Juventus Football Club victorious in domain name dispute

The Beijing First Intermediate People's Court has issued its decision in the dispute between Nanjing Yixun Technology Co Ltd and Juventus Football Club SpA over the domain name 'juventus.com.cn'. The court denied Yixun's motion to continue to use the disputed domain name.

Yixun registered the domain name 'juventus.com.cn' in June 2003 and set up a website called 'Chinese Juventus Fan Clubs', which contained numerous links to other commercial websites. Juventus is the owner of the international marks JUVENTUS and JUVENTUS (and design), which have been protected in China since 1996. Further, Juventus launched its official Chinese website, 'cn.juventus.com', in March 2005.

In March 2006 Juventus complained to the China International Economic and Trade Arbitration Commission, which decided that 'juventus.com.cn' should be transferred to Juventus. Yixun filed a motion in the Beijing First Intermediate People's Court to continue to use the domain name.

Under Article 8 of the China Internet Network Information Centre's Domain Name Dispute Resolution Policy, a complainant must demonstrate that the following criteria are met in order to succeed in a complaint:

• The disputed domain name is identical or confusingly similar to a name or mark in which the complainant has civil rights or interests;
  
  
• The holder of the disputed domain name has no right or legitimate interest in respect of the domain name or the major part of the domain name; and
  
  
• The holder of the disputed domain name has registered or has been using the domain name in bad faith.

With respect to the first requirement, it is sufficient to show that the disputed domain name is identical or similar to the complainant's trademark or company name. In this case, Juventus notarized pages from Yixun's website showing that Yixun had used the marks JUVENTUS and JUVENTUS (and design) on its website. Further, there were numerous commercial advertisements and links.

With respect to the second requirement, the court held that Yixun had no legitimate interest or civil rights in the domain name 'juventus.com.cn', as Juventus was using the word 'Juventus' as its trade name and had obtained trademark registrations for JUVENTUS and JUVENTUS (and design) in China.

With respect to the third requirement, in order to prove that a disputed domain name has been registered or is being used in bad faith, a complainant must demonstrate that:

• the purpose for registering or acquiring the domain name was to sell, rent or otherwise transfer the domain name registration to the owner of the name or mark or to a competitor, and to obtain unjustified benefits;
  
  
• the holder of the disputed domain name has registered several domain names in order to prevent the owners of the names or marks from reflecting their names or marks in the corresponding domain names;
  
  
• the holder of the disputed domain name has registered or acquired the domain name for the purpose of damaging the complainant's reputation, disrupting the complainant's normal business or creating confusion with the complainant's name or mark so as to mislead the public; or
  
  
• there are other circumstances which may prove bad faith.

In this case, the court held that although Yixun had the right to set up a website to improve communication between fans, an element of bad faith was involved. For example, the presence of links to commercial websites on Yixun's website demonstrated that Yixun intended to make a profit. Further, Yixun had registered the disputed domain name even though it was aware of the worldwide reputation of Juventus, thus demonstrating that it intended to:

• make use of the goodwill in the JUVENTUS mark;
  
  
• mislead internet visitors; and
  
  
• prevent Juventus from registering and using the disputed domain name.

Ai-Leen Lim, Colin Ng & Partners, Hong Kong