Telekom Austria AG v. Reginaldo Mercatello

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telekom Austria AG v. Reginaldo Mercatello\

Case No. D2002-0235

1. The Parties

1.1 The Complainant is Telekom Austria AG, a corporation by shares incorporated

in Vienna, Austria.

1.2 The Respondent is Mr. Reginaldo Mercatello, resident of Ardore,

Italy.

2. The Domain Name and Registrar

2.1 The domain name subject matter of the Complaint is <telekomaustria.info>.

2.2 The Registrar of the disputed domain name is CORE Internet Council of Registrars

("the Registrar", respectively "CORE").

3. Procedural History

On March 11, 2002, the WIPO Arbitration and Mediation Center ("the Center")

received the Complaint by e-mail; on March 13, 2002, the Center received

the hard copy version.

On March 19, 2002, the Center sent a Request for Registrar Verification to

the Registrar and on April 3, 2002, the Registrar responded, (i) confirming

that said domain name <telekomaustria.info> is registered with the Registrar,

(ii) confirming that the Respondent is the current registrant of the said domain

name, (iii) providing details of the Administrative contact, Technical Contact

and Zone Contact for said registration, (iv) confirming that the Uniform Domain

Name Dispute Resolution Policy ("the Policy") is in effect in respect

of said registration, (v) indicating that, as far as the Registrar is concerned,

the said registration was active and (vi) indicating that the language of the

registration agreement is English.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute

Resolution Policy ("the Rules") and Paragraph 5 of the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental

Rules") the Center reviewed the Complaint to ascertain whether it satisfied

the formal requirements of the Policy, the Rules and the Supplemental Rules

and that payment in the required amount had been made to the Center by the Complainant.

On April 5, 2002, the Center sent a Notification of Complaint and Commencement

of Administrative Proceedings to the Respondent. Said Notification was sent

to the Respondent by courier (with attachments) and by e-mail (Complaint without

attachments). A copy of said Notification was sent to the representative of

the Complainant by e-mail (without attachments). Further copies of said Notification

were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN")

and to the Registrar by e-mail (without attachments).

Said Notification of Complaint and Commencement of Administrative Proceeding

inter alia advised the Respondent that an Administrative Proceeding

in accordance with the Policy had commenced on April 5, 2002, and

that the Respondent was required to submit a Response to the Center on or before

April 25, 2002.

The Respondent submitted a Response by e-mail and by registered mail on April 24, 2002.

On April 26, 2002, the Center sent by email to the representatives of both

the Respondent and the Complainant an "Acknowledgement of Receipt of Response",

confirming that the Response has been received on April 26, 2002,

and that the Center would proceed to appoint the Administrative Panel.

On May 3, 2002, Respondent filed by email an objection against the date indicated

by the Center as being the date of receipt of Response, attaching a proof of

mailing. A copy of this objection was sent by email to the representative of

Complainant.

On May 3, 2002, Complainant submitted to the Center an additional statement

with the regard to the Response filed by Respondent.

On May 8, 2002, after having received a Statement of Acceptance and Declaration

of Impartiality in accordance with Paragraph 7 of the Rules, the Center proceeded

to appoint Mr. Michael Bernasconi as Administrative Panel (Sole Panelist).

On May 9, 2002, the case file was transmitted by email and by courier to the

Administrative Panel. In terms of Rule 15(b), in the absence of exceptional

circumstances, the Panel was required to forward its decision by May 23, 2002.

On May 21, 2002, the Respondent submitted an additional statement. On May 22, 2002,

such additional statement together with some Annexes was forwarded by email

from the WIPO Center to the Panel. Because of these additional statements, the

Panel informed the WIPO Center that up to two additional weeks were required

by the Panel to forward its decision.

The Panel has independently determined and agrees with the assessment of WIPO Center

that the Complaint meets the formal requirements of the Rules and the Supplemental

Rules. In the view of this Administrative Panel, the Response has been timely

filed. Further, this Administrative Panel is of the view that proper procedures

were followed and the Administrative Panel was properly constituted. The language

of the administrative proceeding is English, being the language of the registration

agreement.

4. Factual Background

The Complainant is the former Austrian incumbent telecommunications provider.

