TELECOM ITALIA, S.p.A. v. greate echo ltd. c/o mi dominio
Claim Number: FA0909001283203
Complainant is TELECOM ITALIA S.p.A. (“Complainant”), represented by Anna
Maria Bardone, of Porta, Checcacci & Associati S.p.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www191.com>, registered with Enom, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <www191.com> domain name is confusingly similar to Complainant’s 191 mark.
2. Respondent does not have any rights or legitimate interests in the <www191.com> domain name.
3. Respondent registered and used the <www191.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TELECOM ITALIA,
S.p.A., submitted evidence that it has registered its 191 mark (Reg. No.
Respondent, greate echo ltd.
c/o mi dominio, registered the <www191.com> domain name on
Paragraph 15(a) of the 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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has submitted evidence of
its registration of the 191 mark with the Italian governmental trademark
authority (Reg. No. 983,191 issued
The Panel further finds that, under Policy ¶ 4(a)(i), registration of a trademark is not necessary to
establish that Complainant has rights in the mark provided Complainant can
demonstrate its common law rights through sufficient secondary meaning. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
Complainant has also submitted evidence that it has been continuously using the 191 mark in commerce since at least 1988. Complainant presents public polling data indicates that the sample surveyed recognized Complainant’s 191 mark and campaign 93% of the time in 2003. The Panel finds that Complainant has established secondary meaning in the 191 mark sufficient to establish common law rights in the mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
domain name contains Complainant’s 191 mark in its entirety preceded by the
letters “www” and followed by the generic top-level domain (gTLD) “.com.” It is well established that the addition of a
gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. If the Panel finds
that Complainant’s allegations establish such a prima facie case, the
burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain name pursuant to the guidelines in
Policy ¶ 4(c). Since no Response was
submitted in this case, the Panel may presume that Respondent has no rights or
legitimate interests in the disputed domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <www191.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the 191 mark, and the WHOIS information identifies Respondent as “greate echo ltd. c/o mi dominio.” Thus, Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain name to display
links to third-party sites that are direct competitors with Complainant. Using a domain name that is confusingly
similar to another’s mark to divert Internet users to directly competing
websites is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Additionally, typosquatting occurs when a respondent
purposefully includes typographical errors in the domain name to divert
Internet users who commit the typographical error the domain name takes
advantage of. The <www191.com> domain name takes
advantage of Internet users who omit the period after the “www” prefix at the
beginning of domain name. The Panel
finds that Respondent is engaged in typosquatting by adding “www” to the
beginning of Complainant’s mark. This is
further evidence that Respondent does not have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Black & Decker
Corp. v. Khan, FA 137223 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of
Complainant’s 191 mark in the <www191.com> domain name to divert Internet users to Complainant’s
competitors suggests that Respondent registered the disputed domain name
intending to disrupt Complainant’s business.
The Panel finds that this is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
Complainant’s competitors. Because
Respondent’s domain name is confusingly similar to Complainant’s 191
mark, Internet users accessing
Respondent’s disputed domain name may become confused as to Complainant’s affiliation
with the resulting website. Respondent
is attempting to profit from this confusion via the click-through-fees. Thus, Respondent’s use of the <www191.com> domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Furthermore, the Panel finds that Respondent’s engagement in
typosquatting is evidence that Respondent registered and is using the <www191.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc.
v. Zuccarini, D2002-1011 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <www191.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 28, 2009
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