Boca Juniors is a popular sports association in Argentina, founded in 1905. The Buenos Aires club owns trademarks for BOCA JUNIORS going back to 1983.
The club operates from BocaJuniors.com.ar and the matching .com, BocaJuniors.com was registered in 1996.
In a UDRP filed by Club Atlético Boca Juniors Asociación Civil, Argentina, the domain was transferred to the Complainant.
As part of the discovery, which was filed in Spanish, the following information was provided:
The information stored by “web.archive.org” reveals that between 1998 and 2001 the web page to which the domain name in dispute was resolved did not contain a disclosure, warning or clarification stating that the Respondent was not related to the Claimant.
That changed in later years, and a disclaimer was added, but in recent years that disclaimer about BocaJuniorts.com not being associated with the club was removed:
” It has also been more than 11 years after the disclosure / warning contained in the website to which the domain name in dispute was no longer published. Users who have had contact with said disputed domain name and the Network Solutions website to which it has resolved, have not found in more than a decade any clarification that warns that the disputed domain name is not related to the Claimant.”
There was no response by the Respondent in this case. Kiyoshi Tsuru, sole panelist at the WIPO, ordered the domain BocaJuniors.com to be transferred to the Complainant. Full details on this decision follow in English; click here for the original in Spanish.
WIPO Arbitration and Mediation Center
DECISION OF THE ADMINISTRATIVE PANEL
Club Atletico Boca Juniors Civil Association c. Perfect Privacy, LLC / Admin, BocaJuniors
Case No. D2019-2634
1. The PartiesThe Claimant is Club Atlético Boca Juniors Civil Association, Argentina, represented by Berton Moreno + Ojam, Argentina.
The Respondent is Perfect Privacy, LLC, United States of America / Admin, BocaJuniors, United Kingdom.
2. The Domain Name and the RegistrarThe Complaint is aimed at the disputed domain name <bocajuniors.com> (the “disputed domain name”).
The disputed domain name Registrar is Network Solutions, LLC.
3. Procedural IterThe Lawsuit was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 29, 2019, the Center sent a request for registration verification to Network Solutions, LLC by email. relationship with the domain name in dispute. On October 30, 2019, the Registrar sent to the Center, by email, his response revealing the registrant’s data and the contact details of the disputed domain name which differ from the Respondent’s name and the contact data indicated in the Claim . The Center sent an electronic communication to the Claimant on October 30, 2019 providing the registrant and the contact details disclosed by the Registrar, and inviting the Claimant to make an amendment to the Claimant. Claimant filed an amended Claim on October 30, 2019.
The Center sent a communication to the parties on October 30, 2019 regarding the language of the procedure, while the Demand had been filed in Spanish while the language of the registration agreement was English. The Claimant submitted a request for the language of the proceedings to be Spanish on October 30, 2019. The Respondent did not submit any communication regarding the language of the proceeding.
The Center verified that the Demand together with the amended Demand complied with the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Uniform Name Dispute Resolution Policy Regulation domain (the “Regulation”), and the Additional Regulation of the Uniform Dispute Resolution Policy regarding domain names (the “Additional Regulation”).
In accordance with paragraphs 2 and 4 of the Regulations, the Center formally notified the Respondent to the Respondent, beginning the procedure on November 6, 2019. In accordance with paragraph 5 of the Regulations, the deadline for answering the Claim was set for the November 26, 2019. Respondent did not respond to the Lawsuit. Consequently, the Center notified the Respondent of his lack of personalization and lack of response to the Claim on November 29, 2019.
The Center appointed Kiyoshi Tsuru as a single member of the Administrative Group of Experts on December 5, 2019. The Expert considers that his appointment conforms to the rules of the procedure. The Expert has submitted the Declaration of Acceptance and of Impartiality and Independence, as requested by the Center in accordance with paragraph 7 of the Regulations.
In accordance with paragraph 10 (c) of the Policy Regulations, the date for sending the decision to the Center was extended to January 7, 2020.
