2000 in the Nice classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10.
“AS ROMA MUSIC”
Italian Registration No. 0000857701 of July, 9 2001 in the Nice classes 9 and 41.
“AS ROMA STORE”
Italian Registration No. 0001097326 of February 25, 2008 in the Nice 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.
“AS ROMA OFFICIAL MERCHANDISE”
Italian Registration No. 0001095032 of May, 17, 2004 in the Nice classes 3, 4, 6, 9, 14, 16, 18, 21, 24, 25, 28 and 35.
“AS ROMA” (denominative)
CMT Registration No. 001685031 of June 1, 2000 in the Nice classes 3, 9, 14, 16, 18, 25, 28.
“AS ROMA” (logo)
CMT Registration No. 002689289 of May 7, 2002 in the Nice classes 24, 27 and 32.
“AS ROMA MUSIC” (figurative-denominative)
CMT Registration No. 002299154 of July, 17, 2001 in the Nice classes 9 and 41.
“AS ROMA CLUB PRIVILEGE” (denominative)
CMT Registration No. 008952749 of March 10, 2010 in the Nice classes 3, 16, 18, 25, 28, 35, 36, 39, 41.
“AS ROMA CLUB PRIVILEGE” (figurative-denominative)
CMT Registration No. 008981862 of March 25, 2010 in the Nice classes 3, 16, 18, 25, 28, 35, 36, 39, 41.
“AS ROMA ASR HALL OF FAME” (figurative-denominative)
CMT Registration No. 011199643 of February 19, 2012 in the Nice classes 14, 16, 17, 18, 25, 28, 41.
“AS ROMA CLUB AWAY” (figurative-denominative)
CMT Registration No. 0011665601 of March 18, 2013 in the Nice classes 3, 16, 18, 25, 28, 35, 36, 39, 41.
“AS ROMA ACADEMY ROMA 1927” (figurative-denominative)
CMT Registration No. 012390341 of December 2, 2013 in the Nice classes 18, 25, 28, 41.
“AS ROMA 1927 STUDIO” (figurative-denominative)
CMT Registration No. 013301684 of September 26, 2014 in the Nice classes 9, 16, 25, 35, 38, 41.
“AS ROMA RADIO” (figurative-denominative)
CMT Registration No. 013301833 of September 26, 2014 in the Nice classes 9, 16, 25, 35, 38, 41.
“AS ROMA TV” (figurative-denominative)
CMT Registration No. 013302849 of September 26, 2014 in the Nice classes 9, 16, 25, 35, 38,
41.
ASROMA MATCHDAY AUTHENTICATED ROMA 1927 (figurative-denominative) CMT Registration No. 014040951 of May 8, 2015 in the Nice class 25.
“AS ROMA” (logo)
Registration No. 1242388 of September 29, 2014 in the Nice classes 3, 6, 9, 14, 16, 18, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35,41, 42, 43 in European Union, China, Russia, Vietnam, Turkey, Japan.
“AS ROMA” (denominative)
Registration No. 746853 of October 11, 2000 in the Nice classes from 1 to 42 in 25 States of the world.
“AS ROMA MUSIC” (logo)
Registration No.776472 of December 12, 2001 in the Nice classes 9 and 41 in 25 States of the world.
“AS ROMA ACADEMY ROMA 1927” (figurative-denominative)
U.S. Registration No. 86149529 of December 20, 2013 in the IC 18, 25, 28, 41.
“AS ROMA” (figurative-denominative)
U.S. Registration No. 86515606 of January 27, 2015 in the IC 25.
“ROMA 1927” (logo)
U.S. Registration No. 86515617 of January 27, 2015 in the IC 25.
FACTUAL AND LEGAL GROUNDS
Preliminarily, with reference to principles governing the question of whether this Complaint filed by A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.l. as multiple Complainants may be brought against the Respondent and should be consolidated, the Complainants respectfully deem that the following criteria are met:
(i) the Complainants either have a specific common grievance against the Respondent;
(ii) the Respondent has engaged in common conduct that has affected the Complainants' individual rights in a similar fashion;
(iii) it would be equitable and procedurally efficient to permit the consolidation.
