Telecom Italia S.p.A. v.
NetGears LLC c/o Domain Admin
Claim Number: FA0703000944807
PARTIES
Complainant is Telecom Italia S.p.A. (“Complainant”), represented by Cristina
Cazzetta, of Porta, Checcacci & Associati S.p.A.,
Via Trebbia 20,
The domain name at issue is <187.com>, registered with Moniker
Online Services, Inc.
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.
The Honourable Neil Anthony
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 23, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On March 30, 2007, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <187.com> domain name
is registered with Moniker Online Services, Inc.
and that Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 April 4, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 24, 2007 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@187.com by e-mail.
A timely Response was received and determined to be complete on April 24, 2007.
On May 2, 2007, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed The Honourable Neil Anthony Brown QC, Terry F. Peppard and
David E. Sorkin as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
alleges that the contentious domain name <187.com> should no
longer be registered with Respondent but that it should be transferred to
Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to Complainant’s registered trademarks, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support
of its case on the first of these three elements, Complainant maintains that
the domain name <187.com> is identical or confusingly similar to
three registered Italian trademarks owned by Complainant, namely for 187
TELECOM ITALIA & DEVICE (Reg. No. 897336), 187 CARD TELECOM ITALIA &
DEVICE (Reg. No. 983391), and 187 & DEVICE (Reg. No. 986056). It maintains that the trademarks were
registered to reflect the numbers 187 and their use as a customer service
number for the Italian telephone system and that such an association with those
numbers has become widely known.
Complainant
then contends, to establish the second element, that Respondent has no rights
or interests in the domain name because it has been passively holding the
domain name for 8 years, showing a lack of any right or legitimacy in the
domain name and also because it cannot bring itself within any of the
provisions of Policy ¶ 4(c).
Finally,
Complainant alleges that the domain name was registered and is being used in
bad faith. It contends that this is so because when Respondent registered the
domain name, it had no legitimate interest in it, it must have known of the “187
project” because of the vast expenditure by Complainant in promoting it and because
it has been using the website to which the domain name resolves to attract Internet
users to the site by creating confusion as to its source, sponsorship,
affiliation or endorsement.
B. Respondent
Respondent
contends first that Complainant does not have a trade or service mark that is
sufficient to support the Complaint. It
says in addition that the disputed domain name is not identical or confusingly
similar to any of the trademarks relied on by Complainant as they are
trademarks in the form of graphical logos and as such are neither identical to
the domain name nor sufficiently similar to it to give rise to any confusion.
Respondent
also claims it has rights and legitimate interests in the domain name because,
before Complainant registered its trademarks and prior to any notification of
the current dispute, Respondent registered and has been consistently using the
domain name as part of a legitimate business, namely providing web hosting, web
design, secure mail, retail shopping and search engine services. Initially, the domain name was used as an
index to other Internet sites that Respondent had under construction. More recently, it has been used to generate
search engine results tailored by the provider to the interests of users in
particular countries and which vary from one to the other. In that regard, the results from searches of “187”
have historically been more reflective of the connection between those numbers
and music rather than any alleged connection with any telephone service
provided by Complainant.
Respondent also denies that it registered or is using the domain name in bad faith, as it registered the domain name prior to the registration of the trademarks, did not know of the alleged use of the numbers 187 in the Italian telephone service or of the claims by any party to rights based on those numbers and because it was not motivated by bad faith in registering or using the domain name.
FINDINGS
Complainant is an Italian company operating
in telecommunications in
(a) Trademark Registered Number 897336,
registered on June 12, 2003 for 187 TELECOM ITALIA & DEVICE;
(b) Trademark Registered Number 983391,
registered on November 11, 2005 for 187 CARD TELECOM ITALIA & DEVICE; and
(c) Trademark Registered Number 986056,
registered on December 13, 2005 for 187 & DEVICE.
Respondent
registered the disputed domain name on January 6, 1999.
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 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;
(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.
It is pivotal to the operation of the UDRP
scheme that Complainant must identify a trademark or service mark and show that
the disputed domain name is identical or confusingly similar to that mark. Subject to the qualification mentioned below,
it appears that Complainant in the present case is relying on the three
registered trademarks already described to meet this requirement.
The
registered trademarks.