4. Preliminary Issue: Language of the procedureThe Lawsuit has been filed in Spanish. However, the language of the Registration Agreement is English. According to paragraph 11.a) of the Regulations: “Unless the parties decide otherwise and subject to the provisions of the registration agreement, the language of the administrative procedure shall be the language of the registration agreement, subject to the power of the group of experts to take another resolution, taking into account the circumstances of the administrative procedure ”.
According to the communication exchanged between the Center and the parties, the Claimant requested that the language of the proceedings be Spanish, while the Respondent did not submit any statement in this regard. For its part, the Center sent all communications in both languages.
According to the information in the file of the present case, the web page to which the domain name in dispute was resolved, at the time displayed content in Spanish (“El Rincón Xeneize”). This, coupled with the BOCA JUNIORS brand, fully incorporated in the disputed domain name corresponds to a famous football team from Argentina, a Spanish-speaking country, allows to infer that the Respondent understands Spanish and can communicate in this language.
Taking into account that the Respondent has not opposed the request made by the Claimant in relation to the language of the procedure, that all communications from the Center were sent in both languages and in order to safeguard the objective of the Policy, which is the To provide an agile, efficient procedure with reasonable costs for the parties, based on the considerations set forth above, the Expert considers that allowing the language of the procedure to be Spanish is reasonable, and that this does not cause inequality between the parties. Therefore, the Expert determines that the language of the procedure is Spanish.
5. Fact BackgroundThe Claimant is Club Atlético Boca Juniors Civil Association, a sports club that aims to practice several sports disciplines, based in Buenos Aires, Argentina.
The Claimant presented evidence showing that it is the owner of the following trademark registrations in Argentina:
Brand
Registry number
Registration date
Class
MOUTH JUNIORS
2357471
March 30, 2010
3
MOUTH JUNIORS
2357472
March 30, 2010
18
MOUTH JUNIORS
2357473
March 30, 2010
2. 3
MOUTH JUNIORS
2321226
October 5, 2009
25
MOUTH JUNIORS
2378438
June 23, 2010
3. 4
MOUTH JUNIORS
2378439
June 23, 2010
29
MOUTH JUNIORS
2378440
June 23, 2010
32
MOUTH JUNIORS
2378441
June 23, 2010
33
MOUTH JUNIORS
2378442
June 23, 2010
24
MOUTH JUNIORS
2378443
June 23, 2010
30
Additionally, based on section 4.8 of the Synopsis of the opinions of the expert groups on certain issues related to the UDRP Policy, third edition (“Synopsis prepared by WIPO 3.0”), the Expert conducted an independent investigation on this subject , and found that the Claimant has been the holder of registrations on the BOCA JUNIORS brand since 1983. These registrations changed their numbers at the time of renewal, but in practice they are the same registrations. Consequently, this Expert considers that the Claimant’s brand portfolio is made up of an unbroken chain of trademark registrations that are in force, and that retain the age of their initial filing and registration dates:
Brand
Registration No.
