WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION A.C. Milan S.p.A. v. Domains By Proxy, Inc. / Official Tickets Ltd Case No. D2009-0347 1. The Parties
The Complainant is A.C. Milan S.p.A., of Italy, represented by Studio Legale Cantamessa, Italy.
The Respondent is Domains By Proxy, Inc. / Official Tickets Ltd, of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy. com, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2009. On March 17, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 18, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 26, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2009.
The Center appointed Dr. Clive N. A. Trotman as the sole panelist in this matter on May 1, 2009. 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 facts about the Complainant are taken from the Complaint. A.C. Milan is an Italian football club well known internationally, with a history tracing back to 1899. The company owning the club is A.C. Milan S. p. A., of Milan.
The Complainant owns trademarks in the word “milan” including:
International trademark MILAN, registered March 23, 1993, No. 601921, classes 18, 25, 28;
International trademark MILAN, registered August 25, 1986, No. 505459, classes 38, 41;
International denominative-figurative trademark, registered October 14, 1987, No. 515 896, classes 3, 5, 6, 9, 14, 16, 18, 25, 28. 34, 35, 38, 39, 41, 42;
International denominative-figurative trademark, registered June 8, 1993, No. 601222, classes 25, 41;
International denominative-figurative trademark, registered May 7, 1999, No. 719718, classes 3, 6, 9, 12, 14, 16, 18, 24-26, 28, 30, 32, 41;
International denominative-figurative trademark, registered October 27, 2004, No. 839 055, class 35;
International denominative-figurative trademark, registered December 14, 2004, No. 858733, classes 25, 28, 41;
International denominative-figurative trademark, registered September 21, 2006, No. 912077, classes 25, 28, 41;
United States denominative-figurative trademark, filed October 18, 2001, registered August 12, 2003, No. 2749431, classes IC 9, 16, 35, 38, 41-42;
Italian trademark MILAN, filed February 10, 1993, registered March 23, 1993, No. 590752, renewed January 19, 2007, No. 1034193, classes 18, 25, 28;
Italian denominative-figurative trademark, filed July 7, 1989, registered May 27, 1992, No. 572122, renewed June 10, 2002, No. 869246, classes 29, 31;
European denominative-figurative trademark No. 2583565, registered May 16, 2003, classes 38, 41-42.
The Complainant also owns a number of domain names containing the expressions “acmilan” or “milan”.
No factual information is available about the Respondent except for the details it gave as registrant of the disputed domain name as shown in the Registrar's publicly-maintained WhoIs.
The disputed domain name was registered on October 24, 2007. 5. Parties' Contentions A. Complainant
The Complainant submits documentary evidence in support of its claim to ownership of the trademarks listed above.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights. The trademark is MILAN and the disputed domain name embodies the same, with the addition of the two words “official” and “tickets” that do not decrease confusing similarity. The extra words are relevant to that part of the Complainant's business concerned with selling tickets for football matches and they thereby increase confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent does not own any trademark or service mark registrations encompassing the word “milan”, is not commonly known by the word “milan” or by the disputed domain name, and has not been authorised in any way to use the Complainant's trademark. The Respondent's offering of goods or services under the disputed domain name is not bona fide because the Complainant's trademark is used to attract visitors, and the corresponding website displays the Complainant's logo and shield with pictures of its footballers. The website does not represent a non-commercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name has been registered and used in bad faith.
Visitors to the website of the disputed domain name are offered tickets for football matches in the terms, “Welcome to Official A.C. Milan Tickets. Book your official tickets online trough [sic] our secure system. All tickets booked are confirmed and guaranteed”. The website portrays the A.C. Milan shield and pictures of its players. The Respondent is not an authorised distributor of MILAN tickets.
The website also offers links to tickets for other things including English, Spanish and Italian football, and motor racing. Local telephone numbers are provided for Italy, Spain, Republic of Ireland, Germany, Netherlands and the United Kingdom of Great Britain and Northern Ireland. There are other advertisements including hotel reservation services, couriers and credit cards.
The Respondent appears to be engaged in a pattern of similar activity. The domain names , , , , and are all registered through Domains by Proxy, Inc., and the websites appear to be identical in style to the Respondent's website, except that each features the particular football club. The websites contain similar colours, fonts, images and logos to those of the corresponding football clubs and each provides the same local telephone numbers in France, Italy, Germany, Spain and the United Kingdom as on the website of the disputed domain name.
The Complainant contends in terms of bad faith registration and use under the Policy that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct. The Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 of a product.