Complainant therefore says as its first
proposition that the domain name <187.com> is identical to each of
those trademarks. The Panel does not
accept that proposition. The Panel, of
course, is handicapped by not having seen any of the trademarks, for they have
not been attached to the Complaint and Complainant has not accepted the
invitation of Respondent to present them to the Panel with a Supplemental
Submission. It is clear from the
description of the trademarks in the Complaint, however, that each of the
trademarks relied on is a figurative or graphic trademark which, as well as the
numbers “187,” contains a device or visual representation. Although such a trademark may in appropriate
circumstances be confusingly similar to a domain name, it cannot be identical
to it, for it consists of something more than the mere figures or numbers that
are contained in the domain name. The
Panel has made a comparison between the disputed domain name and the
description of the trademarks as set out in the Complaint and finds that the
domain name is not identical to any of the trademarks relied on.
The question remains, however, whether the
domain name is confusingly similar to the trademarks or any of them. It is here that the omission of the trademarks
themselves from Complainant’s evidence is a major defect in Complainant’s case.
The Panel is of course cognizant of its
ability to request further information of the Parties under Rule 12. In this case, however, the missing information
is so central to Complainant’s case that the Panel is not prepared to excuse
its omission from Complainant’s initial submission.
As has been observed above, it is possible for a domain name to be
confusingly similar to a figurative or graphic trademark. But there must be facts put before the Panel
to enable it to make a rational comparison between the domain name and the trademark
before it can reach such a conclusion. Even when such material is available, it is
not an easy task for the Panel to perform, as is illustrated by the case cited
by Complainant, Tesla Indus., Inc. v.
Grossman, FA 547889 (Nat. Arb. Forum Dec. 5, 2005) and the other cases
cited in that decision.
The task was recently described in Deutsche Post AG v. NJDomains, D2006-0001, (WIPO Mar. 1, 2006), where the German Post Office argued that the
domain name <post.com> was confusingly similar to its trademark that
consisted of the word ‘Post,’ but with the addition of a prominent depiction of
a hunting or post horn. The Panel said
on that occasion:
The question then is whether the domain name is identical or confusingly similar to this word/figurative mark.
That
type of question is not always easy to resolve, for the figurative or graphic
part of a trademark cannot be translated into a domain name and a true
comparison is therefore difficult to make.
There
are some obvious similarities between the two expressions, for they both contain the words ‘Post’. However, that is where the similarities
end. Thereafter, it is necessary to make
the comparison having regard to how a reasonable bystander would view the
domain name and the trademark. The Panel is of the opinion that a reasonable
bystander would not regard the domain name as confusingly similar to the
trademark because the trademark is figurative and is an entirely different
representation from the domain name.
That is so
because the trademark is dominated by the very prominent illustration of a
horn. It is true that some UDRP
panelists have taken the view that in making the comparison presently under
discussion, devices and similar figurative depictions should be ignored so that
a straight comparison can be made between the words. Thus,
the panelist in Sweeps Vacuums &
Repair Ctr. v. Nett Corp., WIPO
Case No. D2001-0031
said that “graphic elements . . . not being reproducible in a domain name, need
not be considered when assessing identity or confusing similarity.” On the other hand, the panelist in Curvon Corp. v. Lauren Kallareou, WIPO Case No. D2001- 0565, said
that “The Mark . . . is the whole of the composite of design matter and word
matter [that] is shown in the registration document,” which is the same view
taken by other panelists.
The better
view, however, is to look at the overall impression or idea created
respectively by the mark and the domain name, the approach that was taken
recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091.
Applying that test, the overall impression of the trademark in the present case
is entirely different from that conveyed by the domain name. The pictorial
representation of the horn is such a prominent and dominating part of the
trademark that the result is a logo of the horn as well as the word ‘Post.’ It
is highly artificial to contend that this is a trademark for the word ‘Post’
when it clearly is far more than that.
Nor in
the opinion of the Panel could a reasonable bystander looking at the domain name,
which evokes the common generic word ‘Post,’ be confused into thinking that it
was really referring to a coloured logo of a horn with the word Post added to
it and the company whose logo it was.
Accordingly,
the Panel finds that the domain name is neither identical to nor confusingly
similar to the German trademark registered number 39540404.
Deutsche
Post AG v. NJDomains, D2006-0001, (WIPO Mar. 1, 2006). Those
remarks are equally applicable to the present case, for in reality Complainant
is asking the Panel to conclude that the trademarks relied on are trademarks
for “187” or trademarks similar to those numbers, without producing the
trademarks themselves so that a fair comparison may be made. The Panel is therefore not prepared to
conclude that the domain name is confusingly similar to any of those trademarks
without having them produced in evidence and where, even on the limited
material that has been presented, it is clear that the trademarks consist of
something more than the numbers 187.