Registration date
Expiration date
Class
MOUTH JUNIORS
1054218
January 5, 1983
January 5, 1993
26
MOUTH JUNIORS
1054217
January 5, 1983
January 5, 1993
25
MOUTH JUNIORS
1342881
April 19, 1989
April 19, 1999
3. 4
MOUTH JUNIORS
1342885
April 19, 1989
April 19, 1999
33
MOUTH JUNIORS
1342882
April 19, 1989
April 19, 1999
29
MOUTH JUNIORS
1342863
April 19, 1989
April 19, 1999
24
MOUTH JUNIORS
1342884
April 19, 1989
April 19, 1999
32
MOUTH JUNIORS
1342883
April 19, 1989
April 19, 1999
30
MOUTH JUNIORS
1403019
August 31, 1992
August 31, 2002
6
MOUTH JUNIORS
1405663
September 30, 1992
September 30, 2002
9
MOUTH JUNIORS
1458703
July 30, 1993
July 30, 2003
10
MOUTH JUNIORS
1458715
July 30, 1993
July 30, 2003
18
MOUTH JUNIORS
1458705
July 30, 1993
July 30, 2003
25
MOUTH JUNIORS
1458717
July 30, 1993
July 30, 2003
2. 3
MOUTH JUNIORS
1458714
July 30, 1993
July 30, 2003
9
MOUTH JUNIORS
1458704
July 30, 1993
July 30, 2003
24
MOUTH JUNIORS
1458713
July 30, 1993
July 30, 2003
3
MOUTH JUNIORS
1458716
July 30, 1993
July 30, 2003
twenty-one
MOUTH JUNIORS
1469642
September 30, 1993
September 30, 2003
41
MOUTH JUNIORS
1469641
September 30, 1993
September 30, 2003
38
MOUTH JUNIORS
1469640
September 30, 1993
September 30, 2003
35
MOUTH JUNIORS
1511567
March 31, 1994
March 31, 2004
14
MOUTH JUNIORS
1511568
March 31, 1994
March 31, 2004
28
MOUTH JUNIORS
1511569
March 31, 1994
March 31, 2004
31
MOUTH JUNIORS
1511570
March 31, 1994
March 31, 2004
36
MOUTH JUNIORS
1538292
September 30, 1994
September 30, 2004
6
MOUTH JUNIORS
1699662
November 2, 1998
November 2, 2008
25
MOUTH JUNIORS
1741773
June 25, 1999
June 25th, 2009
32
MOUTH JUNIORS
1741772
June 25, 1999
June 25th, 2009
29
MOUTH JUNIORS
1741774
June 25, 1999
June 25th, 2009
33
MOUTH JUNIORS
1741771
June 25, 1999
June 25th, 2009
3. 4
MOUTH JUNIORS
1742005
June 28, 1999
June 28, 2009
24
MOUTH JUNIORS
1742006
June 28, 1999
June 28, 2009
30
MOUTH JUNIORS
1751472
September 3, 1999
September 3, 2009
26
The Claimant owns the domain name <bocajuniors.com.ar> registered on December 6, 1996.
The domain name in dispute was registered by the Respondent on December 21, 1996.
6. Arguments of the Parties
A. ClaimantThe Claimant alleges the following:
That the Claimant has continuously used her corporate name and the BOCA JUNIORS and BOCA JUNIORS CABJ trademarks since its foundation, in 1905.
That the Claimant is one of the most important clubs in Argentina and the world and that she is the winner of several national and international sports titles.
That the Claimant excels in various disciplines of professional sport, especially in football, basketball and volleyball, and amateur level in athletics, swimming, boxing and martial arts, among others.
I. Identity or similarity to the point of causing confusionThat the domain name in dispute is identical to the BOCA JUNIORS brand over which the Claimant has rights, which causes confusion among the consumer public.
That the Claimant owns several BOCA JUNIORS and BOCA JUNIORS CABJ trademark registrations in Argentina, in different classes.
That the Claimant through its website “www.bocajuniors.com.ar” offers all kinds of news related to the Boca Juniors club.
That the Claimant is recognized not only in Argentina but also throughout the world and that she currently has millions of followers on social networks, including Facebook, Twitter, Instagram and YouTube.
II. Legitimate rights or interestsThat the Respondent has no legitimate rights or interests with respect to the domain name in dispute and that the only entity that can use the BOCA JUNIORS brand is the Claimant.
That the Claimant over the years, became one of the most prestigious clubs in Argentina, currently being internationally, including Canada, Spain, the United States of America, Mexico and Paraguay.
That the Claimant was the first club in Argentina to which the courts of that country have recognized the viability for the registration of a trademark composed of a combination of colors applied to sportswear.
That the Claimant is the only Argentine club to which two documentaries have been dedicated on the Netflix audiovisual content platform.
III. Registration and use of bad faithThat the Defendant’s bad faith is evident, since the disputed domain name is composed entirely of the BOCA JUNIORS trademark, property of the Claimant.
