Postecom spa v. smartphone sa
Claim Number: FA0204000110805
Complainant
is Postecom spa, Milano, ITALY
(“Complainant”) represented by Riccardo
Fasoli. Respondent is smartphone sa, Pully, SWITZERLAND
(“Respondent”).
The
domain name at issue is <poste.biz>,
registered with CORE.
On July 16, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James P. Buchele as the single Panelist.
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge, has no known conflict in serving
as Panelist in this proceeding.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 24, 2002; the Forum
received a hard copy of the Complaint on May 2, 2002.
On May
20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 10,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer of the domain name from Respondent to
Complainant.
A. Complainant
1. Poste Italiane Group is the Italian Postal
authority. Everybody in Italy commonly refers to “Poste Italiane” as “Poste”.
2. Postecom S.p.A. is a subsidiary of Poste Italiane S.p.A. and
provides web services including registration, web development and hosting.
3. Postecom S.p.A. includes the world POSTE in the name of many
of its products and services:
·
PosteMail
·
PosteMail
Sicura
·
PosteMail
Certificata
·
PosteCert
4.
Extensive use of the work “Poste” makes it a
trademark of Postecom S.p.A. and therefore it should be allowed to obtain the
domain <poste.biz>.
5.
The <poste.biz>
domain name is identical to Complainant’s trade name POSTE.
6.
Respondent
has no rights or legitimate interests in the <poste.biz> domain
name.
7.
The brand
“swisspost” doesn’t include the word POSTE and therefore, Respondent registered
the <poste.biz> domain name in bad faith.
B. Respondent
Respondent
did not submit a Response in this proceeding.
Complainant, Postcom S.p.A. is a subsidiary of Poste
Italiane S.p.A. Complainant offers many services in Italy using the word
POSTE.
Respondent, Swisspost operates postal services in the Canton
Ticino, Switzerland. In this canton,
Italian is the predominant language.
Respondent registered the disputed domain name on March 27, 2002.
POSTE is a common term used in several languages having
numerous meanings. A Google search
reveals 1,880,00 sites using the term POSTE.
Paragraph 15(a) of the STOP Rules instructs this 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical to a trademark
or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the
domain name has been registered or is being used in bad faith.
Due to
the common authority of the ICANN policy governing both the Uniform Domain Name
Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will
exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the
STOP proceedings, a STOP Complaint may only be filed when the domain name in
dispute is identical to a trademark or service mark for which a Complainant has
registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed
domain name that is identical to a trademark or service mark in which a
Complainant asserts rights. The
existence of the “.biz” generic top-level domain (gTLD) in the disputed domain
name is not a factor for purposes of determining that a disputed domain name is
not identical to the mark in which the Complainant asserts rights.
Complainant
has failed to show proof of a registered trademark. Complainant asserts that “[e]verybody in Italy” refers to it as
POSTE” and that it has made extensive use of the word POSTE in connection with
its products and services but has not provided evidence to support this
claim.
STOP Policy ¶ 4(a)(i) does not require the
Complainant to have a registered trademark in order to bring a claim. Nonetheless, at a minimum, Complainant must
provide evidence of rights in a mark by way of continuous substantial use or
achievement of secondary meaning.
Complainant did not provide any evidence of rights in the POSTE mark,
therefore, it has not met the burden of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the Complainant's trademark
or service mark be registered by a
government authority or agency for such rights to exist); see also
Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its
use was continuous and ongoing, and secondary meaning was established); see
also Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
the said name [<keppelbank.com>] in connection with its banking business,
it has acquired rights under the common law).
Complainant faces another problem in addition to
the insufficiency of evidence submitted with its request to transfer <poste.biz>. It has not established
that POSTE is a distinctive mark. The Panel finds the word POSTE is a generic
term used in several languages with different meanings. Therefore, POSTE is
incapable of acting as a common law trademark without a showing of significant
secondary meaning. See SOCCERPLEX,
INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the
Complainant failed to show that it should be granted exclusive use of the
domain name <Soccerzone.com>, as it contains two generic terms and is not
exclusively associated with its business); Rollerblade, Inc v. CBNO,
D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if
established, will defeat a claim of trademark rights, even in a mark which is the
subject of an incontestable registration").
Other
cases supporting the Panel’s finding include, Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA
96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are
generic terms to which Complainant cannot maintain exclusive rights); Tough Traveler, Ltd. v. Kelty Pack, Inc.,
D2000-0783 (WIPO Sept. 28, 2000) (finding that the Complainant could not
establish a secondary meaning with the domain name, <kidcarrier.com>,
because of the generic nature of the terms); CRS Tech. Corp. v. Condenet,
Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is
not so associated with just one source that only that source could claim a
legitimate use of the mark in connection with a website”); PetWarehouse v.
Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that
"pet" and "warehouse" are generic terms and therefore not
subject to trademark protection; although it is possible for two generic terms
taken together to achieve trademark or service mark status by achieving a
sufficient level of secondary meaning in the relevant community, the burden is
on the party making a claim to show distinctiveness or secondary meaning); and
Car Toys, Inc. v. Informa Unlimited,
Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (Complainant submitted
insufficient evidence to establish either fame or strong secondary meaning in
the mark such that consumers are likely to associate <cartoys.net> with
the CAR TOYS mark).
Complainant
has failed to sufficiently establish that it has protectable rights in the word
POSTE. Accordingly, the Panel finds
that Complainant does not have sufficient rights in the POSTE mark pursuant to
STOP Policy ¶ 4(a)(i) to compel further analysis.
Because
Respondent did not submit a Response, there is insufficient evidence to
determine whether Respondent could establish rights or legitimate interests in
the <poste.biz> domain name pursuant to STOP Policy ¶ 4(a)(ii).
Having failed to establish a necessary element under the
STOP Policy, the Panel concludes that Complainant’s requested relief is DENIED.
Accordingly, it is Ordered that the Complaint be DISMISSED. There are no further challenges pending
against this domain name under the STOP Policy.
James P. Buchele, Panelist
Dated: July 22, 2002
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