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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telekom Austria AG v. Reginaldo Mercatello\
Case No. D2002-0235
1. The Parties
1.1 The Complainant is Telekom Austria AG, a corporation by shares incorporated in Vienna, Austria.
1.2 The Respondent is Mr. Reginaldo Mercatello, resident of Ardore, Italy.
2. The Domain Name and Registrar
2.1 The domain name subject matter of the Complaint is <telekomaustria.info>.
2.2 The Registrar of the disputed domain name is CORE Internet Council of Registrars ("the Registrar", respectively "CORE").
3. Procedural History
On March 11, 2002, the WIPO Arbitration and Mediation Center ("the Center") received the Complaint by e-mail; on March 13, 2002, the Center received the hard copy version.
On March 19, 2002, the Center sent a Request for Registrar Verification to the Registrar and on April 3, 2002, the Registrar responded, (i) confirming that said domain name <telekomaustria.info> is registered with the Registrar, (ii) confirming that the Respondent is the current registrant of the said domain name, (iii) providing details of the Administrative contact, Technical Contact and Zone Contact for said registration, (iv) confirming that the Uniform Domain Name Dispute Resolution Policy ("the Policy") is in effect in respect of said registration, (v) indicating that, as far as the Registrar is concerned, the said registration was active and (vi) indicating that the language of the registration agreement is English.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center reviewed the Complaint to ascertain whether it satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made to the Center by the Complainant.
On April 5, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. Said Notification was sent to the Respondent by courier (with attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the representative of the Complainant by e-mail (without attachments). Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar by e-mail (without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that an Administrative Proceeding in accordance with the Policy had commenced on April 5, 2002, and that the Respondent was required to submit a Response to the Center on or before April 25, 2002.
The Respondent submitted a Response by e-mail and by registered mail on April 24, 2002.
On April 26, 2002, the Center sent by email to the representatives of both the Respondent and the Complainant an "Acknowledgement of Receipt of Response", confirming that the Response has been received on April 26, 2002, and that the Center would proceed to appoint the Administrative Panel.
On May 3, 2002, Respondent filed by email an objection against the date indicated by the Center as being the date of receipt of Response, attaching a proof of mailing. A copy of this objection was sent by email to the representative of Complainant.
On May 3, 2002, Complainant submitted to the Center an additional statement with the regard to the Response filed by Respondent.
On May 8, 2002, after having received a Statement of Acceptance and Declaration of Impartiality in accordance with Paragraph 7 of the Rules, the Center proceeded to appoint Mr. Michael Bernasconi as Administrative Panel (Sole Panelist).
On May 9, 2002, the case file was transmitted by email and by courier to the Administrative Panel. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by May 23, 2002.
On May 21, 2002, the Respondent submitted an additional statement. On May 22, 2002, such additional statement together with some Annexes was forwarded by email from the WIPO Center to the Panel. Because of these additional statements, the Panel informed the WIPO Center that up to two additional weeks were required by the Panel to forward its decision.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules. In the view of this Administrative Panel, the Response has been timely filed. Further, this Administrative Panel is of the view that proper procedures were followed and the Administrative Panel was properly constituted. The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is the former Austrian incumbent telecommunications provider. Complainant’ Group is also active in other countries, for example in the Czech Republic. Complainant owns a trademark TELEKOM AUSTRIA that was registered in 1995. Further, "Telekom Austria" is also the corporate name of Complainant.
Respondent is an individual residing in Italy. He registered the domain name <telekomaustria.info> on October 2, 2001. Even though, according to the documentation filed by the parties, the status of the registration is "active", under the disputed domain name no active website can be found.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s corporate name as well as to a trademark filed by Complainant in 1995.
The Respondent has no rights or legitimate interests in the domain name; he has not established any rights in the trademark TELEKOM AUSTRIA nor is he making any legitimate use of the domain name nor he is offering services or goods by using said trademark or said domain name. The Respondent has not received any license nor any other right to use Complainant’s trademark.
As the Complainant’s name and trademark are well known in Europe, Respondent knew of them when he registered the domain name at stake.
Prior to filing its Complaint, Complainant contacted the Respondent twice and requested the transfer of the domain name with an offer to reimburse Respondent for the costs arising out of such a transfer. Respondent did not reply to Complainant letters.
Firstly, Respondent is objecting to the power of the Administrative Panel in this matter, claiming basically that he had not accepted, when registering the domain name, the applicability, either of the Policy or of the Rules.
Secondly, Respondent ask to be granted a guarantee, to be provided by ICANN, AFILIAS, CORE and TUONOME.IT s.r.l., for any and all damages that Respondent may suffer if the disputed domain name shall be transferred to Complainant.