Complainant’ Group is also active in other countries, for example in the Czech

Republic. Complainant owns a trademark TELEKOM AUSTRIA that was registered in

1995. Further, "Telekom Austria" is also the corporate name of Complainant.

Respondent is an individual residing in Italy. He registered the domain name

<telekomaustria.info> on October 2, 2001. Even though, according

to the documentation filed by the parties, the status of the registration is

"active", under the disputed domain name no active website can be

found.

5. Parties’ Contentions

5.1 Complainant

The disputed domain name is identical to the Complainant’s corporate name as

well as to a trademark filed by Complainant in 1995.

The Respondent has no rights or legitimate interests in the domain name; he

has not established any rights in the trademark TELEKOM AUSTRIA nor is he making

any legitimate use of the domain name nor he is offering services or goods by

using said trademark or said domain name. The Respondent has not received any

license nor any other right to use Complainant’s trademark.

As the Complainant’s name and trademark are well known in Europe, Respondent

knew of them when he registered the domain name at stake.

Prior to filing its Complaint, Complainant contacted the Respondent twice and

requested the transfer of the domain name with an offer to reimburse Respondent

for the costs arising out of such a transfer. Respondent did not reply to Complainant

letters.

5.2 Respondent

Firstly, Respondent is objecting to the power of the Administrative Panel in

this matter, claiming basically that he had not accepted, when registering the

domain name, the applicability, either of the Policy or of the Rules.

Secondly, Respondent ask to be granted a guarantee, to be provided by ICANN,

AFILIAS, CORE and TUONOME.IT s.r.l., for any and all damages that Respondent

may suffer if the disputed domain name shall be transferred to Complainant.

Finally, Respondent rejects Complainant's argument that he does not have any

legitimate rights in the domain name, basically arguing that he has made the

registration of it in accordance with the registration procedure. Respondent

denies any bad faith, claiming that it was not and it is not his intention to

sell the domain name to Complainant. In addition, Respondent states that he

is planning to use the domain name to provide information in relation with the

Austrian telecom market, e.g., on prices, quality and kind of telecom services

offered in Austria by Complainant and other telecom providers.

6. Discussion and Findings

6.1 The Reply of Complainant dated May 3, 2002, and the Statement

of the Respondent dated May 21, 2002

Paragraph 15(a) of the Rules instructs the Administrative Panel to decide a

complaint on the basis of the statements and documents submitted by the parties

in accordance with the Policy, the Rules and any other rules and principles

of the law that the Panel may consider to be applicable in the concrete case.

Further, Paragraph 12 of the Rules states that in addition to the complaint

and the response, a Panel may request, in its sole discretion, further statements

or documents from either of the parties.

In the present case, after receipt of the Response, the representative of Complainant

filed a written statement without having been asked to do so by the Panel. Similarly,

after receipt of the Reply of the Complainant, the representative of Respondent

filed a written statement without having been asked to do so by the Panel.

The Panel, after having reviewed the Complaint and the Response, does not consider

additional statements from either of the parties to be necessary. Although the

Panel did not request either of the additional statements filed by the Parties,

in accordance with Paragraphs 10 and 12 of the Rules, the Panel is free to take

into consideration the additional statement of Complainant dated May 3, 2002,

and the additional statement of Respondent dated May 21, 2002. Both

additional statements are, therefore, accepted by the Panel.

6.2 Exception of Jurisdiction

Respondent objections to the power of this Panel to review the present case

and to take a decision in accordance with the Policy, the Rules and the Supplemental

Rules are based on Respondent belief that he did not agree on the applicability

of said rules and that he did not enter into any contractual arrangements with

the Registrar, i.e. with CORE.

The arguments of Respondent are contradictory.

On one side, Respondent explicitly acknowledges and confirms to be as from

the first day of registration, the Registrant of the domain name <telekomaustria.info>.

Further, Respondent confirms himself that he, and no other private person

or legal entity, has indeed registered the domain name by "following the

provided procedures" (see Response, Page 9).

Against this background, Respondent acknowledges and confirms that all rights

and obligations that are afforded to the Registrant of the domain name <telekomaustria.info>

are of the Respondent himself. Indeed, Respondent acknowledges that the company

TUONOME.IT s.r.l. was responsible for only operating the registration

(see Response, Page 9). Indeed, according to the WHOIS documentation provided

by both parties, said Italian company results to be the billing and technical

organization only. Finally, the verification data provided by the Registrar

confirm that said Italian company, TUONOME.IT s.r.l., is not named as Registrant.

