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Olivetti S.p.A. v. Mr. Syed Hussain [2001] GENDND 920 (10 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant in this administrative proceeding is Olivetti S.p.A. ("Complainant"), a joint-stock company, incorporated under the laws of Italy with its registered office at Via Jervis, 77, 10015 Ivrea (TO), Italy, represented by Avv. Anna Carabelli and Avv. Luca Tiberi, Studio Legale Mondini Rusconi, Via Visconti di Modrone 2, 20121 Milan, Italy.

The Respondent is Mr. Syed Hussain ("Respondent"), an individual having its address at 15 15^th Street, Closter, NJ 07624, USA.

The domain name at issue is <olivettitecnost.com> ("Domain Name"), registered with Register.com ("Registrar") of 575 8^th Avenue, 11^th Floor, New York, NY 10018, USA.

A complaint, pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") implemented by ICANN on the same date, was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on March 6, 2001, by e-mail and was received on March 8, 2001, in hardcopy. In this complaint, CPIC Net appears as the Respondent.

The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on March 13, 2001.

On March 14, 2001, a Request for Registrar Verification was transmitted to the Registrar. With its Verification Response of March 20, 2001, Registrar declared that it had not received a copy of the Complaint and that Mr. Syed Hussain was the current registrant of the Domain Name. In addition, it confirmed that the disputed Domain Name was registered with the Registrar, that the Policy was applicable and that the registration was in active status.

On March 20, 2001, the WIPO Center submitted a Complaint Deficiency Notification to Complainant notifying that the registrant of the Domain Name was not identical to the person/entity specified in the complaint as Respondent. Complainant cured this deficiency by submitting an amended complaint against Syed Hussain personally to the WIPO Center on March 21, 2001, by e-mail (received in hard-copy by the WIPO Center on March 22, 2001).

The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on March 26, 2001, without recording any formal deficiencies.

A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to Respondent setting a deadline as of April 14, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification and the Complaint was transmitted by e-mail to registrant, administrative contact and technical contact, zone contact. In addition, the aforementioned documents were sent by FedEx courier service to all available postal addresses of the Respondent.

Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".

After not having received a Response by Respondent, the WIPO Center issued a Notification of Respondent Default on April 17, 2001.

Complainant had requested a one-member panel. Consequently, the WIPO Center invited Bernhard F. Meyer-Hauser to serve as Sole Panelist in this proceeding, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

Having received the Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the WIPO Center transmitted to the parties on April 27, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date. The projected decision date was May 10, 2001.

The Sole Panelist finds it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

Complainant is an Italian holding company that operates in telecommunication and internet services and, through its directly owned subsidiaries, in information and communication technologies and a number of other related areas, such as cable and satellite digital broadcasting, real estate management services and financial services.

A directly owned subsidiary of Complainant named "Technost S.p.A." acquired in June 1999 the former Italian telecom monopolist Telecom Italia S.p.A. on December 18, 2000, Tecnost S.p.A. was merged into Complainant.

Another subsidiary of Complainant, "Olivetti Lexikon S.p.A.", changed its company name in January 2001 to "Olivetti Tecnost S.p.A."

Complainant is the holder of the trademark "OLIVETTI" in numerous countries all over the world, such as

- Italian trademark registration no. 00683076, 00610957 and 00615757, expiring on December 21, 2004 resp. December 19, 2001;

- Trademark registration with WIPO n. 2R 163 939, expiring on September 9, 2012;

- US trademark registration no. 935870, 581197, 568467, expiring on June 20, 2002 resp. October 20, 2003 resp. December 30, 2002.

As a result of the merger with Complainant’s subsidiary Tecnost S.p.A., Complainant is the holder of the trademark "TECNOST" in numerous countries all over the world, such as:

- Italian trademark registration no. 336111 (application for renewal No. 99C 0003496)

- Trademark registration with WIPO n. 480 769, expiring on October 10, 2003

- Canadian trademark registration n. 321666, expiring on June 20, 2002.

Respondent has registered the Domain Name on March 18, 2000.

Complainant contends that the Domain Name is identical and/or confusingly similar to the trademarks held by Complainant. The Domain Name is a combination of the two words "Olivetti" and "Tecnost", each of which is identical with the respective registered trademarks owned by Complainant.

In addition, the Domain Name is identical with the Complainant’s wholly owned subsidiary Olivetti Tecnost S.p.A.

Complainant has acquired trademark rights in the composite mark "OLIVETTI TECNOST" as a result of the publicity given worldwide and the use of this mark as a domain name <olivettitecnost.it>.

It is a established principle under both Italian and U.S. laws that use of an unregistered trademark sufficiently public to create in the mind of the public an association between the trademark and the goods or services offered by the adopter of the mark is competent to establish ownership in favor of the latter.