While specifically requiring for consolidation, the Complainants prove and ground the request according to the following:
(i) the Complainants are both exclusive holders of different trademark registrations (as supra fully detailed) entirely including the distinctive sign “AS ROMA”;
(ii) the abusive registration of the domain name asroma.us commonly and simultaneously breaches the exclusive rights on the related trademarks hold by the Complainants;
(iii) A.S. Roma is the holding of the AS Roma Group of companies including also A.S.R. Media & Sponsorship, controlled by the holding A.S. Roma S.p.A.;
(iv) A.S. Roma S.p.A. has formally assigned to A.S.R. Media & Sponsorship the divisions “Sponsorship” and “Media” of the Group (Annex 1); in particular – while holding the assets’ property thereof – A.S. Roma S.p.A. has assigned to A.S.R. Media & Sponsorship the management of licensing and sponsorship activities and the management of the so called “direct media rights”;
(v) A.S. Roma S.p.A. has in part delegated the AS Roma Group’s trademark portfolio management and commercial exploitation thereof to A.S.R. Media & Sponsorship;
(vi) A.S. Roma S.p.A. keeps on directly carrying on also activities related to the commercial exploitation of its trademarks and media rights.
As a consequence, the Complainants respectfully deem the above evidences (and the ownership of trademarks as above) as sufficient ground of the request for consolidation.
* * * * * *
This Complaint is based on the following factual and legal grounds: Rule 3(c)(ix).
Founded in 1927, and publicly traded since 2000, A.S. Roma S.p.A. (hereinafter “A.S. Roma”) 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 (see: http://www.asroma.it/en/team/history.html).
A.S. Roma, participating in the National Football League Serie A TIM, is one of the teams to have attained a greater number of sporting success, having won three National titles, nine Italian Cups, two Italian Super Cup, one League Super Cup (see: http://www.asroma.it/en/team/honours.html). Moreover, the last 15 years the A.S. Roma main team was ranked eight times among the top three in Serie A and, therefore, has participated eight times in the UEFA Champions League, the most important football competition in Europe.
Thanks to twenty-four consecutive useful results achieved in the 2009/2010 season, 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. Actually, as of December 31st, 2014, the team is ranked 40 (see: http://iffhs.de/index.php/2015/01/13/club-world-ranking-2014/).
Since 1999, A.S. Roma has been a joint stock company: along with the football clubs S.S. Lazio and F.C. Juventus, it is one of only three Italian clubs listed in the Italian Stock Exchange. According to The Football Money League published by consultants Deloitte, in the season 2005–06, Roma was the twelfth highest earning football club in the world with an estimated revenue of €127 million.
A.S.R. Media & Sponsorship is A.S. Roma controlled company to which A.S. Roma S.p.A. has formally assigned the divisions “Sponsorship” and “Media” of the A.S. Roma Group (being A.S. Roma S.p.A. the holding); A.S.R. Media & Sponsorship is in charge of the management of licensing and sponsorship activities and of 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 (es. Web sites, Facebook, Twitter, Instagram, Pinterest, Weibo, You Tube, Google +, Tumblr).
A.S.R. Media & Sponsorship, both as direct holder of trademark registrations and as de facto licensee of the A.S. Roma S.p.A.’s trademark registrations (which has in part delegated the AS Roma Group’s trademark portfolio management and commercial exploitation thereof to A.S.R. Media & Sponsorship), and A.S. Roma S.p.A. from an economic standpoint pursue the goal to maximize revenue arising from the exploitation of any of their distinctive signs and trademarks, as well as the exploitation of audiovisual rights, the right to broadcast through new technology and to maximize revenue from sponsorship advertising and promotional activities, and development merchandising activities. In this perspective – and due to its world-wide renowned trademark “AS ROMA” – the Complainants have been significantly present also in sport events other than the national and international soccer competitions.
