Tim Italia S.p.A. v. Esa-Net S.r.l.
Claim Number: FA0511000593321
PARTIES
Complainant is Tim Italia S.p.A.
(“Complainant”), represented by Cristina
Cazzetta, of Porta, Checcacci & Associati S.p.A., Via Trebbia 20, Milano, 20135, Italy. Respondent is ESA-NET S.r.l. (“Respondent”), represented by Angelo Emidio Lupo, of ESA-NET S.r.l, Corso Italia, 6 B/14,
Anzio (RM), 00043, Italy.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timitalia.net> and <timitalia.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Honorable Bruce E. Meyerson, Enrico Ruggiero and Alan L. Limbury as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 9, 2005. The National Arbitration Forum received a
hard copy of the Complaint on November 14, 2005.
On November 9, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com
confirmed by e-mail to the National Arbitration Forum that the <timitalia.net> and <timitalia.com> domain names are registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that the Respondent is the current registrant
of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2005, the National Arbitration Forum drew Complainant’s
attention to a minor formal deficiency in the Complaint, which Complainant
rectified by way of amendment dated November 21, 2005.
On November 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 12, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@timitalia.net and
postmaster@timitalia.com by e-mail.
A timely Response was received and determined to be complete on December
12, 2005.
A timely additional submission by Complainant was received by the
National Arbitration Forum on December 15, 2005, and was in compliance with The
Forum’s Supplemental Rule #7.
On December 20, 2005, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Bruce E. Meyerson, Enrico Ruggiero
and Alan L. Limbury as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The disputed domain names were registered by Respondent on February 2,
2005.
In January 2005, in furtherance of a restructuring proposal publicly
announced on December 7, 2004, Telecom Italia S.p.A. acquired all the shares in
Telecom Italia Mobile S.p.A. (also known as TIM) that it did not already own. On February 24, 2005, TIM assigned its
Italian mobile telephony business and a portfolio of trademarks to Complainant,
a wholly owned subsidiary constituted on December 29, 2004. Subsequently
Telecom Italia Mobile S.p.A. went out of existence, leaving Complainant a wholly
owned subsidiary of Telecom Italia S.p.A.
Complainant says it thus became the number one mobile telephony
operator in Italy and the owner of a large portfolio of registered trademarks
in many countries, including the Italian registered mark TIM, filed in December
1995.
Complainant says the disputed domain names are identical or confusingly
similar to a trademark or service mark in which it has rights; that Respondent
has no rights or legitimate interests in respect of the domain names; and that
the domain names were registered and are being used in bad faith.
In particular, Complainant says that as of March 21, 2005 (the day
Complainant filed a complaint against Respondent to recover the domain name
<timitalia.it>), both of the disputed domain names led to a website at
<timitalia.it> which displayed a ‘holding’ page, an obvious case of
cybersquatting, if not “grabbing” for speculative purposes, given the
indisputable renown of TIM Italia. As
of October 25, 2005, the content of that website had changed to a display of
photographs of a woman named Ilaria.
On October 19, 2005 Respondent was given formal notice that the domain
name <timitalia.it> would be transferred to Complainant unless Respondent
could show that it had commenced court or arbitration proceedings in relation
to that domain name.
B. Respondent
The assignment of TIM S.p.A’s business and trademarks took place after
the domain names were registered. At
the time of their registration, Complainant was not the owner of any trademark
or industrial property. The name TIM
ITALIA is not used yet on the web.
Respondent says it has legitimate interests in the disputed domain
names because they were registered on February 2, 2005 to be used for the
website of a motorbike club, the “Teso Ilaria Moto Italia” (TIMITALIA). Two of the six members of the motor bike
club are members of Respondent.
Respondent exhibits an application form dated February 2, 2005 directed
to the Federazione Motociclista Italiana from Ilaria Teso regarding a club
called “TIMITALIA (Teso Ilaria Moto Italia)” and a form dated the same day,
signed by Ms. Teso as President of the newly founded club. One of the Councillors named on that form is
Respondent’s representative in this proceeding. The first (at least) of those forms was transmitted by facsimile
on April 18, 2005.