The overall impression left by the Domain Name suggests that the Domain Name belongs to Complainant and consumer confusion will inevitably result. Dissimilarity in the Domain Name and the Complainant’s trademarks merely consists in the fact that the Complainant’s trademarks are registered each as a single word (OLIVETTI and TECNOST) while in the Domain Name they are combined in one word (olivettitecnost). The overall impression left by the Domain Name is confusingly similar to the Complainant’s registered trademarks.

Complainant contends that Respondent has no rights or legitimate interest in respect of the Domain Name. This is established by the facts that Respondent has not made any legitimate use of the Domain Name and that there is no evidence or indication as to Respondent’s intent to use the Domain Name in connection with any bona fide offering of goods or services.

Complainant contends that the Domain Name has been registered and is being used in bad faith. An evidence for the bad faith is the point of time of the registration shortly after the public announcement by international press of the intention of Olivetti to merge with Tecnost S.p.A. and the offer to sell the Domain Name to Complainant. In addition, Complainant points out that Respondent has already acted in the same pattern of conduct in connection with the announcement of the merger of the companies Time Warner and EMI by registering a number of domain names consisting in the various combination of the merging companies.

Consequently, Complainant requires the transfer of the Domain Name to Complainant.

As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a Response up to date. Thus, Complainant's allegations are deemed to be non contested.

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 service mark 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 used in bad faith.

The Domain Name at issue is <olivettitecnost.com>. This Domain Name is composed by the words "Olivetti" and "Tecnost". Each of these two elements are identical with trademarks held by Complainant and the combination of these elements is similar to each of its components.

In particular the mark "Olivetti" is a strong, commonly known trademark. The trademark "Tecnost" has achieved wide publicity in the international press through the subsidiary of Olivetti named Technost S.p.A. in course of the financial transactions in connection with the acquisition of Telecom Italia S.p.A. and the merger with Olivetti. Thus, both marks - Olivetti and Tecnost - are publicly known individually and in combination. A Domain Name combining these two marks is therefore confusingly similar to the trademarks held by Complainant. Because of the confusing similarity of the Domain Name and the Complainant’s marks, the overall impression left by the Domain Name suggests that this Domain Name belongs to Complainant.

In addition, "Olivetti Tecnost S.p.A." is the company name of a subsidiary of the Olivetti group. The Domain Name at issue is identical to the business name of that company. Olivetti Tecnost S.p.A. is actually using the domain name <olivettitecnost.it>, which is - except for the country code extension - identical to the Domain Name at issue.

Therefore, the Sole Panelist finds that the Domain Name is composed by two elements which are identical to Complainant’s trademarks and that the overall impression of the Domain Name is confusingly similar to Complainant’s trademarks and business name.

Respondent has never alleged to have any rights or legitimate interests in the Domain Name. He neither demonstrated any use or preparation to use the Domain Name for any bona fide offering of goods or services, nor is he commonly known by the domain name, nor is he making a legitimate noncommercial or fair use of the Domain Name.

Considering all circumstances, the Sole Panelist finds that Respondent has no right or legitimate interest in the Domain Name.

According to the Policy Paragraph 4(b)(i), the following circumstances (among others) are deemed to provide evidence of bad faith in registering and using the Domain Names:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] 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 trade mark 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.

In an e-mail dated December 2, 2000, Respondent wrote to Mr. Ulisse Spada, a representative of Complainant:

This is a clear indication of an intent to sell the Domain Name for valuable consideration in excess of any out-of-pocket costs directly related to the domain name, which constitutes a bad faith use.

Another indication of Respondent’s bad faith is the fact that Respondent has already applied the same pattern of conduct in a similar case acting through a related company named CPIC Net (the relation between Respondent and CPIC Net is evidenced by the registration details at the Registrar): Shortly after the announcement of the merger of Time Warner Inc. and EMI Group plc., CPIC registered various domain names consisting of combinations of the two company’s marks with the intention to sell the domain names to the owners of the marks (see Time Warner Inc. and EMI Group plc. v. CPIC Net, WIPO Case No. D2000-0433). In that case, Respondent’s behavior was considered to be bad faith. In the present case, Respondent has applied the same strategy. He obviously engaged in a bad faith pattern of conduct in registering domain names in connection with announced mergers in order to sell these domain names afterwards to the involved companies.

The Sole Panelist finds that this is a clear case of domain name grabbing and that the Domain Name has been registered and used in bad faith.

In view of the circumstances and facts discussed above, the Sole Panelist decides that the disputed Domain Name is confusingly similar to the registered trade marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Sole Panelist requires that the disputed Domain Name <olivettitecnost.com> shall be transferred to the Complainant.

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: May 10, 2001