The trademark “AS ROMA” – as primary IP and strategic asset – is further commercially employed by the Complainants (obviously beyond the distinctive use related to the soccer team and to the other sport activities of the club):
(i) within sponsorship agreements with the main national and international key players in the markets, including but not limited to: Nike (as “Technical and sport sponsor”), 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 (as “Top sponsor”), Frecciarossa Trenitalia S.p.A. – the National Railway Company; Toyota, the Japanese car company; Lexus, the U.S. car company; Manpower Group, the national labour recruiting company; Philippe Plein, the Swiss luxury goods company; (all as “Exclusive Partners”); Il Corriere dello Sport, the main Italian sport newspaper and Radio Italia (as “Media Partners”); Algida, Gatorade (the famous brand owned by Pepsi Co.), Fiuggi, ACEA, Mater Dei, the Italian Region Trentino Alto Adige, the company Sparco and the company Natalucci & Partners (as “Advertising sponsors”) (see: http://www.asroma.it/it/sponsor/); further, a sponsorship agreement on the brand “AS Roma” with the Turkish Airlines is actually under negotiation;
(ii) as trademark identifying the new stadium whose construction has been recently approved and which shall be exclusive property of A.S. Roma, consolidating the brand and the trademark worldwide (see: http://www.asroma.it/en/news/stadiodellaroma_press_release);
(iii) within the relevant ICT communication and commercial strategies, including the official presence of the club in the main social networks as Facebook, Twitter, Instagram, Pinterest, Weibo, You Tube, Google +, Tumblr;
(iv) as main asset within the ecommerce strategies of the club as carried out on electronic communication by means of the official merchandise distribution channel represented by the proprietary on-line web portal “AS ROMA STORE” (www.asromastore.it);
(v) as main asset within the ecommerce strategies of the club as carried out on mobile networks by means of official dedicated apps (see: http://www.asroma.it/en/games/index.html);
(vi) as main asset within the commercial merchandising strategies of the club as carried out by means of franchising agreements for “AS ROMA” stores (actually 21 stores) located in several point of the city of Rome;
(vii) as main asset within 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 (“Roma Channel”, based on an agreement with SKY Corp.) and drawn up specific agreements with third parties to manage the radio and TV broadcasting IP rights by means of any broadcasting technology;
(viii) as main asset within the trademark exploitation strategies carried out by the club within the national and international audiovisual sector, having the Complainants set up its own live and web Radio AS Roma Radio and drawn up specific agreements with third parties to manage the radio broadcasting IP rights by means of any broadcasting technology;
(ix) as main asset within 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”;
(x) as main asset within the trademark exploitation strategies carried out by the club in the financial and banking sector; for example in the past A.S. Roma S.p.A. issued in partnership with American Express a cobranded credit card;
(xi) as main asset for the sport and institutional communication, by means of the official web site www.asroma.it.
The Complainants currently legitimately hold several domain names, being since years enhanced the club’s image and activity in the Internet.
The Complainants extensively use “A.S. Roma” mark and trade name to distinguish, promote and market their activities and services through various channels, including Web sites, brochures, newspapers, radio, TV and electronic communication networks.
The Complainants have been widely marketing their activities and services, also in the U.S. (being the Proprietor a U.S. entity) spending huge amounts of money in advertising and other marketing activities.
Only recently the Complainants came to know Respondent registered the domain name asroma.us.
The Internet user who types the URL http://www.asroma.us accesses to an abusive web site where a not authorized use of distinctive signs of the Complainants is widely made.
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights. Rule 3(c)(ix)(1); Policy ¶4(a)(i).
The “A.S. Roma” registered trademark was registered in Italy, the European Community, WIPO, WIPO and the United States.
As a result of the extensive and use of the trademark “AS ROMA” in all the world (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 “AS ROMA” trademark’s family is internationally very well known (even irrespective of the national and international registrations). The wording and logo “A.S. Roma” serves as a unique and distinctive element, which element is a determinative and well-known designation of source for the Complainants’ activities, products and services.
The disputed domain name “asroma.us” incorporates the Complainants’ “AS ROMA” trademark in its entirety, without the addition or subtraction of any elements of the Complainants’ world-known “AS ROMA” trademark.