That the Respondent has registered the disputed domain name in order to take advantage of the BOCA JUNIORS brand prestige and disrupt the Claimant’s business activity.
That the Respondent’s conduct constitutes an act of cyber-occupation ( cybersquatting ), since it is the registration of a disputed domain name in an abusive, deliberate and bad faith manner, infringing the rights acquired by the Claimant.
That the Claimant is the one who must have ownership of the disputed domain name and that it should not be prevented from developing its activities through a website with the extension “.com”.
B. RespondentThe Respondent did not answer the Claimant’s allegations.
7. Debate and conclusionsIn accordance with paragraph 4 (a) of the Policy, the Claimant must prove that the following three elements concur, in order to obtain the transfer or cancellation of the disputed domain name:
(i) that the disputed domain name is identical, or confusingly similar, to a brand of products or services over which the applicant has rights;
(ii) that the Respondent has no legitimate rights or interests with respect to the domain name in dispute;
(iii) that the domain name in dispute has been registered and is being used in bad faith.
The Respondent did not answer the Complaint, so this Expert is in a position to take as true those claims of the Claimant that he considers reasonable (see Boris Johnson v. Belize Domain WhoIs Service Lt , WIPO Case No. D2010-1954 ).
A. Confused identity or similarityThe Claimant owns several BOCA JUNIORS trademark registrations in Argentina, in various classes.
The disputed domain name is identical to the famous BOCA JUNIORS brand, since it reproduces it in its entirety.
In addition, the inclusion of the top-level domain (“gTLD”) (“.com”) is due to a standard technical requirement in the structure of the domain name system and, therefore, is irrelevant when making a confusing identity or similarity analysis in this procedure (see Minerva SA v. El Yanko , WIPO Case No. D2018-0767 ; Ahmanson Land Company v. Vince Curtis , WIPO Case No. D2000-0859 ; and Monty and Pat Roberts, Inc. v. J. Bartell , WIPO Case No. D2000-0300 ).
Therefore, the first element of the Policy is updated.
B. Legitimate rights or interestsIn accordance with paragraph 4 (c) of the Policy, any of the following circumstances may serve to demonstrate that the Respondent has legitimate rights or interests over a disputed domain name:
(i) before receiving notice of the claim, the respondent has used, or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a good faith offer of products or services;
(ii) the respondent (as a private individual, company or other organization) is commonly known by the domain name in dispute, even if he has not acquired the corresponding trademark rights;
(iii) the defendant is making a legitimate non-commercial use or a fair use of the disputed domain name, without intent to confuse consumers or tarnish the brand of the products or services in question for profit.
The Claimant claims that the Respondent has no legitimate rights or interests with respect to the domain name in dispute and that the only entity that can use the BOCA JUNIORS brand is the Claimant. These claims have not been distorted by the Respondent.
The BOCA JUNIORS brand and the football club that it distinguishes is famous in Argentina and worldwide (and it was at the time of registration of the disputed domain name).
According to section 2.5.1 of the Synopsis prepared by WIPO 3.0 , domain names that are identical to a plaintiff’s brand carry a high risk of implicit affiliation. In this case, this risk is increased because the Claimant’s brand is famous.
There is no evidence in the case file indicating that the Respondent has been commonly known as “Boca Juniors”, or by the domain name in dispute.
The disputed domain name currently resolves to a Network Solutions Web site, where the legends are automatically deployed: ” This Site Is Under Construction and Coming Soon ” (This site is under construction and will be available soon) and ” This Domain Is Registered with Network Solutions ”as well as the legend“ This site is currently under construction Please check back at later time. ”Please check again. late), in several languages.
Based on section 4.8 of the Synopsis prepared by WIPO 3.0 , the Expert conducted a search on “web.archive.org”, finding that approximately from 1998 to 2008, the disputed domain name resolved to a web page that it displayed the Claimant’s brand, as well as photos of various soccer players, with the legend “Club Atlético Boca Juniors”, among other content. That Web page in turn redirected users to a Claimant’s fan website, with content related to the story and some news about the Boca Juniors football club.