Complainant is also asking the Panel to find that an
objective bystander would be confused into thinking that the domain name was
really referring to the figures “187” and a device of some sort without the
Panel even being shown the device in question.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) requires the Panel to decide the
case on the evidence and Paragraph
4(a) of the Policy requires that Complainant must prove each of the three
requisite elements.
Accordingly, the Panel concludes that the disputed domain name is not
identical or confusingly similar to any of the registered trademarks relied on.
The common law trademarks
It seems from the wording of the Complaint that Complainant may also be
relying on an unregistered trademark in the expression “187.” Complainant’s formal allegations are limited
to the registered trademarks, but in at least one point in the Complaint, it
asserts as follows: “Telecom Italia has expended substantial revenue in
connection with the advertising and promotion of the 187 marks and the number
187 has acquired a common law significance.”
The Panel will therefore consider whether Complainant has made out a
case for a common law or unregistered trademark, for it is now clear that common
law trademarks are sufficient to found proceedings under the Policy. Where, however, the alleged common law
trademark consists of generic or common words, good evidence will be needed to
show a significant secondary meaning and, above all, one associated with Complainant.
See, for example, 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 contained two generic terms and was not exclusively associated with its
business).
Applying
that test, Complainant’s evidence thus falls far short of what is required to
establish a common law trademark. There
is no real allegation in the Complaint and certainly no evidence to the effect
that the numbers “187” by themselves are a mark associated with Complainant’s
trade or a word or symbol to describe the origin of goods or services. The numbers are apparently a telephone number
and constitute the access code for the information service of Complainant’s
telephone service. Thus, they are
correctly described in the Complaint as a “client service” and as a “single
reference point of the client service” rather than as a brand.
Moreover,
the numbers are presented as such on Complainant’s website <187.it> and
are not claimed to be a trademark. The
numbers are, it is true, presented in one place on the website in combination
with a logo, but even if that combined representation were a common law
trademark, which is not the claim of Complainant, the domain name is neither
identical to or confusingly similar to that representation.
It is
also instructive that Exhibit B to the Complaint, which is the “TELECOM ITALIA
Group brochure,” promotes the company’s brands, but does not list the “187”
service as one of them.
More
importantly, however, there must be serious doubt on the evidence as a whole,
as to whether the numbers standing alone have the meaning contended for by
Complainant, let alone whether that meaning is associated with Complainant. As Respondent says, Complainant must show that
any common law rights it relies on arise in a common law jurisdiction and it
has not done so. Indeed, its own
evidence is to the effect that as well as its activities in
Nor, on
the evidence, would Complainant be able to make out such a case, for it is far
more likely that in common law jurisdictions the numbers in question have an
entirely different meaning from that contended for by Complainant. The evidence tendered by Respondent and not
contradicted by Complainant shows that in the
It is
equally instructive that Exhibit F to the Response shows that when Respondent’s
webpage is opened and viewed from the
The Panel
must admit, however, that to an older generation, “187” refers to Proposition
187 which was a referendum proposal put to the electors of California in 1994,
the burden of which was a law to deny social services, health care, and public
education to illegal immigrants. Although
the measure was passed and then declared unconstitutional, it was not abandoned
until July 1999 and in the meantime it had generated very wide international
publicity. Accordingly, it is much more
likely that when the domain name was registered on January 6, 1999, at the
height of this controversy, it would have been taken by residents in at least
some common law jurisdictions to be referring to the referendum and the
controversy surrounding it.
But
whatever of these alternative meanings is accepted, or even none of them, the
Panel is not satisfied on the evidence that the numbers, by themselves, have a
secondary meaning that is sufficiently clear that they invoke the narrow use in
the Italian telephone service contended for by Complainant.
Accordingly,
Complainant has not established the common law trademark that it claims.
Complainant
has therefore failed to make out the first of the three elements that it must
establish.
In view of the findings already made it is not strictly necessary to deal with the other two elements. It would be apparent, however, from the findings of the Panel that it would be impossible on the evidence for Complainant to make out either of the remaining two elements. As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.
For the same reason, Respondent
could not be said to have registered or used the domain name in bad faith. That is so because on the evidence it would be
entirely unjustified to draw the inference that Respondent registered the domain name in 1999 for reasons that
had anything at all to do with Complainant, let alone for some improper motive.
DECISION
For all of these reasons, the Panel concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC
Presiding Panelist
Terry F. Peppard
Panelist
David E. Sorkin
Panelist
Dated: May 16, 2007
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