It is worth reminding that in the WIPO case asroma.com - A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator - Case No. D2011-2054 – Link: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-2054 – filed by the current Complainant A.S. Roma S.p.A. against the abusive registration of the domain name asroma.com (identical to that disputed within this complaint) the Honorable Panel reassigned the domain name pointing out the following:
“The disputed domain name has no independent meaning except as a reproduction of the Complainant’s trademark. The mark is fully incorporated into the disputed domain name. The disputed domain name consists of this trademark and the standard suffix “.com”. It is clearly at least confusingly similar to the Complainant’s trademark”.
As a result of the above, the Complainants respectfully submits that there is a substantial likelihood that Internet users will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainants and the Respondent, when in fact, there is no such relationship.
The Complainants therefore contend that the disputed domain name is identical to the Complainants’ “AS ROMA” trade mark.
B. The Respondent has no rights or legitimate interests in respect of the domain name. Rule 3(c)(ix)(2); Policy ¶4(a)(ii).
The Respondent has no right or legitimate interest with respect to the disputed domain name “asroma.us” and its registration is a typical case of abusive registration.
The Complainants have never licensed, authorized or otherwise permitted the Respondent to register a domain name incorporating “AS ROMA” marks, nor to make any use of such marks in order to distinguish its own business.
The Complainants are the exclusive owners/holders of the “AS ROMA” trademarks in relation to the above listed services. The Respondent is neither an agent nor a licensee of the Complainants and has no connection or affiliation with the Complainants. The Respondent therefore has no right to the use of the “AS ROMA” trademarks, or trademarks confusingly similar to this trademark, in the disputed domain name and has not received any license or consent, express or implied, to do so. The Complainants are unaware of any legitimate right the Respondent could have in the disputed domain name, which is confusingly identical to the Complainants’ well-known “AS ROMA” trademark. It is therefore submitted that the Respondent has no legitimate interest in the disputed domain name and has made no good faith or fair use of the domain name at all.
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. In fact the Complainants’ “AS ROMA” trademark is so well-known that the only conclusion can be that the Respondent knew, or at least should have reasonably known, of the Complainants’ prior rights before registering the disputed domain name.
All the described facts clearly show the lack of any legitimate interest and the opportunistic conduct of the Respondent whose sole and real goal is/was to retrieve an unfair advantage from the registration of the domain name.
There are absolutely no evidences of the Respondent’s use of, or demonstrable preparations to use, asroma.us in connection with a bona fide offering of goods or services: on the contrary, the bad faith is clearly proved, as hereinbelow.
The Respondent is making a non-legitimate and unfair use of the domain name asroma.us with intent for commercial gain misleadingly to divert consumers.
It is worth reminding that in the WIPO case asroma.com - A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator – Case No. D2011-2054 Link: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-2054 – filed by the current Complainant A.S. Roma S.p.A. against the abusive registration of the domain name asroma.com (identical to that disputed within this complaint) the Honorable Panel reassigned the domain name pointing out the following:
“The Respondent is not called “Asroma” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its AS ROMA trademark. The Respondent has never asserted any rights or legitimate interests in that name and has not done so in its Response. For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name”.
In light of the above, and the lack of any apparent explanation or justification for adopting a domain name incorporating the distinctive mark, “AS ROMA”, it is submitted that the disputed domain asroma.us could never have been put to legitimate use by the Respondent.
C. The domain name was registered and is/are being used in bad faith. Rule 3(c)(ix)(3); Policy ¶4(a)(iii).
It is not justifiable in any way the registration and use, or also the mere registration, of third parties’ distinctive signs, trademarks and/or trade names as a domain name (a fortiori if identical to famous trademarks of a world globally known companies like the Complainants), if not like an attempt to gain illicit benefit from them.
Registering a domain name identical and confusingly similar to the marks of a famous entity, like the Complainants, constitutes bad faith per se.
The disputed domain name “asroma.us” 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.
At the moment of the registration, the Respondent could not ignore, on the contrary he kept in mind and was perfectly aware, that “AS ROMA” was and is one of the most famous trademarks in the sport sector: accordingly, the actual knowledge of Complainants’ trademark and activities at the time of the registration of a disputed domain name must be considered in drawing an inference of bad faith. It is inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant.
