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WIPO Domain Name Decision: D2000-1641
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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
Pronto Italia S.p.A. v. Carlo Dalla Bella
1. The Parties
The complainant is Omnitel
Pronto Italia S.p.A., an Italian company with business offices in via Caboto
15, I-20094, Corsico, Milano, Italy. The respondent is Carlo Dalla Bella, via
Colombara 24/5, Oriago Verona, Italy.
2. The Domain Name and
The contested domain name
is "omnitel2000.com", registered with Tucows.com Inc., 96 Mowat Avenue,
Toronto, ON, M6K 3M1, Canada.
3. Procedural History
On November 24, 2000, the
WIPO Arbitration Center received the complaint by e-mail. The hardcopy version
was received on November 29, 2000.
On December 22, WIPO requested
verification of the registrar, from NSI, the registrar specified in the complaint.
On January 1, 2001, WIPO
notified the complainant that the registrar specified was not correct.
On January 4, 2001, the
complainant notified WIPO that the respondent had changed the registrar.
On January 11, 2001, WIPO
requested verification of the new registrar, Tucows.com.
On January 12, 2001, Tucows
confirmed the registration.
On January 12, 2001, WIPO
verified the formal validity of the complaint (including payment of fees).
On January 15, 2001, WIPO
notified respondent of the complaint.
On February 8, 2001, WIPO
notified respondent that it was in default.
On March 6, 2001, WIPO
appointed the administrative panel and transmitted the file to the panel.
4. Factual Background
Complainant started its
business (mobile telephone services) in 1995.
It owns the trademarks
registered in Italy for OMNITEL and also numerous other marks including the
string "OMNITEL". These marks are well known in Italy.
Respondent registered the
contested domain name "omnitel2000.com" on November 20, 1999.
At the beginning of April
2000, the address pointed to an empty web page.
On April 14, 2000 complainant
wrote to respondent to request that the contested domain name be transferred
to it. Respondent did not reply to this letter.
At the beginning of May
2000, the address pointed to a web page containing information on a lottery.
Currently (March 8, 2001),
the address points to a web site that contains no information for display.
Complainant sent two reminders.
On July 19, 2000, respondent replied, stating that he had registered the domain
name on behalf of a United States Company (WW Advertising, Inc.) and stating:
"[the company I represent]
is available to solve amicably the controversy if [Omnitel] is willing to reimburse
the costs incurred to date for the registration and structuring of the forthcoming
portal OMNITEL2000, extending to a possible commercial collaboration, which
we invite, whose value would be the that given by [Omnitel] to the flexibility
shown by us under the circumstances.
… in case of lack of acceptance
we shall feel free to use the domain at our pleasure."
Searches conducted through
the Internet reveal that WWW Advertising Inc. is not a United States company,
but has an Italian address in Mirano, Venezia, close to respondent’s domicile.
On July 18, 2000, complainant
wrote again to respondent to request a clarification regarding "reimbursement
for the costs of structuring the forthcoming portal".
On August 1, 2000, respondent
replied, requesting Lit. 90 million (about US dollars 45,000), plus TVA.
Respondent wrote again
on September 19, 2000 stating that "further unjustified delays in deciding
the matter would be considered as a lack of interest in what requested and as
a consequence we will feel free to use the domain name as we wish".
5. Parties’ Contentions
Complainant contends that
the domain name "omnitel2000.com " is identical or confusingly similar
to its trademark OMNITEL; that the respondent has no legitimate rights or interests
in the contested domain name; and that the respondent registered and used the
contested domain name in bad faith.
The respondent has defaulted
and hence makes no contentions.
6. Discussion and Findings
The panel will first address
the procedural issues related to the fact that the respondent has defaulted
and then analyze the evidence to determine whether the complainant has proven,
in accordance with paragraph 4(a) of the ICANN Policy, that:
1. the domain name registered
by the respondent is identical or confusingly similar to a trademark or service
mark in which the complainant has rights; and,
2. the respondent has
no legitimate interests in respect of the domain name; and,
3. the domain name has
been registered and used in bad faith.
I. The procedural issue
related to the default of the respondent
Since the respondent has
defaulted, this panel must first determine what the procedural implications
are of default. Should the complainant automatically prevail, or should the
panel anyway examine the evidence and base its decision on its determination
of the relevant facts and laws?
While the ICANN Policy,
Rules and the Supplemental Rules that govern these proceedings do not explicitly
address this question; they do give some guidance. Notably, article 4(a) of
the ICANN Policy states:
"In the administrative
proceeding, the complainant must prove that each of these three elements
are present." [Emphasis added]
This panel therefore holds
that it cannot grant the complainant’s request automatically, but that it must
instead examine the evidence presented to determine whether or not the complainant
has proven its case as required by the ICANN Policy.
II Analysis of the
evidence in this case
Similarity between the
trademark and the domain name
The complainant has presented
evidence that it owns the rights to the trademark OMNITEL and it is obvious
that the contested domain name "omnitel2000.com" is confusingly similar
to the trademark.
Lack of rights or legitimate
interests in the contested domain name
The complainant has presented
evidence and argued convincingly that, given the national Italian reputation
of OMNITEL, and its products and services being widely known, it is hard to
understand how the respondent could have any rights or legitimate interests
in the contested domain name.
This panel holds that the
complainant has presented sufficient evidence to satisfy its burden of proof
with respect to the issue of whether the respondent has rights or legitimate
interests in the contested domain name.
Bad faith registration
and use of the contested domain name
Paragraph 4(b)(i) of the
ICANN Policy states that the following shall be considered evidence of bad faith
use and registration:
(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;
The letters of the respondent
(cited above in section 4. Factual Background), in which the respondent clearly
demands significant sums of money for the transfer of the contested domain name
are undoubtedly circumstances indicating that the respondent registered the
domain name primarily for the purpose of selling it to the complainant for consideration
in excess of out-of-pocket costs. Indeed, the complainant has provided ample
evidence to show that the respondent, a resident of Italy, could not possibly
have ignored the fact that the complainant owned the mark OMNITEL and its derivative
Hence, the panel concludes
that the respondent could not possibly have acted in ignorance or good faith
when he registered the contested domain name, because he must already have known
at that time that the mark OMNITEL belonged to the complainant.
This panel concludes that
the complainant has proven that the contested domain name is confusingly similar
to its trademark OMNITEL, that the respondent has no rights or legitimate interests
in the contested domain name, and that the respondent has registered and used
the contested domain name in bad faith.
The panel therefore orders
the contested domain name "omnitel2000.com" to be transferred to the
complainant, Omnitel Pronto Italia S.p.A.