The information stored by “web.archive.org” reveals that between 1998 and 2001 the web page to which the domain name in dispute was resolved did not contain a disclosure, warning or clarification stating that the Respondent was not related to the Claimant.
The records kept by “web.archive.org”, referring to samples taken from 2001, reveal that from that year until 2008, the website to which the domain name was being disputed began to display the following Disclosure / warning: “This is a strictly non-commercial site, without affiliation or any relationship with Club A. Boca Juniors, to which only our xeneize passion unites us. The contents of the website are the sole responsibility of the fans who make this page and do not represent the official position of the Club A. Boca Juniors institution, nor of its directors, coaching staff, or players. To go to the OFFICIAL WEBSITE of the Club, click here ”.
The samples obtained by “web.archive.org” in 2008 establish that as of that year the disputed domain name has resolved to the Network Solutions website indicated in previous paragraphs of this decision, which contains phrases that affirm that there are a site under construction and that this will be available soon. However, the Respondent has not presented evidence that demonstrates that, in accordance with paragraph 4 (c) (iii) of the Policy, it has effectively carried out verifiable preparations to use the disputed domain name in relation to an offer in good faith of products or services.
It has been more than 11 years since this phrase was published on the website to which the domain name in dispute was resolved and in addition, the domain name in dispute was no longer used to host said website. It is not reasonable to assume that the use between 1998 and 2008, as well as the mere affirmation published automatically on said website in 2008, may provide sufficient evidence to prove that the Respondent has made preparations to use the domain name in good dispute. faith (see CS Lewis (PTE.) Ltd. v. Richard Saville-Smith , WIPO Case No. D2008-0821 , The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC , WIPO Case No. D2009-0057 ).
According to decisions issued by experts appointed in accordance with the Policy, the mere fact of making a domain name parked and / or resolving a page that displays a “under construction” ad does not convert to the use of the domain name in legitimate non-commercial use or in fair use of the disputed domain name (see, mutatis mutandis, Jones Lang LaSalle IP, Inc. v. Oscar Dominguez, GSG Group , WIPO Case No. D2018-1093 ; Facebook, Inc. v. S. Demir Cilingir , WIPO Case No. D2018-2746 ).
It has also been more than 11 years after the disclosure / warning contained in the website to which the domain name in dispute was no longer published. Users who have had contact with said disputed domain name and the Network Solutions website to which it has resolved, have not found in more than a decade any clarification that warns that the disputed domain name is not related to the Claimant.
In relation to the disclosure / warning that was displayed between 2001 and 2008 on the website to which the disputed domain name was resolved, various experts who have issued decisions under the Policy have established that the fact that users Internet, once diverted to the website that resolves a domain name identical to the mark of a third party, are on that website with a disclosure about the absence of a relationship between plaintiff and defendant, does not constitute itself same an element that grants legitimate rights or interests to a defendant, or that remedies the risk that users may be confused while the confusion would derive in itself from the very nature or composition of the disputed domain name. Consequently, as indicated in section 2.5.1 of the Synopsis prepared by WIPO 3.0 , the domain name in dispute carries a high risk of implicit affiliation.
In the light of the foregoing, the Expert is of the opinion that the Claimant has accredited prima facie that the Respondent has no legitimate rights or interests over the domain name in dispute.
In the absence of evidence to the contrary of the Respondent, the second element of the Policy is updated.
C. Registration and use of the bad faith domain nameParagraph 4 (b) of the Policy indicates some circumstances conducive to proving the registration and use in bad faith of a disputed domain name:
(i) circumstances that indicate that its primary objective in registering or acquiring the disputed domain name was to sell, rent or otherwise assign the registration of said disputed domain name to the applicant who owns the trademark of products or services or to a competitor of said claimant for a value greater than the direct documented costs directly related to said disputed domain name;
(ii) the disputed domain name has been registered in order to prevent the trademark holder of the products or services from reflecting the trademark in a particular domain name, provided the Respondent has incurred such conduct nature;
(iii) if the fundamental objective in registering the disputed domain name was to impede the commercial activity of a competitor; or
(iv) if, by using the disputed domain name, the Respondent has intentionally attempted to attract, for profit, Internet users to its website or another online site, creating confusion with the applicant’s trademark As for the origin, sponsorship, affiliation or promotion of your website or your online site or of a product or service on your website or online site.
