WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telecom Italia Mobile S.p.A. v. Marketcall Italia
Case No. D2003-1017
1. The Parties
The Complainant is Telecom Italia Mobile S.p.A., Turin, Italy, represented by Alessandro Fiammenghi of Italy.
The Respondent is Marketcall Italia, Milan, Italy.
2. The Domain Name and Registrar
The disputed domain name <wwwtim.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 22, 2003. On December 22, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On December 29, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 12, 2004.
On February 20, 2004, the Center invited Mr. Luca Barbero to serve as a panelist in the instant case and, having received his Statement of Acceptance and Declaration of Impartiality and Independence pursuant to the Rules, paragraph 7, the Center transmitted on February 24, 2004, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date for March 9, 2003, in which Mr. Luca Barbero was formally appointed as the Sole Panelist.
The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on over five hundred trademark registrations and applications consisting or comprising of the word "TIM", including the Italian Registration nį 666470 "T.I.M." of August 8, 1995, in classes 9 and 38 (a list of trademark registration was annexed to the Complaint).
The Respondent registered the domain name <wwwtim.com> on October 15, 2002.
5. Partiesí Contentions
The Complainant is Telecom Italia Mobile S.p.A. in short T.I.M. S.p.A.; established in June 28, 1995, is a leading European operator in the field of wireless telecommunication and a leader in the domestic market with 26,1 million lines as of September 30, 2003.
The Complainant indicates that the TIM Group is well known all over the world and that the Tim brand is no longer mainly Italian but is well recognized in Europe and abroad, quoting a number of countries in which the Complainant is present.
On October 2003, Complainant become aware that the domain name <wwwtim.com> was registered by the Respondent since October 15, 2002, and on October 29, 2003, the Complainantís attorneys, sent a registered cease and desist letter to the Respondent. The letter was apparently returned to the sender unclaimed, since - according to the Complainant - the Respondent is based "in an unknown place".
The Complainant indicates that it is the registered owner of more than five hundred trademarks filed/registered all over the world which comprise the word "TIM" or of which the word "TIM" is the dominant feature, providing the Panel with a printed list of trademark registrations.
The Complainant underlines that the domain name <wwwtim.com> is identical to Complainantsí trademark, trade name and domain names since the omission of the full stop before the name "TIM" would not be noticed by the Internet users who, when typing "wwwtim.com" may think that they have entered into the official Complainantís web site and has to be considered "typosquatting" i.e. the use of a common typographical error associated with a well known trademark to direct traffic to another web site.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name <wwwtim.com> for the following reasons. "The Respondent is not identified with the name TIM; the Respondent does not operate any business or commercial activity under the name TIM, the Respondent does not offer to the consumer any goods or services under a trademark or service mark known as TIM. The Respondent does not have any prior rights over the trademark TIM. The word TIM corresponds to the trade name of the Complainant".
With reference to bad faith, the Complainant indicates that the international fame of the Telecom Italia Mobile S.p.A.ís marks leaves no question of the Respondentís awareness of the Complainantís trade mark at the time of registration of the domain name.
According to the Complainant, the Respondentís domain name <wwwtim.com> takes advantage of a common Internet-user typographical error such as omitting the point between "www" and the domain name to misdirect the users to the its web page and therefore was registered for the purpose of interfering with the business of the Complainant.
The Complainant highlights that the Respondent lives in the same country, Italy, where the trademark TIM is undoubtedly considered a famous trademark and highly reputed as related to the telephone services and therefore the registration was in bad faith.
Respondent has not contested the allegations of the Complainant in a Response filed according to paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy and is in default.
The Panel shall therefore proceed to a decision without the benefit of a Response of the Respondent.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Domain name Identical or Confusingly Similar
The Complainant has provided the Panel with a long list of Italian trademark registration which includes the Registration nį 666470 "T.I.M." of August 8, 1995, in classes 9 and 38.
The domain name is therefore confusingly similar to the Complainantís trademark since both the acronym "www" (world wide web) and the addition of the top-level domain name ".com" which is merely instrumental to the use on the Internet, are irrelevant to determine the confusing similarity of the sign.
The Panel finds that the Respondent benefits of a very common typing error; amongst others see Bank of America Corp. v. InterMos (NAF Case No. FA 95092) finding that Respondentís domain name <wwwbankofamerica.com> is confusingly similar to Complainantís registered trademark BANK OF AMERICA because it "takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet".
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) He has made 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 prior to the dispute; or
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
There is no relationship, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Respondent is not prima facie currently using <wwwtim.com> in connection with a bona fide offering of any goods or services since, from the Panelís verification on the Internet, the domain name is currently pointing at a work in progress web page, after being registered for over one year.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel finds that the Respondent, in light of the fact that is apparently based in Milano, Italy as per the data declared in the Whois, was or should have been aware of Complainantís rights in the trademark TIM at the time of registration of <wwwtim.com>. See Samsonite Corp. v. Colony Holding, (NAF Case No. FA 94313) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.
The Respondentís registration of <wwwtim.com>, that is merely a misspelling of Complainantís registered mark, is a circumstance evidencing bad faith as decided in a number of other cases of this kind of "typosquatting" e.g. in PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc. (NAF Case No. FA0201000104101) transferring the domain name <wwwpncbank.com>, in Prada S.A. v. Domains For Sale Inc. (WIPO Case No. D2002-0512) awarding the domain name <wwwprada.com>, AltaVista Co. v. Stoneybrook, (WIPO Case No. D2000-0886) awarding <wwwalavista.com>, among other misspellings of <altavista.com>, to Complainant and Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainant.
The panel furthermore concurs with the views expressed also in Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 <guinessbeer.com> were it was held that the notoriety of a Complainantís mark creates a prima facie presumption that the Respondent registered the domain name "for the purpose of selling it to Complainant or one of its competitors".
In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.
The Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainantís trademark, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
For all the foregoing reasons, the Panel orders that the domain name <wwwtim.com> be transferred to the Complainant.
Dated: March 9, 2004