Respondent says it used the domain names in connection with a bona
fide offering of goods or services before receiving notice of the dispute
(on November 21, 2005), in that it has used the domain names for a club
(TIMITALIA) of the same name. Also, the
holding page on the <timitalia.it> website to which the disputed domain
names were directed read as follows:
Place holder for www.esa-net.org– Place holder for www.timitalia.it -Congratulations on
choosing Esa-Net! Note: This page can easily be replaced with your own
page. Use your favorite FTP application to move your website to your web server
at www.esa-net.org. To replace this page, transfer your new content to the
directory /www/web. Be certain the name of the file for your new home page is:
index.html, index.php, index.cgi or index.asp web://cp - Web Hosting Control Panel You can now administer your
Web Site through the URL http://www.esa-net.org/webcp or directly
http://www.esa-net.org/domaincp for domain administration and
http://www.esa-net.org/personalcp for user & e-mail settings. You should
bookmark this page for future use and tell your users. Please contact
staff@esa-net.org if you have any question.
Respondent says this is not cybersquatting but a courtesy page to help
the user to administer the site. The
disputed domain names redirect to <timitalia.it> because at this moment
the contents are the same. The English
version of the site is not ready yet.
It is clear that this is a non-commercial site so the update of contents
is done when possible.
The domain name <timitalia.it> is still assigned to Respondent
and has not been transferred to Complainant because the decision is under
challenge in the Civil court of Rome.
In denying bad faith, Respondent says it uses the domains for a
non-commercial use and for an activity totally different from those of
Complainant. It is impossible to
mislead because the websites are graphically very different. The good purpose of Respondent when the
domains were registered is proved by the foundation, on the same day as the
domains, of the motorbike club “TIMITALIA”, for which it sought affiliation
with the Italian Motorbike Federation.
Respondent says it has never
tried to sell, rent or transfer the domain name registrations to anyone
or tried to prevent the Complainant to use them, nor to mislead or attract
internet users; that it has been proved that the Respondent has a valid reason
to use the domain names and it has also used them for a proper use, different
from the activity of the Complainant, before knowing about the Complaint.
Further:
Respondent did not register the domains name[s] in bad faith but for a proper use,
neither could know that this name could be referred to TIM S.p.A. (that is the
acronym of Telecom Italia Mobile) neither to Telecom Italia S.p.A., even
because both the companies still have in their name the word Italia.
C. Additional Submission
Complainant says it is the sole entity authorized to file this
Complaint, since Telecom Italia Mobile S.p.A. was no longer in business when
the Complaint was filed, having transferred its Italian mobile communication
business to Complainant.
The name TIM ITALIA S.p.A. is largely used on the web. The merger plan was publicly available on
the web on December 7, 2004 and minutes of the meetings of the boards of
directors of Telecom Italia S.p.A. and Telecom Italia Mobile S.p.A. were
available to the public on the web on January 23, 2005. Further information was made available on
January 26, 2005. Complainant was
established on December 29, 2004. There
was thus public knowledge of the merger plan and that Complainant would be the
new company which would acquire the Italian mobile business, and there was use
of the wording TIM ITALIA on the web.
Three days prior to Complainant starting the process for reassignment
of the <timitalia.it> domain name, the disputed domain names led to a
‘place holder’ page at <timitalia.it>, indicating that Respondent never
used or intended to use the disputed domain names except to misrepresent itself
as Complainant and to provide misleading information to the public. The new content of the site appeared well
after the notification of the commencement of the proceedings over <timitalia.it>
and still appears to be “under construction” with images less corresponding to
a motorbike club.
The process of transferring the domain name <timitalia.it> to
Complainant is simply suspended pending the outcome of the challenge.
The word TIM ITALIA evokes a company extremely well-known at national
and international level in the field of telecommunications. It is therefore highly improbable that
Respondent registered such a domain name without knowing that it was infringing
the rights of Complainant with such a registration.
FINDINGS
Complainant has established all elements
necessary to entitle it to the relief requested.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 fact that the
disputed domain names were registered prior to Complainant’s acquisition of trademark
rights (by way of assignment) is not fatal to Complainant’s case because the
relevant date at which trademark rights must be shown to exist for the purposes
of the Policy is the date of filing of the complaint, not the date of
registration of the disputed domain names.
See Valve Corp. v.
ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005).
The Panel is
satisfied that the word TIM is distinctive in Italy of the mobile telephony
business formerly conducted by Telecom Italia Mobile S.p.A. and presently conducted
by Complainant. On that basis, the
disputed domain names, which simply add the geographic identifier ‘Italia’ and
the non-distinctive and inconsequential gTLDs ‘.com’ and ‘.net’ to
Complainant’s distinctive name and registered mark TIM, are confusingly similar
to that mark. See AT&T Corp. v. Worldclass Media.com,
D2000-0553 (WIPO July 31, 2000); see also Net2Phone, Inc. v. J.N. Atala & Cia S.A., D2003-0927 (WIPO Jan.