It is worth reminding that in the WIPO case asroma.com - A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator – Case No. D2011-2054 – Link: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-2054 – filed by the current Complainant A.S. Roma S.p.A. against the abusive registration of the domain name asroma.com (identical to that disputed within this complaint) the Honorable Panel reassigned the domain name pointing out the following:
“The Complainant’s football team and trademark AS ROMA are extremely well-known. The Respondent has given no reason for registering the disputed domain name except that it could do so. The Response does not deal with the point that the Respondent must have known of the Complainant when registering the disputed domain name and, in the Panel’s view, must have done so because it knew of the potential for diverting to the Respondent’s website Internet searchers looking for the Complainant’s websites.
The website to which the disputed domain name resolves contains links to a variety of websites offering a number of different types of products including one to what appear to be the Complainant’s official website but which actually just resolve to further unrelated pages similar to the others.
In this Panel’s view, it is impossible, in the circumstances, at least without a Response to the Complaint on this point, to identify a reason why the Respondent registered the disputed domain name rather than any other available domain name, other than to attract business or Internet users to its website who were looking for a website connected to the Complainant’s trademark or business.
The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be one or more of the following: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain through click-through revenue or persuade the Complainant to buy the disputed domain name from the Respondent for an amount in excess of its out-of-pocket expenses. These each constitute evidence of registration and use in bad faith.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. As a result, it is unnecessary to deal with the Complainant’s other contentions”.
First of all, by searching on “Google” with the keywords “AS Roma”, 25.900.000,00 outputs occur, almost entirely related to the Complainants (being the first result the official web site of A.S. Roma S.p.A.).
Secondly, the Respondent’s web site under the URL www.asroma.us widely display the trademarks, logo and other distinctive sign property of the Complainants.
Consequently, the Respondent – on one hand – abusively exploits the high notoriety of the Complainants’ marks to unfairly promote its on line activity in the United States, and – on the other hand – he prevents at the same time the legitimate owners – id est the Complainants – to use the disputed domain name as primary asset driving the U.S. Internet users to a localized US web site.
Internet users typing “www.asroma.us” are deceived into thinking the Complainants as the real owners of it or otherwise that the Complainants approved or licensed such use by the Respondent with subsequent unfair advantage thereof.
Such use, which at its heart relies on exploiting user confusion, does not constitute bona fide commercial use of the disputed domain name: use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services.
The Complainants have an established international reputation in the use of their “AS ROMA” trademarks, especially if one considers that the one of the Complainants – A.S. Roma S.p.A. – has been using this trademark since 1927. It is therefore highly unlikely that the Respondent just happened to inadvertently select the Complainants’ distinctive world-known “AS ROMA” trademark and incorporate it into his selected domain name.
As discussed above, it is most likely that the Respondent was fully aware of the Complainants’ “AS ROMA” trademark rights and its reputation in the sport industry when registering the disputed domain name. Furthermore, the registration of the disputed domain name occurred on March 20th, 2010 so long after the registration and consolidated use in the markets of the trademark “AS ROMA” by the Complainants: the bad faith of the Respondent is then demonstrated by the facts that the trademark of the Complainants was registered long before the registration of the disputed domain name asroma.us and that the registration of the disputed domain name was effected after the success of the trademark AS ROMA had been established and it had become a market leader.
In conclusion the Complainants assert that the Respondent’s registration and use of the disputed domain name asroma.us cannot constitute a bona fide offering of goods and services and consequently also constitutes a bad faith registration and use of the disputed domain name for, inter alia, the following combination of reasons:
- No relationship exists between the Complainants and Respondent. The Respondent is not a licensee or affiliate of Complainants’ trademarked goods and/or services.
- The disputed domain name is not the only name which the Respondent can use to describe its business and the Respondent could have used any number of other domain names to describe its business.
- The Respondent attempts to attract for commercial gain Internet users to his web site by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Web site.
