The Complainant is Ternana Calcio S.p.A., Via dello Stadio, 1 05100 Terni, Italy, represented by Studio Legale Tonucci of Italy.

The Respondent is Domain Reseller IA Consulting Inc., 4F, No.6, Lane 79, Chienkwo S. Rd. Sec. 2 Taipei, Taipei, Chinese, Taipei 106 NA US.

The disputed domain name <ternana.com> ("the domain name") is registered with eNom.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2003. On February 24, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 24, 2003, eNom transmitted by email to the Center its verification response providing the contact details for the administrative, billing, and technical contacts for the domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

The Complaint as originally submitted named as Respondent "Domain Reseller Consulting Inc.." However the Whois Database printout provided as Annexure 1 to the Complaint made it clear that the registrant of the domain name is in fact "Domain Reseller IA Consulting, Inc. (emphasis added). That was confirmed by eNom when it provided the Registrar verification referred to above.

The Center formally notified the Complaint as submitted, stating a commencement date of February 26, 2003. The due date for Response was stated to be March 18, 2003. The Notification of Commencement of Administrative Proceeding was addressed to "Domain Reseller Consulting, Inc."

No Response was received. Accordingly, the Center sent a notice of Respondent default on March 20, 2003. Again, the Notice was addressed to "Domain Reseller Consulting, Inc."

The Center appointed Warwick Smith as the sole panelist in this matter on March 26, 2003. 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. The Panel finds that it was properly constituted.

Even though the Center used all correct contact details the Panel was initially concerned that the domain name registrant did not appear to have been correctly named as Respondent in the proceeding, and called for submissions from the parties on the effect of that deficiency. The Panel duly received and considered written submissions from the Complainant, and by Procedural Directions made on April 17, 2003, directed that the Complaint should be amended to show the correct name of the domain name registrant, and re-notified to the (correctly-named) registrant/Respondent. The Panel directed that the re-notification of the amended Complaint should state a new commencement date for the proceeding, and that the Respondent should have 20 days from that new commencement date within which to file a Response.

The Complainant filed its Amended Complaint dated April 17, 2003, on April 22, 2003, this time correctly naming the Respondent as "Domain Reseller IA Consulting Inc."

The Center then re-notified the (Amended) Complaint, stating an amended commencement date of April 23, 2003, and a last day for response of May 13, 2003.

There was no Response from the Respondent, and on May 14, 2003, the Center forwarded a Notification of Respondent Default and advised that the Administrative Panel would proceed to decide the case.

The language of this administrative proceeding is English, being the language of the registration agreement.

In the absence of any Response to the Complaint, the Panel is required under Rule 5(e) of the Rules to decide the dispute based upon the Complaint. The following facts (taken from the Complaint itself) are treated as sufficiently proved for the purposes of this proceeding.

The Complainant is a public limited company incorporated under Italian laws, with its principal place of business in the city of Terni, an industrial and commercial center approximately 100 kilometers north of Rome. The Complainant is the sole owner of the Italian football team named and publicly known as "Ternana."

Ternana is an old established football club in Italy, having been founded in 1925. For many years Ternana has competed in the Italian professional football leagues, including (for two seasons in the 1970s) in the famous "Serie A." Over the years, Ternana has had various successes, winning the Italian Third Division Championship on a number of occasions, and the Second Division Championship in 1971/1972. From 1998 to the present time, Ternana has been competing in the Second Division Championship ("Serie B"). As a Serie B competitor, Ternana is a member of the "Lega Calcio," the Italian Football League representing all Serie A and Serie B clubs in both football and financial matters.

In recent years, Ternana has competed in the Italian Football "Coppa Italia" tournament, in which it has played more high-profile Italian football clubs such as Napoli and Torino. Coppa Italia matches are broadcast on the Italian national television (or at least on the most important private TV channels), and Ternana has thus attracted a degree of mass-media attention. Ternana’s Serie B home matches are broadcast on satellite television in Italy, and there is also a "pay per view" option to watch Ternana’s matches on satellite television.

The Ternana football team is the sole professional football team representing the city of Terni, and the team has a strong following in both home and away games. Over the years, Ternana has attracted a number of prominent players and coaches.

