Omnitel Pronto Italia S.p.A. v. Carlo Dalla Bella

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Omnitel

Pronto Italia S.p.A. v. Carlo Dalla Bella

Case No.

D2000-1641

1. The Parties

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.

2. The Domain Name and

Registrar

The contested domain name

is "omnitel2000.com", registered with Tucows.com Inc., 96 Mowat Avenue,

Toronto, ON, M6K 3M1, Canada.

3. Procedural History

On November 24, 2000, the

WIPO Arbitration Center received the complaint by e-mail. The hardcopy version

was received on November 29, 2000.

On December 22, WIPO requested

verification of the registrar, from NSI, the registrar specified in the complaint.

On January 1, 2001, WIPO

notified the complainant that the registrar specified was not correct.

On January 4, 2001, the

complainant notified WIPO that the respondent had changed the registrar.

On January 11, 2001, WIPO

requested verification of the new registrar, Tucows.com.

On January 12, 2001, Tucows

confirmed the registration.

On January 12, 2001, WIPO

verified the formal validity of the complaint (including payment of fees).

On January 15, 2001, WIPO

notified respondent of the complaint.

On February 8, 2001, WIPO

notified respondent that it was in default.

On March 6, 2001, WIPO

appointed the administrative panel and transmitted the file to the panel.

4. Factual Background

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".

5. Parties’ Contentions

A. Complainant

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.

B. Respondent

The respondent has defaulted

and hence makes no contentions.

6. Discussion and Findings

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.

I. The procedural issue

related to the default of the respondent

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.

II Analysis of the

evidence in this case

Similarity between the

trademark and the domain name

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.

Lack of rights or legitimate

interests in the contested domain name

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.

Bad faith registration

and use of 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.

7. Decision

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