- The Respondent prevents the Complainants from reflecting their mark in the corresponding disputed domain name in lack of any right and of any legitimate use of the domain name so being verified the circumstance which constitutes evidence of registration and use in bad faith.
A pattern of the conduct discussed above constitutes sufficient and irrefutable evidence of use and registration in bad faith.
B. Respondent
[a.] The domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Rule 3(b)(ix)(1); UDRP ¶4(a)(i)
.usTLD domain names are intended for United States based entities and individuals (usTLD Nexus Requirements Policy (1), (2), and (3)). Respondent is based in Los Angeles, CA, and operates AS Roma Club Los Angeles, a community organization in Los Angeles, CA that was established in 2010, the same year the disputed domain was registered.
Associazione Sportiva Roma, better known as AS Roma, was founded in 1927 as an association to represent various sport organizations in Rome, Italy. Since then, various other organizations not related to Complainant have been established with the name “AS Roma” including AS Roma Ciclismo. Any of these organizations could claim rights in the United States for the mark “AS ROMA”.
Complainant claims to hold rights to the mark “AS ROMA” for the United States. Complainant shows that the mark “A.S. ROMA” is registered only in Italy.
Complainant shows that the mark “ROMA 1927 ROMA RADIO” is registered in Europe and not in United States. In addition, the Domain does not incorporate this mark in its entirely.
Complainant shows that the mark “A.S. ROMA” is registered with the WIPO using the Madrid System in 25 countries EXCEPT the United States.
Complainant shows that the mark “A.S. ROMA ACADEMY ROMA 1927” is registered in the United States with the United States Patent and Trademark Office (USPTO). The Domain does not incorporate this mark in its entirely. The website the domain points to does not mention anything about an “Academy”. In addition, this mark was filed with the USPTO in 2013, three (3) years after Respondent registered the Domain.
Complainant references a mark with United States Trademark and Patent Office (USPTO) having U.S. Serial Number 86515606. This mark was filed in 2015, five (5) years after Respondent registered the Domain. In addition, the mark is registered for International Class 25, which is for clothing, however, the website the Domain points to is not related to clothing. Finally, as of the date of this Complaint, the Trademark Status was not “Registered”, which means the USPTO has not yet issued a Certificate of Registration.
Complainant is an Italian organization. None of the evidence or documentation provided by Complainant shows that Complainant has a bona fide presence in the United States and meets Nexus Category 3 of the usTLD Nexus Requirements Policy.
In light of the above, there is substantial doubt regarding the Complainant rights to the mark “AS ROMA” in the United States.
[b] The Respondent should be considered as having rights or legitimate interests in respect of the domain name that is the subject of the complaint. Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent operates AS Roma Club Los Angeles, a community organization in Los Angeles, CA that was established in 2010.
There is a corresponding Facebook group with this name that was created by Respondent in 2010 around the same time of registration of Domain. The group has over 200 members.
The website the Domain points to clearly states it is for AS Roma Club Los Angeles and does not show any aspects that may provide commercial gain to Respondent.
Complainant references the WIPO Case No. D2011-2054 for asroma.com - A.S. Roma S.p.A. v. Whois Privacy Services Pty Ltd / Vertical Axis Inc. Respondent would like to note that one of the reasons that led the Panel to conclude that Respondent has no rights or legitimate interests in respect of the disputed domain name was because Respondent did not file a response for this claim and requested the Panel to issue an order transferring the disputed domain name to the Complainant without carrying out an analysis under the Policy.
For these reasons, it is clear that Respondent has been commonly known by the Domain, has rights and legitimate interests in the Domain and that it is using the Domain on a bona fide basis.
[c.] The domain name should not be considered as having been registered and being used in bad faith. Rule 3(b)(ix)(3); UDRP ¶4(a)(iii).
usTLD domain names are intended for United States based entities and individuals (usTLD Nexus Requirements Policy (1), (2), and (3)). Respondent is based in Los Angeles, CA, and operates AS Roma Club Los Angeles, a community organization in Los Angeles, CA that was established in 2010, the same year the disputed domain was registered.