In support of its arguments throughout its submissions the Complainant makes extensive references to two previous UDRP decisions in particular that it considers to have parallels to the present case: The Arsenal Football Club Public Limited Company v. Official Tickets Ltd,WIPO Case No. D2008-0842; and Chelsea Football Club Limited v. Official Tickets Ltd,WIPO Case No. D2008-1574. A number of other citations to previous UDRP decisions are also submitted.
The Complainant requests the transfer of the disputed domain name . B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
According to the ample documentary evidence submitted by the Complainant, it has rights in the registered trademark MILAN, both as a word standing alone and as a word incorporated alone or with other words in devices.
The disputed domain name is . The gTLD identifier “.com” may be disregarded in the context. The Complainant's trademark in its entirety features prominently in the remainder of the disputed domain name. The Panel finds confusing similarity between the Complainant's trademark and the disputed domain name.
It is well-established in UDRP disputes that the addition of ancillary words to a trademark does not usually detract from confusing similarity. The words “official” and “tickets” present in this instance may increase confusing similarity because the disputed domain name then exploits not only the trademark of the Complainant, but also refers to an activity related to the Complainant's business being the sale and purchase of official tickets. This is an activity or objective which many members of the public would be likely to associate strongly with the Complainant's trademark, and may well be their primary purpose in searching for the Complainant on the Internet.
The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has asserted that as the owner of the trademark MILAN in the relevant classes it has never had any business association with the Respondent and has never authorised it to use the trademark. Furthermore, in anticipation of any defense the Respondent may offer in the terms of paragraph 4(c) of the Policy or otherwise, the Complainant says that the use of the disputed domain name as a website for the sale of tickets cannot be legitimate because it trades on the Complainant's trademark. The use is not noncommercial, and to the best of the Complainant's belief which the Panel finds persuasive, the Respondent has never been commonly known by the disputed domain name or similar.
The Complainant having made out a prima facie case, it is for the Respondent to rebut that in the terms of paragraph 4(c) of the Policy or otherwise. The Respondent has not attempted to do so and the Panel can find no evidence that the Respondent could have any such defense.
The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line 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 your website or location.
The Complainant submits that the Respondent's actions are reflected in paragraphs 4(b)(ii), (iii) and (iv) above. Although elements of all three may be relevant, and since proof of only one is necessary, it is pertinent to proceed first under paragraph 4(b)(iv) of the Policy.
The Respondent's activity is overtly for commercial gain, namely the sale of tickets (which the Complainant implies may be over-priced). In order to sell tickets the Respondent must attract potential purchasers to its website. Given the motive of selling (legitimately or otherwise) tickets to see Milan play football, it would be difficult to conceive of a more attractive name for the website than “Official Milan Tickets”. The intention to attract, by the incorporation of this proclamation into the disputed domain name, is clear. Confusion is also clear. There can be little doubt that many people offered the website of the disputed domain name through a search engine would assume it to be authentic, and many upon visiting the website might initially continue to think so. In the Panel's finding there would be a strong likelihood of visitors to the Respondent's website being confused into thinking that it has the endorsement of the Complainant. The Panel finds bad faith registration and use proven in the terms of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
Turning to paragraph 4(b)(ii) of the Policy, it is not automatic that the registration of another's trademark as a domain name counts as an attempt to block the trademark owner from having the same registration. In the present case, as said in the preceding paragraph, a website with the domain name “Official Milan Tickets” is so obviously desirable to the Complainant that the Panel, on balance, is able to find one of its purposes as being a blocking registration. In order to succeed under paragraph 4(b)(ii) of the Policy the Complainant must also prove a pattern of similar activity on the part of the Respondent.
According to the evidence submitted, a number of websites exist or have existed that are parallel in style except for adaptations to a different football club. A number of domain names have been registered by Domains By Proxy, Inc / Official Tickets Ltd, all following exactly the same domain name pattern of . Apart from their adaptations to a particular club, all are essentially identical down to the same spelling mistake being found in the website of the present disputed domain name and those relating to, at least, Chelsea, Juventus, Tottenham, Fulham, Liverpool, West Ham United and Manchester. See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331 (finding for the latter five clubs). See also Chelsea Football Club Limited v. Official Tickets Ltd,WIPO Case No. D2008-1574. The Panel draws the conclusion, on balance, that the same guiding mind and hand is behind all of these and that a pattern of conduct is proven. The Panel finds bad faith registration and use proven additionally in the terms of paragraph 4(b)(ii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dr. Clive N. A. Trotman
Sole Panelist
Dated: May 15, 2009
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