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Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella [2001] GENDND 510 (12 March 2001)

WIPO Arbitration and Mediation Center

The complainant is Omnitel Pronto Italia S.p.A., an Italian company with business offices in via Caboto 15, I-20094, Corsico, Milano, Italy. The respondent is Carlo Dalla Bella, via Colombara 24/5, Oriago Verona, Italy.

The contested domain name is "omnitel2000.com", registered with Tucows.com Inc., 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada.

Complainant started its business (mobile telephone services) in 1995.

It owns the trademarks registered in Italy for OMNITEL and also numerous other marks including the string "OMNITEL". These marks are well known in Italy.

Respondent registered the contested domain name "omnitel2000.com" on November 20, 1999.

At the beginning of April 2000, the address pointed to an empty web page.

On April 14, 2000 complainant wrote to respondent to request that the contested domain name be transferred to it. Respondent did not reply to this letter.

At the beginning of May 2000, the address pointed to a web page containing information on a lottery.

Currently (March 8, 2001), the address points to a web site that contains no information for display.

Complainant sent two reminders. On July 19, 2000, respondent replied, stating that he had registered the domain name on behalf of a United States Company (WW Advertising, Inc.) and stating:

"[the company I represent] is available to solve amicably the controversy if [Omnitel] is willing to reimburse the costs incurred to date for the registration and structuring of the forthcoming portal OMNITEL2000, extending to a possible commercial collaboration, which we invite, whose value would be the that given by [Omnitel] to the flexibility shown by us under the circumstances.

… in case of lack of acceptance we shall feel free to use the domain at our pleasure."

Searches conducted through the Internet reveal that WWW Advertising Inc. is not a United States company, but has an Italian address in Mirano, Venezia, close to respondent’s domicile.

On July 18, 2000, complainant wrote again to respondent to request a clarification regarding "reimbursement for the costs of structuring the forthcoming portal".

On August 1, 2000, respondent replied, requesting Lit. 90 million (about US dollars 45,000), plus TVA.

Respondent wrote again on September 19, 2000 stating that "further unjustified delays in deciding the matter would be considered as a lack of interest in what requested and as a consequence we will feel free to use the domain name as we wish".

Complainant contends that the domain name "omnitel2000.com " is identical or confusingly similar to its trademark OMNITEL; that the respondent has no legitimate rights or interests in the contested domain name; and that the respondent registered and used the contested domain name in bad faith.

The respondent has defaulted and hence makes no contentions.

The panel will first address the procedural issues related to the fact that the respondent has defaulted and then analyze the evidence to determine whether the complainant has proven, in accordance with paragraph 4(a) of the ICANN Policy, that:

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; and,

2. the respondent has no legitimate interests in respect of the domain name; and,

3. the domain name has been registered and used in bad faith.

Since the respondent has defaulted, this panel must first determine what the procedural implications are of default. Should the complainant automatically prevail, or should the panel anyway examine the evidence and base its decision on its determination of the relevant facts and laws?

While the ICANN Policy, Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question; they do give some guidance. Notably, article 4(a) of the ICANN Policy states:

"In the administrative proceeding, the complainant must prove that each of these three elements are present." [Emphasis added]

This panel therefore holds that it cannot grant the complainant’s request automatically, but that it must instead examine the evidence presented to determine whether or not the complainant has proven its case as required by the ICANN Policy.

The complainant has presented evidence that it owns the rights to the trademark OMNITEL and it is obvious that the contested domain name "omnitel2000.com" is confusingly similar to the trademark.

The complainant has presented evidence and argued convincingly that, given the national Italian reputation of OMNITEL, and its products and services being widely known, it is hard to understand how the respondent could have any rights or legitimate interests in the contested domain name.

This panel holds that the complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the respondent has rights or legitimate interests in the contested domain name.

Paragraph 4(b)(i) of the ICANN Policy states that the following shall be considered evidence of bad faith use and registration:

(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;

The letters of the respondent (cited above in section 4. Factual Background), in which the respondent clearly demands significant sums of money for the transfer of the contested domain name are undoubtedly circumstances indicating that the respondent registered the domain name primarily for the purpose of selling it to the complainant for consideration in excess of out-of-pocket costs. Indeed, the complainant has provided ample evidence to show that the respondent, a resident of Italy, could not possibly have ignored the fact that the complainant owned the mark OMNITEL and its derivative marks.

Hence, the panel concludes that the respondent could not possibly have acted in ignorance or good faith when he registered the contested domain name, because he must already have known at that time that the mark OMNITEL belonged to the complainant.

This panel concludes that the complainant has proven that the contested domain name is confusingly similar to its trademark OMNITEL, that the respondent has no rights or legitimate interests in the contested domain name, and that the respondent has registered and used the contested domain name in bad faith.

The panel therefore orders the contested domain name "omnitel2000.com" to be transferred to the complainant, Omnitel Pronto Italia S.p.A.

Richard Hill
Sole Panelist

Dated: March 12, 2001