The only U.S. trademarks that Complainant references are for “AS ROMA ACADEMY” and “AS ROMA”, which were filed in 2013 and 2015 respectively. However, the Domain was registered in 2010. AS Roma Club Los Angeles was formed in 2010. A Facebook group called AS Roma Club Los Angeles was also formed in 2010, which is now composed of over 200 members.
The website at the Domain points to clearly states it is for AS Roma Club Los Angeles.
The website at the Domain points to does not show any aspects that may provide commercial gain to Respondent.
The Respondent has never listed the domain for sale. Furthermore, it is clear that the Respondent is not a competitor.
For these reasons, it is clear that Respondent did not register or is using the Domain in bad faith.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are USDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: A.S. Roma S.p.A. and A.S.R. Media & Sponsorship S.r.L. Both parties have a specific common grievance against Respondent since both parties have trademark rights in “AS ROMA.” Respondent has engaged in common conduct which affects the individual rights of both parties in a similar fashion. It would be equitable and procedurally efficient to permit the consolidation.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
This Panel accepts the uncontested evidence in the Complaint and believes it is sufficient to establish a sufficient nexus between the Complainants. This Panel elects to treat them as a single entity in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has NOT been registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant would not be eligible to register a “.us” ccTLD domain because Complainant does not have a sufficient United States connection. Should Complainant be able to bring a Proceeding to effectively bypass this requirement? This Panel did not have to decide this issue because this Proceeding was resolved on other grounds.
Complainant owns a trademark registration for the AS ROMA mark in Italy. A copy of the Italian trademark registration, in the Italian language, was provided, with a registration date of October 6, 2000. The mark is used in connection with the promotion of the Italian football club known as “A.S. Roma.” The registration of a trademark with a governmental authority is sufficient to establish rights under the USDRP. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶4(a)(i)). It is not necessary for Complainant to prove it has superior rights over Respondent. Complainant need only prove it has rights to its mark somewhere in the world. Complainant need not provide it has rights where Respondent is geographically located for the purposes of Policy ¶4(a)(i). Complainant has adequately proven its rights under Policy ¶4(a)(i).
Complainant claims the <asroma.us> domain name is identical or confusingly similar to the AS ROMA trademark. The domain name contains Complainant’s entire mark and differs only by the ccTLD “.us.” The addition of a ccTLD (such as “.us”) does not adequately distinguish a domain name from a mark under Policy ¶4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the <asroma.us> domain name is identical to the AS ROMA trademark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Respondent claims it has rights or legitimate interests under Policy ¶4(c)(i) and (ii) because it is using the disputed domain name in connection with a “community organization” it runs under the name “AS Roma Club Los Angeles.” Respondent submitted a screenshot from the organization’s Facebook page. This is sufficient evidence to establish Respondent is commonly known as the disputed domain name, indicating rights under Policy ¶4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). Respondent is using the domain name in connection with a legitimate fan club, which indicates Respondent has rights under Policy ¶4(c)(i). See Bharatplanet.com Ltd v. Adnet Solutions, AF-0290 (eResolution Sept. 18, 2000) (finding that the respondent’s active use of the <bharathmail.com> domain name and pending expansion plans was evidence that the respondent had legitimate interests in the contested domain). It should be noted the Panel’s unilateral exploration of Respondent’s web site would not have shown Respondent was making an active use of the web site (due to a lack of content and serious html coding errors) but for Respondent’s Facebook page (which this this Panel finds just barely demonstrated Respondent is a bona fide non-commercial fan club). A link to Respondent’s Facebook page appears at the disputed domain name. Respondent has just barely met its burden of showing it is (i) an active and (ii) non-commercial fan club, see Stevland Morris a/k/a Stevie Wonder v. Unofficial Fan Club c/o Web Master, FA0504000453986 (6/22/2005).
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has rights or legitimate interests in the <asroma.us> domain name as a non-commercial fan club pursuant to Policy ¶4(a)(ii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). This Panel declines to find bad faith where the Respondent has proven its rights or legitimate interests. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶4(a)(iii).”).
Respondent did not register or use the <asroma.us> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the usTLD Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <asroma.us> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 11, 2016
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