The Complainant is the registered proprietor of a device mark, which has been registered both in Italy and in the European Union. The device mark consists of an oval, with the word "Ternana" printed prominently across the oval immediately above a stylized dragon figure (which is also within the oval). Immediately below the oval is written the year "1925" (the year the club was founded). For convenient reference this registered mark is referred to hereafter as "the device mark."

The Complainant applied for the Italian registration of the device mark on November 18, 1998, and on June 12, 2001, the device mark was duly registered in international classes 14, 16, 18, 25, and 28, for a wide range of products and services in those classes.

On February 5, 1999, the Complainant applied to register the device mark in the European Union, and registration was granted on February 11, 2002, in the same international classes and for the same range of products and services.

The Complainant has extensively used the device mark to promote and market a number of products, including various gadgets for supporters and sports equipment, and on Ternana official vests and tickets to the Ternana stadium. The Complainant has spent significant time and financial resources in marketing the team and the related products and services, and the name "Ternana" has become generally known and referred to by journalists and people interested in Italian football. The Complainant says that its 5 straight years in the Italian Serie B, supported by a marketing and promotional campaign, have allowed the Ternana team to gain significant mass-media exposure (particularly television), and to attract the attention of many supporters.

Although the word "Ternana" is a female adjective meaning "citizen of Terni" in the Italian language, the Complainant says that customers and sport fans exclusively associate the word "Ternana" with the Complainant’s football team, so that "Ternana" has become synonymous with the football team. In that regard the Complainant produced the printed results of a Google Internet search on the word "Ternana," which showed that 45 of the first 50 "hits" related to the Ternana football team (the others involved the use of "Ternana" in a descriptive way, as an Italian adjective). The Complainant says that "Ternana" has acquired a secondary meaning, such that the Complainant enjoys common law trademark rights in the word mark TERNANA (as a mark distinctive of its football team).

According to the Whois database extract produced by the Complainant, the Respondent operates from an address in Taipei, Chinese Taipei. The Whois database information lists the technical contact for the domain name as Li Yen Chun, having the same address as the domain name registrant.

There is very little evidence about the Respondent’s business activities, other than what may be inferred from its name and from the website to which the domain name resolves. However, on the evidence produced by the Complainant, there does not appear to be any business or other connection between the Respondent or its business and the word "Ternana."

The Complainant says that Li Yen Chun has been previously involved as Respondent in at least four cases decided under the Policy, and in each of those cases has been ordered to transfer the domain name in issue to the Complainant. The Complainant alleges that Li Yen Chun must be so closely associated with the Respondent that he could be the same person or entity, and that Li Yen Chun’s conduct in the cases in which he was named Respondent should be taken into account in the determination of this Complaint. As the Complainant puts it, Mr. Li Yen Chun and Domain Reseller IA Consulting Inc. should be "jointly considered and referred to as the Respondent" in this proceeding.

The domain name was registered on August 31, 2001. It resolves to a portal website which is linked to numerous other sites. This portal website (hereinafter called "the Respondent’s website") prominently displays the words: "For Sale Contact Us" on the home page.

The Complainant first learned that the Respondent had registered the domain name, when the Complainant itself attempted to register the domain name (with a view to launching a new website at <ternana.com>) early in 2003.

An extract from the Respondent’s website downloaded on January 28, 2003, shows that the site provides links to other websites which are grouped together under topic headings (e.g. "Finance," "Health," "Real Estate"), and sub-topics (e.g. under "Finance," "Credit Cards," "Credit Report," and "Loans"). The Respondent’s website also offers a selection of links to other sites referred to as "sponsored sites" – e.g. "Select From Our Sponsored Cars Sites…" The website visitor can then click on the appropriate name to obtain the hyperlink to the "sponsored car site" which has been selected. The website visitor can also select from a range of "Sponsored Domain Name Sites," and "Sponsored Web Hosting Sites."

To illustrate how the Respondent’s website works, the Complainant has produced an extract downloaded from the Respondent’s website on January 31, 2003. It was in the form of a pop-up window displaying a list of links relating to Valentine’s Day (e.g. suggesting a range of items as Valentine’s Day gifts). One of those items was "Flowers," and the website visitor who clicked on "Flowers" was taken to the statement "Select From Our Sponsored Flowers Sites," and provided with a list of on-line florists.

