Olivetti S.p.A. v. CPIC Net

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Olivetti

S.p.A. v. Mr. Syed Hussain

Case No.

D2001-0326

1. The Parties

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 15th Street, Closter, NJ 07624, USA.

2. The Domain Name

and Registrar

The domain name at

issue is <olivettitecnost.com> ("Domain Name"), registered

with Register.com ("Registrar") of 575 8th Avenue,

11th Floor, New York, NY 10018, USA.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

A. Complainant

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.

B. Respondent

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.

6. Discussion and

Findings

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.

Identical or confusingly

similar Domain Name: Policy 4(a)(i)

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's Rights or

Legitimate Interests in the Domain Name: Policy 4(a)(ii)

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.

Domain Name Registered

and Used in Bad Faith: Policy 4(a)(iii)

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:

"Dear Spada

Ulisse

Would you like to

buy? If so please make an offer. Few weeks ago we were offered $ 10,000

by some one from Italy to sell this domain.

High regards Syed"

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.

7. Decision

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