START-UP TRADEMARK OPPOSITION POLICY

DECISION

Postecom spa v. smartphone sa

Claim Number: FA0204000110805

PARTIES

Complainant is Postecom spa, Milano, ITALY (“Complainant”) represented by Riccardo Fasoli.  Respondent is smartphone sa, Pully, SWITZERLAND (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <poste.biz>, registered with CORE.

PANEL

On July 16, 2002, pursuant to STOP Rule 6(b), the Forum appointed James P. Buchele as the single Panelist.  The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 24, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.

On May 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A.  Complainant

 1.  Poste Italiane Group is the Italian Postal authority. Everybody in Italy commonly refers to “Poste Italiane” as “Poste”.

2. Postecom S.p.A. is a subsidiary of Poste Italiane S.p.A. and provides web services including registration, web development and hosting.

3. Postecom S.p.A. includes the world POSTE in the name of many of its products and services:

· PosteMail

· PosteMail Sicura

· PosteMail Certificata

· PosteCert

4.  Extensive use of the work “Poste” makes it a trademark of Postecom S.p.A. and therefore it should be allowed to obtain the domain <poste.biz>. 

5. The <poste.biz> domain name is identical to Complainant’s trade name POSTE.

6. Respondent has no rights or legitimate interests in the <poste.biz> domain name.

7. The brand “swisspost” doesn’t include the word POSTE and therefore, Respondent registered the <poste.biz> domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant, Postcom S.p.A. is a subsidiary of Poste Italiane S.p.A. Complainant offers many services in Italy using the word POSTE. 

 

Respondent, Swisspost operates postal services in the Canton Ticino, Switzerland.  In this canton, Italian is the predominant language.  Respondent registered the disputed domain name on March 27, 2002.

POSTE is a common term used in several languages having numerous meanings.  A Google search reveals 1,880,00 sites using the term POSTE.

DISCUSSION

Paragraph 15(a) of the STOP 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has failed to show proof of a registered trademark.  Complainant asserts that “[e]verybody in Italy” refers to it as POSTE” and that it has made extensive use of the word POSTE in connection with its products and services but has not provided evidence to support this claim. 

STOP Policy ¶ 4(a)(i) does not require the Complainant to have a registered trademark in order to bring a claim.  Nonetheless, at a minimum, Complainant must provide evidence of rights in a mark by way of continuous substantial use or achievement of secondary meaning.  Complainant did not provide any evidence of rights in the POSTE mark, therefore, it has not met the burden of Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a   government authority or agency for such rights to exist); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law). 

Complainant faces another problem in addition to the insufficiency of evidence submitted with its request to transfer <poste.biz>. It has not established that POSTE is a distinctive mark. The Panel finds the word POSTE is a generic term used in several languages with different meanings. Therefore, POSTE is incapable of acting as a common law trademark without a showing of significant secondary meaning.  See 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 contains two generic terms and is not exclusively associated with its business); Rollerblade, Inc v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration").

Other cases supporting the Panel’s finding include, Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); Tough Traveler, Ltd. v. Kelty Pack, Inc., D2000-0783 (WIPO Sept. 28, 2000) (finding that the Complainant could not establish a secondary meaning with the domain name, <kidcarrier.com>, because of the generic nature of the terms); CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning); and Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).

Complainant has failed to sufficiently establish that it has protectable rights in the word POSTE.  Accordingly, the Panel finds that Complainant does not have sufficient rights in the POSTE mark pursuant to STOP Policy ¶ 4(a)(i) to compel further analysis.

Because Respondent did not submit a Response, there is insufficient evidence to determine whether Respondent could establish rights or legitimate interests in the <poste.biz> domain name pursuant to STOP Policy ¶ 4(a)(ii).

DECISION

Having failed to establish a necessary element under the STOP Policy, the Panel concludes that Complainant’s requested relief is DENIED.

Accordingly, it is Ordered that the Complaint be DISMISSED.  There are no further challenges pending against this domain name under the STOP Policy.

James P. Buchele, Panelist

Dated: July 22, 2002

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