When a user tried to leave the Respondent’s website, a pop-up window asked the user whether he or she desired to set up "www.searchwords.com" as a starting page for his or her browser. The web page to which <searchwords.com> resolved, was in fact the same as one of the pages within the Respondent’s website.

There is at least one other domain name which appears to resolve to the same portal website. Keying in "www.hoopla.com" takes the Internet user to the same portal website, with the exception that the site when visited is identified as being located at <hoopla.com>. The Complainant has produced a Whois printout showing registration details for <hoopla.com>. While the registrant of this domain is not the Respondent, the Billing Contact for <hoopla.com> (WebSearch Inc.) has the same email address as the Respondent.

The Complainant’s contentions are:

1. The past activities of Mr. Li Yen Chun, particularly his involvement as unsuccessful Respondent in a number of cases decided under the Policy, should be considered to be activities of the Respondent for the purposes of this proceeding.

2. The Complainant has rights in the device mark in respect of the products and services covered by the Italian and European Union registrations.

3. The Complainant also enjoys common law trademark or service mark rights in the word TERNANA, deriving from the Complainant’s long use of that word mark in association with its football team and related products and services. Although it is also an Italian adjective (used to refer to a citizen of Terni), TERNANA has thus acquired a secondary meaning as an identifier of the Complainant’s football team.

4. The domain name is identical to the Complainant’s exclusive sport name and mark TERNANA (in which the Complainant enjoys exclusive common law trademark rights). Alternatively, the domain name is confusingly similar to the device mark, which incorporates the word "Ternana" as its most distinctive component. (The comparison between trademarks and domain names must be limited to the verbal elements of both. "Ternana" is the only part to take into consideration in that exercise, as the Complainant has now renounced any use of the foundation year "1925." The name "Ternana" is in any event the strongest element of the device mark.)

5. The Respondent has no right or legitimate interest in the domain name, for the following reasons:

(i) The Complainant has never authorized or licensed the Respondent to use its trademarks or sport name in any way;

(ii) The Respondent’s name is not, and does not include, any part of the word "Ternana," and the Respondent’s name has no connection with that distinctive mark;

(iii) The Respondent does not enjoy any independent right originating from his own use or exploitation of the trademark – mere registration of a domain name does not confer any rights in respect of any incorporated mark;

(iv) Google searches undertaken by the Complainant disclose no connection between the Respondent and the word "Ternana";

(v) Appointed Panels in other cases decided under the Policy have held that the Respondent’s conduct in those cases (all involving Mr. Li Yen Chun) was neither legitimate nor in good faith;

(vi) The current use of the domain name has not been made in connection with any bona fide offering of goods or services – the domain name resolves only to a portal site displaying a number of links to other sites and sources (referred to as "our sponsored … sites"). This is a commercial use, and it does not constitute a fair or bona fide use, as the Respondent abusively exploits the Complainant’s trademark and goodwill in the sport name "Ternana";

(vii) The Respondent’s real activity is selling domain names, as suggested by the Respondent’s name itself. The portal site is merely a front activity, utilized in an attempt to justify unfair conduct;

(viii) The statement "For Sale Contact Us" attests the real intention of the Respondent, namely to sell the domain name. That intention has been recognized in prior Panel decisions involving Mr. Li Yen Chun, including WIPO cases numbers D2002-0324 (<fortum.net>, and D2001-1499 (<enamix.com>).

6. The domain name was registered and has been used in bad faith, for the following reasons:

(i) "Ternana" has no meaning in English or in Chinese. The registration could not be mere coincidence, as the Complainant’s trademarks and sport name identify a well-known professional football club. The Respondent was aware, or should have been aware, of the Complainant’s football team and the Complainant’s trademarks, when he registered the domain name;

(ii) The Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct, having been Respondent in at least four previous cases decided under the Policy, in each of which the Complainant prevailed;

(iii) The domain name is publicly for sale, and the Respondent’s intention is to get the highest possible price for the domain name, and certainly a price which would exceed the Respondent’s out-of-pocket costs directly related to the domain name. The Respondent’s name itself constitutes evidence of the Respondent’s attempt and activity – "resale of any good or service necessarily implies a profit motive (i.e. one would expect that sale proceeds should exceed the amount of money spent acquiring the asset);

