ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant is Tiscali
S.p.A. based in Viale Trento n° 39, Cagliari, Italy. The Respondent is CIPs –
Consorzio Internet Providers, based in Viale Porto Torres n° 32, Sassari,
Italy. The contested domain name is tiscali.net. The Registrar of the
domain name is Network Solutions Inc.
2. Procedural history
The electronic version of the Complaint form was filed on-line through eResolution’s Website on May 24, 2001. The hardcopy of the Complaint Form and annexes were received on May 28, 2001.Payment was received on May 31, 2001.
Upon receiving all the required information, eResolution’s clerk proceeded to:
Confirm the identity of the Registrar for the contested Domain Name;
inquiry lead the Clerk of eResolution to the following conclusions: the
Registrar is Network Solutions Inc, the Whois database contains all the required
contact information, the contested Domain Name resolves to an active Web page
and the Complaint is administratively compliant.
email was sent to the Registrar by eResolution Clerk’s Office to obtain
confirmation and a copy of the Registration Agreement on May 25, 2001.The
requested information was received on May 29, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy.The Clerk’s Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on May 31, 2001. This date is the official commencement date of the administrative proceeding.
Only the fax failed, all the emails were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent.According to the Canada Post tracking system, all were delivered.
The Respondent did not submit a Response neither via eResolution‘s website nor a signed version.
Section 5 (e) of the ICANN Rules for Uniform Domain Disputes Resolution Policy provides: “If a Respondent does not submit a responce, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
On July 04, 2001, Mr. Nicolò Bellotto, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On July 04, 2001, the Clerk’s Office forwarded a user name and a password to Mr. Nicolò Bellotto, allowing him to access the Complaint Form and the evidence through eResolution’s Automated Docket Management System.
On July 04, 2001, the parties were notified that Mr. Nicolò Bellotto had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 18, 2001.
3. Factual Backgrounds
All facts discussed herein are derived from the complaint form or the annexes submitted by Complainant.
The Complainant is the owner of the following trademark registrations:
in Italy on April 28 1998 and in EU on March 24 2000;
The Complainant is known in Italy as one of the largest Internet Service Providers and undertakes several activities related with telecommunication services, Internet access and service provision, Internet portals and related goods and services.
Tiscali S.p.A. was founded in Cagliari (Sardinia) on 1997 by Mr. Renato Soru who gave to his Company the name of an archeological site of the first inhabitants of Sardinia, located in the heart of the said region, and which was not known by the media since when Mr. Soru’s Company became the first and most famous Internet Service Provider in Italy.
According to the documentation enclosed to the complaint form, Respondent appears to be an Internet Service Provider located in Sassari, in the north of Sardinia.Respondent has registered the contested domain name on July 27 1998 when the Complainant was already known in Italy as the most representative and fast growing company related with the advent of new technologies.
4. Parties' Contentions
The Complainant contends that the domain name at issue is identical to its trademark “tiscalinet” and confusingly similar to its other trademarks.
The Complainant contends that the Respondent has no legitimate interest in the domain name because is not known on the market either with “tiscali” or with “tiscalinet” and because the domain name does not correspond to any of the products or services the Respondent offered and/or offers.
The Complainant contends that the Respondent registered, used and is using, the contested domain name in bad faith because:
- the Respondent is a direct competitor of the Complainant which has registered
the domain name tiscali.net when the Company Tiascali S.p.A. was already well known on the market;
The Respondent has not responded to Complainant’s allegations.
5. Discussions and Findings
To qualify for a remedy, the Complainant bears the burden of proving each of the three elements set forth in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Policy"). The Complainant therefore must show that:
(1) The domain name 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.
This Panel finds that Complainant has proved all the three factors necessary to entitle it to relief. The Panel will address each of the factors in turn.
(i). Is the disputed domain name identical or confusingly similar to the Complainant's trademarks?
In my view, there is no question that both the domain name and the company name are identical and, if not, then are at least confusingly similar.Numerous cases decided under the Policy have held that merely adding a gTLD or ccTLD to a word, term or phrase was not enough to dispel confusion or change identity as between a trademark and a domain name.
As has been proved by the documents enclosed by the Complaint, there is evidence to ascertain that the domain name at issue tiscali.net is identical to Complainant’s trademark “tiscalinet” and is confusingly similar to Complainant’s trademarks “tiscali” and “tiscalifreenet”.
The first requirement is therefore satisfied.
(ii). Does the Respondent have any rights or legitimate interests in the domain name?
As appears from the whois search, the record of the domain name tiscali.net was created on July 27 1998, subsequent to the dates of first use of the word “tiscali” by the Complainant, and subsequent to the date of registration of the trademark “tiscali” in Italy.
According to the documentation enclosed by the Complainant there is no evidence of any activity of promotion or advertising related with the use of the site for commercial purposes. Moreover as it is used the site on this moment (with only a photograph of the Tiscali caves and a link to another site managed by the Respondent), it could hardly been considered as an effective use of the site.
Therefore, the second requirement is satisfied.
(iii). Was the domain name registered and is it being operated in bad faith
Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the domain names in bad faith.
Paragraph 4 (b) of the ICANN Policy states:
"For the purposes of Paragraph 4 (a)(iii), 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 in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
In my view, the Complainant has shown that the Respondent's registration and use to date of the domain name has been undertaken in bad faith as understood under the Policy. According to the documents enclosed to the complaint form, it can only be concluded that the Complainant and the Respondent are two competing companies, offering similar service and information to a similar clientel. Any other conclusion offends common sense.
Moreover, it is opinion of this Panel that, when Complainant has proved the copy or similarity of the domain name with the trademark under which the Complainant operates and has also proved his rights or legitimate interests in the contested domain name, to associate a function of redirect from the contested domain name to some other sites of the Respondent is evidence of bad faith under the Policy. Indeed, under these circumstances, the function of redirecting to another site of a competitor it is an instrument used to attract, for commercial gain, Internet users to a different web site, creating a likelihood of confusion with the complainant's mark.The Panel thus concludes that the Complainant has met the criterion of at least Policy paragraphs 4(b)(ii) and (iii) (and in my view, (iv) as well) and thus the requirements of Policy paragraph 4(a)(iii).The Respondent's registration and use of tiscali.net was done in bad faith.
For all the foregoing
this Panel concludes:
Therefore, pursuant to paragraphs 4(i) of the Policy, the Panel orders that the domain name tiscali.net be transferred to the Complainant.