Finally, Respondent rejects Complainant's argument that he does not have any legitimate rights in the domain name, basically arguing that he has made the registration of it in accordance with the registration procedure. Respondent denies any bad faith, claiming that it was not and it is not his intention to sell the domain name to Complainant. In addition, Respondent states that he is planning to use the domain name to provide information in relation with the Austrian telecom market, e.g., on prices, quality and kind of telecom services offered in Austria by Complainant and other telecom providers.
6. Discussion and Findings
6.1 The Reply of Complainant dated May 3, 2002, and the Statement of the Respondent dated May 21, 2002
Paragraph 15(a) of the Rules instructs the Administrative Panel to decide a complaint on the basis of the statements and documents submitted by the parties in accordance with the Policy, the Rules and any other rules and principles of the law that the Panel may consider to be applicable in the concrete case. Further, Paragraph 12 of the Rules states that in addition to the complaint and the response, a Panel may request, in its sole discretion, further statements or documents from either of the parties.
In the present case, after receipt of the Response, the representative of Complainant filed a written statement without having been asked to do so by the Panel. Similarly, after receipt of the Reply of the Complainant, the representative of Respondent filed a written statement without having been asked to do so by the Panel.
The Panel, after having reviewed the Complaint and the Response, does not consider additional statements from either of the parties to be necessary. Although the Panel did not request either of the additional statements filed by the Parties, in accordance with Paragraphs 10 and 12 of the Rules, the Panel is free to take into consideration the additional statement of Complainant dated May 3, 2002, and the additional statement of Respondent dated May 21, 2002. Both additional statements are, therefore, accepted by the Panel.
6.2 Exception of Jurisdiction
Respondent objections to the power of this Panel to review the present case and to take a decision in accordance with the Policy, the Rules and the Supplemental Rules are based on Respondent belief that he did not agree on the applicability of said rules and that he did not enter into any contractual arrangements with the Registrar, i.e. with CORE.
The arguments of Respondent are contradictory.
On one side, Respondent explicitly acknowledges and confirms to be as from the first day of registration, the Registrant of the domain name <telekomaustria.info>. Further, Respondent confirms himself that he, and no other private person or legal entity, has indeed registered the domain name by "following the provided procedures" (see Response, Page 9).
Against this background, Respondent acknowledges and confirms that all rights and obligations that are afforded to the Registrant of the domain name <telekomaustria.info> are of the Respondent himself. Indeed, Respondent acknowledges that the company TUONOME.IT s.r.l. was responsible for only operating the registration (see Response, Page 9). Indeed, according to the WHOIS documentation provided by both parties, said Italian company results to be the billing and technical organization only. Finally, the verification data provided by the Registrar confirm that said Italian company, TUONOME.IT s.r.l., is not named as Registrant. In addition, the documents provided by Respondent himself, as an attachment to his sub-reply dated May 21, 2002, confirm that the technical organization TUONOME.IT was acting in the name and on behalf of the Respondent. Indeed, one can read in the Registration Information that "The registration fee includes also the fees to be paid to the competent Registry" and that "Your credit card [i.e., the card of the registrant] will only be charged when we [i.e. TUONOME.IT] are completely sure that the Domain Name has been registered on your behalf."
Under these circumstances, and based on the information provided by Respondent and by the Registrar, the Panel has no reason to doubt that Respondent was and is the Registrant of the disputed domain name. The fact that Respondent entered into a second agreement with the company "TUONOME.IT" is, for this procedure, irrelevant. Respondent knew and acknowledged (see sub-reply dated May 21, 2002, page 2) that the CORE Registration Agreement was applicable to all Customers of CORE. Respondent has himself filed evidence that he, and not TUONOME.IT, was acting as Registrant.
Furthermore, Respondent himself acknowledged and confirmed having followed all the applicable registration procedures (see Response, Page 9). This means, and there is no reason not to believe in Respondent acknowledgement, that Respondent did register the domain name with the Registrar following the usual procedure. Whether Respondent did the concrete registration steps alone or through a representative, is irrelevant. Finally, on its side, the Registrar confirmed that all CORE registration agreements do refer to the Policy and the Rules.
For all these reasons, and based on the acknowledgments of the Respondent and on the information provided by the Registrar, the Panel has no reason to believe that Respondent did not enter into a registration agreement with the Registrar and/or that Respondent did not accept the applicability of the Policy and of the Rules. Accordingly, the Panel considers itself to have the authority to take a decision in relation with the disputed domain name, under the Policy, the Rules and the Supplemental Rules. The Panel recalls to Respondent the nature of this administrative proceeding and that in accordance with Paragraph 4(k) of the Policy this proceeding is not preventing the Respondent from submitting the dispute at any time to a court of competent jurisdiction for independent resolution.