Claimant claims that the domain name in dispute was registered and is being used in bad faith. This claim was not refuted by the Respondent.
When the domain name in dispute was registered, the previously registered trademark BOCA JUNIORS, as well as the Claimant and her football club were famous in Argentina and internationally (see Cable News Network, Inc. v. Alan Rickwood , WIPO Case No. DES2010 -0008 ; Siemens Aktiengesellschaft v. Jose Manuel Gomez , WIPO Case No. D2004-0407 ). As mentioned earlier in this decision, a domain name identical to the mark of a third party (in this case a famous brand) carries a high risk of implicit affiliation.
Because the term “Boca Juniors” does not correspond to a usual or dictionary word in the Spanish or English language, the disputed domain name is directly related to, and refers to the Claimant’s BOCA JUNIORS brand (see D&D Group Pty Ltd v. Carlos Paredes , WIPO Case No. D2018-2257 ; The Mentholatum Company v. Caroline Brown , WIPO Case No. D2019-0387 ).
It must be taken into account that the Claimant has been the owner of the domain name <bocajuniors.com.ar> since December 6, 1996, and that she has used it to resolve the official website of her football club.
Since 2008, the disputed domain name has been resolving a website in a parking scheme, which has no significant content, and that only displays an automatically generated message indicating that the site is under construction. Since that year the Respondent has not made any disclosure or warning available to Internet users that clarifies that it is not related to the Claimant or the BOCA JUNIORS football club. Previously, the disputed domain name was first used to display the Claimant’s brand, as well as photos of various soccer players with the legend “Club Atlético Boca Juniors”, and then displayed a disclosure / warning. Being a domain name identical to the Claimant’s brand, since its registration there has been a high risk of implicit affiliation and therefore a cause of confusion among Internet users that derives from the nature or composition of the name of Disputed domain.
The scheme under which the disputed domain name has resolved the aforementioned website in the aforementioned parking mode is comparable to a passive tenure scenario
(See Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 ; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 ; The Dow Chemical Company and EI du Pont de Nemours and Company v. Mario Rojas Serra , WIPO Case No. D2016-0595 ), according to the following circumstances (see section 3.3 of the Synopsis prepared by WIPO 3.0 ; see also Ferrari SpA v. Ms. Lee Joohee (or Joo-Hee) , WIPO Case No. D2003-0882 ):
The disputed domain name fully incorporates the famous BOCA JUNIORS brand, which distinguishes an internationally recognized football club, which entails the aforementioned implicit affiliation risk.
The distinctive nature of the BOCA JUNIORS brand and the fact that it does not correspond to a term commonly used in Spanish or English, means that the disputed domain name can only refer to the Claimant.
The parking of the disputed domain name on the website that it resolves, whose only content is the automated message that says the site is under construction, has taken place since 2008.
The Respondent has taken steps to hide his identity.
The Respondent registered the disputed domain name stating that the registrant is “Admin, BocaJuniors”.
The Respondent has not appeared in this proceeding, nor has he explained the reasons why the behaviors described in this decision have taken place.
In light of the above, it is not possible to conceive of a real or possible active use of the disputed domain name by the Respondent, which is not or would be illegitimate for the purposes of the Policy.
Therefore, the third element of the Policy is updated.
8. DecisionFor the reasons stated, in accordance with paragraphs 4.i) of the Policy and 15 of the Regulations, the Expert orders that the disputed domain name <bocajuniors.com> be transferred to the Claimant.
Kiyoshi Tsuru
Single Expert
Date: January 7, 2020