8, 2004); see also Schering AG
v Metagen Gmbh, D2000-0728 (WIPO
Sept. 13, 2000).
Complainant has established this element of
its case.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy. See Cassava Enters. Ltd. v. Victor Chandler Int’l. Ltd., D2004-0753 (Nov. 11, 2004).
The mark TIM was
registered in 1997 and is well-known in connection with mobile telephony in
Italy. The Telecom Italia group has a
high profile and its restructure was an important and highly publicized
transaction. The restructuring proposal
was available on the web on December 7, 2004.
The name TIM ITALIA was used in relation to Complainant on the web on
January 23, 2005.
These circumstances
lead the Panel to conclude that, prior to registering the disputed domain
names, it is likely Respondent, an Italian enterprise, was aware of the mark
TIM, used and owned by Telecom Italia Mobile S.p.A, (known also as TIM S.p.A),
and was aware that the Italian mobile telephony business and marks of TIM S.p.A
were in the course of being transferred to a company called 'TIM Italia S.p.A.'
This finding
establishes a prima facie case of
absence of rights or legitimate interests in the disputed domain names on the
part of Respondent.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
[B]efore any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services;
Even perfunctory preparations have been
held to suffice for this purpose. See
Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution Mar.
20, 2000); see also Lumena s-ka so.o. v. Express Ventures Ltd., FA 94375
(Nat. Arb. Forum May 11, 2000); see also Royal Bank of Canada v.
Xross, AF-0133 (eResolution May 19, 2000).
On the other hand, use which intentionally trades on the fame of another
cannot constitute a bona fide offering of goods or services. See Ciccone, v. Parisi, D2000-0847 (WIPO Oct. 16, 2000).
As to when
Respondent received notice of this dispute, although notice of this proceeding
was not given until November 2005, Respondent was on notice in March 2005 that
Complainant claimed rights in one or more trademarks when Complainant commenced
proceedings over <timitalia.it>.
That is sufficient notice of this dispute for the purposes of the
Policy. See Talal Abu-Ghazaleh Int’l v. Wakim, DPH2001-0002 (WIPO Feb. 14,
2002).
Prior to that
date, the disputed domain names led to the <timitalia.it> website
'holding' page, containing material inconsistent with Respondent’s explanation
that the disputed domain names were registered in furtherance of a newly
established motorcycle club.
The material
appearing at the <timitalia.it> website after March 2005 and the
documentation regarding the establishment of the motorcycle club appear to the
Panel to be an attempt, ex post facto, to manufacture a defence of
legitimacy in order to resist this anticipated proceeding. There is no authentification of the asserted
date of establishment of the club, February 2, 2005, the same date as the
registration of the disputed domain names.
There is no explanation as to why Respondent registered the disputed
domain names, rather than the club itself or one of its individual
members. The fact that two council
members of the club are also said to be members of Respondent does not give
Respondent a legitimate interest in the disputed domain names. The use of the disputed domain names to
point to the <timitalia.it> website holding page and the subsequent
website content, featuring primarily a woman posing, do not support the
contention that they were registered for the purposes of a motorcycle club.
Respondent has failed to establish rights or
legitimate interests in the disputed domain names and accordingly Complainant
has established this element of its case.
The circumstances enumerated in paragraph
4(b) of the Policy are not exhaustive.
Having found it likely that, prior to registration
of the disputed domain names,
Respondent knew of the mark TIM and of the restructuring transaction
involving a company called TIM Italia S.p,A, the Panel finds that the purpose
of registration was to block Complainant from using the TIM mark in the “.com”
and “.net” domains. Where a respondent
has engaged in a pattern of such conduct, such a finding shall be evidence of
bad faith registration and use pursuant to Policy ¶ 4 (b)(ii). Here there is no such pattern. Accordingly this finding proves bad faith
registration only.
As to use, it is inevitable, having regard to
the distinctiveness of the mark TIM in Italy in connection with mobile
telephony, that Italian Internet users would be misled by the disputed domain
names into the expectation that they would reach a website operated by
Complainant. Instead they found a
website operated by Respondent. The
Panel finds that Respondent intended this to occur and that such use of the
disputed domain names amounted to bad faith use. See Yahoo! Inc. v.
Ashby, D 2000-0241 (WIPO June 14, 2000).
Complainant has established this element of
its case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timitalia.net>
and <timitalia.com>
domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury
Presiding Panelist
Hon. Bruce Myerson
& Enrico Ruggiero, Panelists
Dated: January 2, 2006
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