(iv) The domain name is so obviously connected with the football team "Ternana" and the correspondent trademarks, that its use by someone with no connection with the Complainant suggests "opportunistic bad faith" (citing a number of WIPO cases, including Parfums Christian Dior v. Javier Garcia Quintas and <Christiandior.net> – WIPO Case No.D2000-0226; and Veuve Cliquot Ponsardin, Maison Fondeé en 1772 v. The Polygenix Group Co – WIPO Case No.D2000-0163; LLS International v. Mark Freeman – WPO Case No. D2000-1080; and Altavista Company v. Grandtotal Finances Limited – WIPO Case No. D2000-0848);

(v) The Respondent is using the Complainant’s trademarks in a deliberate attempt to attract visitors to his portal site for commercial gain, by creating a likelihood of confusion in Internet users. The commercial gain is both the sale of the disputed domain name and the portal activity redirecting users searching for the Complainant’s website to other commercial sources. The result is a dilution of the trademarks by blurring. It is also likely that the Respondent could earn a commission on a "pay per click" basis for redirecting users to the portal site at "www.searchwords.com."

The Respondent has not filed any submissions.

The amendment and re-notification of the Complaint in this proceeding has delayed the release of this decision beyond the normal 14-day period prescribed by the Rules. That is an exceptional circumstance justifying an extension of time under Rule 15(b); the date for the Panel to forward its decision is accordingly extended to the date of this decision.

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark 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.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the Respondent has] registered or 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 Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent 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 Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a Respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the Respondent] of the dispute, use by [the Respondent] of, or demonstrable 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; or

(ii) Where [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) Where [the Respondent is] making a 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.

Paragraph 15(a) of the Rules requires the 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."

The Complainant has established that it has rights in the device mark, and the Panel is satisfied that the word "Ternana" forms the most prominent and substantial component of the device mark. Other aspects of the device mark (the oval shape, stylized dragon, and the year 1925) are not as distinctive, and the Panel accepts the Complainant’s submission that, in comparing a domain name with a trademark which contains a prominent word or words, it will often be appropriate (in applying the "confusingly similar" test) to first compare the domain name with the word component of the mark. In this case, the two are identical, and other aspects of the device mark are not sufficiently distinctive to prevent consumer confusion arising from the identity of the two words.

Taking those matters into account, the Panel finds that the domain name is confusingly similar to the device mark. While it is not strictly necessary in those circumstances for the Panel to determine whether or not the Complainant enjoys common law trademark rights in the word "Ternana," the Panel finds that, on the evidence produced in the proceeding, TERNANA has acquired the secondary meaning claimed by the Complainant (i.e. as an identifier of the professional football services provided by the Complainant’s football team). In the Panel’s view anyone who attempted to market a "Ternana" professional football team in Italy would prima facie be guilty of passing off and liable to the Complainant accordingly. That in the Panel’s view is sufficient to establish the claimed common law trademark rights (see for example WIPO Case No. D2001-0121 – Julian Barnes v. Old Barn Studios Limited, where the learned Panelist noted that the easiest way of defining a common law trademark, is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to a successful action in the tort of passing off).

Accordingly, the Panel finds that the Complainant has proved this part of its Complaint.

The Complainant has not licensed or authorized the Respondent to use the device mark or the word mark TERNANA. Also, the word "Ternana" has no obvious connection with the Respondent’s business activities, to the extent that they are known. The word "Ternana" is not a word in the Chinese language (presumably the language of the Respondent and Mr. Li Yen Chun), and nor is it a word in the English language (the language of the Respondent’s website).

There is no suggestion that the Respondent has been commonly known by the domain name, so paragraph 4(c)(ii) of the Policy cannot apply.

Has the Respondent used the domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy)?

As in the <enamix.com> and <fortum.net> cases cited by the Complainant (WIPO Cases Nos.D2001-1499 and D2002-0324 respectively), the domain name in this proceeding resolves to a portal website where no additional goods or services are offered specifically in conjunction with the domain name. Again in common with those cases, the domain name is clearly stated to be for sale, and there is at least one other domain (<hoopla.com>) which resolves to the Respondent’s website. The learned Panelist in the <enamix.com> case concluded (in the similar circumstances of that case) that such a combination of factors clearly showed that the Respondent had no intentions of using the portal page in a bona fide manner to establish consumer goodwill or trademark rights in the domain name at issue.