6.3 The Guarantee Claim of Respondent
Respondent is asking the Panel to grant him a guarantee, to be provided by ICANN, AFILIAS, CORE and by TUONOME.IT s.r.l.
According to Paragraph 4(i) of the Policy, the remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of a domain name or the transfer of a domain name registration to the complainant. Accordingly, the remedies available to a respondent are limited to the acceptance or the rejection of a complainant’s requests.
Against this background, the Panel does not have any authority to decide on Respondent’s claim for a third party guarantee.
6.4 Transfer requirements
According to Paragraph 4(a) of the Policy, the Complainant must prove that:
(i) 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
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
(i) Identical or Confusing Similarity
It is undisputed that Complainant corporate name is "Telekom Austria" AG. Further, it is undisputed that Complainant is owner of a trademark TELEKOM AUSTRIA.
In the view of the Panel, the disputed domain name is identical to the Complainant’s trademark. Further, being that the domain name is also identical to the corporate name of Complainant, it is highly probable that the disputed domain name would be associated in the public’s mind with the Complainant and its trademark.
The Complainant has therefore succeeded in proving that a risk of confusion is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is established.
(ii) No Rights or Legitimate Interests
It is undisputed that Complainant has not authorized Respondent to use Complainant’ trademark nor to seek the registration of a domain name incorporating said trademark.
The Respondent allegedly is planning to provide information on the Austrian telecom market in a website under the disputed domain name.
Whether such a preparation to use the domain name is proven or not is, in any event, irrelevant. Would the Respondent offer indeed the services as described in the Response, the Panel considers that such an offer would not be a bona fide offering of goods or services as set out in Paragraph 4(c) of the Policy. As a matter of fact, the Respondent admitted to be aware of Complainant’s activities in the telecom market. By running a website under a domain name identical to Complainant’s trademark and corporate name for his own use, Respondent would abuse Complainant's reputation and good-will in its name and trademark to divert consumers to his website. That could not be considered as a good faith use of the domain name in connection with a bona fide offering of services nor could it be considered a legitimate non-commercial or fair use of the domain name without intent for commercial gain.
In these circumstances, the Panel concludes that Complainant has established that Respondent has no rights or legitimate interests in respect of the disputed domain name. The second requirement of Paragraph 4(a) of the Policy is therefore satisfied.
(iii) Bad Faith
The third element of Paragraph 4(a) of the Policy, i.e., the issue of a bad faith registration and use of the disputed domain name, is very often the most critical one. In the past, administrative panels have recognized that such bad faith occurred when through the registration of the disputed domain name a respondent had attempted to divert users to its website for commercial gain by creating and exploiting confusion between the disputed domain name and the other party's trademark.
In the present case Respondent admitted that he has chosen the domain name to provide services that, at least for a very substantial part, are in strict association with Complainant’s services. Nevertheless, Respondent denies that he registered the domain name with the intention to misleadingly attract users to his website.
Even though Respondent is not a competitor of Complainant, it appears to the Panel that it is clear that Respondent deliberately choose the disputed domain name so as to give to consumers the incorrect impression of association with the Complainant, thereby creating a likelihood of confusion with Complainant as to the source and endorsement of the information provided under the website of Respondent when the latter will be operated under the disputed domain name. By finding for instance information under the domain name on prices of services offered by Complainant and by other Austrian telecom providers, consumers would be in the position of believing they have found "official information" of Complainant. The same would apply, for instance, in relation to statements on important legal issues like unbundling that would appear in a website operated under the disputed domain name. Internet users would have reason to believe that Complainant is sponsor, source or author of such statements.
Given the intention acknowledged by the Respondent to use the domain name for such a website as described in the Response, the Panel finds bad faith in the registration of the domain name by the Respondent.
It could seem to be less clear whether the Complainant has proved that the Respondent is also using the domain name in bad faith, since no websites are yet operated under the domain name. However, Respondent explicitly admitted that he is actively blocking the domain name in view of the establishment of a website, such establishment being in process of preparation. As described above, the use of the disputed domain name for the allegedly contemplated website would represent without reasonable doubt an unfair use of a specific domain name to divert Internet users to the website and to mislead users in relation with the source of the information provided in the website.
Under these circumstances, and taking in consideration that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the domain name, the Panel considers that the Respondent holding of the domain name amounts to the Respondent acting in bad faith.
The third requirement of Paragraph 4.a of the Policy is therefore satisfied.
The Administrative Panel decides that the Complainant has proven each of the three requirements of Paragraph 4.a of the Policy. Accordingly, with specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel directs that the disputed domain name <telekomaustria.info> shall be transferred to Complainant.
Michael A.R. Bernasconi
Dated: June 5, 2002