This Panelist is not sure that having an intention to establish consumer goodwill or trademark rights in the domain name at issue is necessary for the offering of goods or services to be bona fide. However, in the circumstances of this case, the Panel considers it is not necessary to decide that point.

In the Panel’s view, the Respondent probably registered or acquired the domain name, (the Panel notes that there was some updating of the Whois database record for the domain name on October 3, 2002, and it may be that that updating recorded a purchase of the domain name by the Respondent from some other party), for the purpose of resale. The Respondent’s name suggests that that is what its business is, and it is apparent from the various decided cases produced in evidence by the Complainant that the Respondent’s technical contact, Mr. Li Yen Chun, has been actively involved in the buying and selling of domain names for some time.

The Respondent appears to be a sophisticated Internet professional, and although based in Chinese Taipei, operates the Respondent’s website in the English language. In those circumstances, it seems highly improbable that the Respondent would have registered or acquired the domain name without knowing the meaning or derivation of the word "Ternana" (otherwise, how would the Respondent form a view of the domain name’s worth?)

While there is some use of the word "Ternana" in the Italian language which is not related to the Complainant’s football team, the Panel considers it unlikely that the Respondent was unaware of the Complainant and its mark at the time the Respondent registered or acquired the domain name. It appears from the material produced in evidence by the Complainant that, at least to English language speakers, the name "Ternana" would be almost exclusively associated with the Complainant’s football team, and that the owner of the service mark associated with that football team would be the most likely purchaser of the domain name from the Respondent.

Pending the intended resale of the domain name, the Panel finds that the domain name has been used by the Respondent to divert to the Respondent’s website, a number of consumers who would have been looking for websites associated with the Complainant’s football team. The references on the Respondent’s website to "sponsored" linked sites (at least the majority of which appear to be commercial sites), suggests some commercial arrangement between the Respondent and the operators of those linked commercial sites.

Misleadingly diverting internet traffic to a website by adopting a domain name which is confusingly similar to someone else’s trademark or service mark, is one of the examples of bad faith registration and use set out at paragraph 4(b) of the Policy, at least where that is done for commercial gain. That appears to have been the Respondent’s intention in this case, and in those circumstances the offering of goods and services through the Respondent’s website cannot be regarded as bona fide. Nor can that use of the domain name be a fair use, or a legitimate non-commercial use of the domain name, within the meaning of paragraph 4(c)(iii) of the Policy.

The Panel is entitled to draw appropriate inferences from the Respondent’s failure to file any Response (see Rule 14(b) of the Rules, and WIPO Cases Nos. D2000-1080 SSL International v. Mark Freeman; and D2000-0848 – Alta Vista Company v Grandtotal Finances Limited). In this case, the Complainant has clearly produced sufficient evidence to move the onus of proof to the Respondent to show some right or legitimate interest in the domain name. The Respondent has failed to file any Response, and the Panel takes that into account in inferring that the Respondent has no right or legitimate interest.

Substantially for the reasons set out in that part of this Decision dealing with the Respondent’s lack of any right or legitimate interest in respect of the domain name, the Panel finds that this part of the Complaint has also been made out.

The Panel has found that the Respondent registered or acquired the domain name primarily for the purpose of on-selling it. In the absence of any Response from the Respondent, the Panel infers that the Respondent is in the business of re-selling domain names, and accordingly expects to do so at a profit. The Panel therefore infers that the Respondent’s intention was to re-sell the domain name for a consideration which would be in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

The remaining question under paragraph 4(b)(i) of the Policy, is whether the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant. The Panel has found that the Respondent was aware of the Complainant and its marks when it registered or acquired the domain name, and as the owner of the relevant TERNANA marks (device and word) the Complainant was the most obvious potential purchaser of the domain name from the Respondent. In those circumstances, and in the absence of any Response from the Respondent, the Panel is prepared to infer that the Respondent’s intention was to sell the domain name to the Complainant.

Those findings are sufficient to establish the ground of bad faith registration and use set out in paragraph 4(b)(i) of the Policy. However, the Panel also finds that paragraph 4(b)(iv) of the Policy applies. Pending resale of the 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 trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the domain name has been registered and is being used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <ternana.com> be transferred to the Complainant.