In addition, the documents provided by Respondent himself, as an attachment

to his sub-reply dated May 21, 2002, confirm that the technical organization

TUONOME.IT was acting in the name and on behalf of the Respondent. Indeed, one

can read in the Registration Information that "The registration

fee includes also the fees to be paid to the competent Registry" and that

"Your credit card [i.e., the card of the registrant] will only be charged

when we [i.e. TUONOME.IT] are completely sure that the Domain Name has been

registered on your behalf."

Under these circumstances, and based on the information provided by Respondent

and by the Registrar, the Panel has no reason to doubt that Respondent was and

is the Registrant of the disputed domain name. The fact that Respondent entered

into a second agreement with the company "TUONOME.IT" is, for this

procedure, irrelevant. Respondent knew and acknowledged (see sub-reply dated

May 21, 2002, page 2) that the CORE Registration Agreement was applicable

to all Customers of CORE. Respondent has himself filed evidence that he, and

not TUONOME.IT, was acting as Registrant.

Furthermore, Respondent himself acknowledged and confirmed having followed

all the applicable registration procedures (see Response, Page 9). This means,

and there is no reason not to believe in Respondent acknowledgement, that Respondent

did register the domain name with the Registrar following the usual procedure.

Whether Respondent did the concrete registration steps alone or through a representative,

is irrelevant. Finally, on its side, the Registrar confirmed that all CORE registration

agreements do refer to the Policy and the Rules.

For all these reasons, and based on the acknowledgments of the Respondent and

on the information provided by the Registrar, the Panel has no reason to believe

that Respondent did not enter into a registration agreement with the Registrar

and/or that Respondent did not accept the applicability of the Policy and of

the Rules. Accordingly, the Panel considers itself to have the authority to

take a decision in relation with the disputed domain name, under the Policy,

the Rules and the Supplemental Rules. The Panel recalls to Respondent the nature

of this administrative proceeding and that in accordance with Paragraph 4(k)

of the Policy this proceeding is not preventing the Respondent from submitting

the dispute at any time to a court of competent jurisdiction for independent

resolution.

6.3 The Guarantee Claim of Respondent

Respondent is asking the Panel to grant him a guarantee, to be provided by

ICANN, AFILIAS, CORE and by TUONOME.IT s.r.l.

According to Paragraph 4(i) of the Policy, the remedies available to a complainant

pursuant to any proceeding before an Administrative Panel shall be limited to

requiring the cancellation of a domain name or the transfer of a domain name

registration to the complainant. Accordingly, the remedies available to a respondent

are limited to the acceptance or the rejection of a complainant’s requests.

Against this background, the Panel does not have any authority to decide on

Respondent’s claim for a third party guarantee.

6.4 Transfer requirements

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) 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) The Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) The domain name has been registered and is being used in bad faith.

(i) Identical or Confusing Similarity

It is undisputed that Complainant corporate name is "Telekom Austria" AG. Further,

it is undisputed that Complainant is owner of a trademark TELEKOM AUSTRIA.

In the view of the Panel, the disputed domain name is identical to the Complainant’s

trademark. Further, being that the domain name is also identical to the corporate

name of Complainant, it is highly probable that the disputed domain name would

be associated in the public’s mind with the Complainant and its trademark.

The Complainant has therefore succeeded in proving that a risk of confusion

is very likely. The first criterion, as per Paragraph 4(a) of the Policy, is

established.

(ii) No Rights or Legitimate Interests

It is undisputed that Complainant has not authorized Respondent to use Complainant’

trademark nor to seek the registration of a domain name incorporating said trademark.

The Respondent allegedly is planning to provide information on the Austrian

telecom market in a website under the disputed domain name.

Whether such a preparation to use the domain name is proven or not is, in any

event, irrelevant. Would the Respondent offer indeed the services as described

in the Response, the Panel considers that such an offer would not be a bona

fide offering of goods or services as set out in Paragraph 4(c) of the Policy.

As a matter of fact, the Respondent admitted to be aware of Complainant’s activities

in the telecom market. By running a website under a domain name identical to

Complainant’s trademark and corporate name for his own use, Respondent would

abuse Complainant's reputation and good-will in its name and trademark to divert

consumers to his website. That could not be considered as a good faith use of

the domain name in connection with a bona fide offering of services nor

could it be considered a legitimate non-commercial or fair use of the domain

name without intent for commercial gain.

In these circumstances, the Panel concludes that Complainant has established

that Respondent has no rights or legitimate interests in respect of the disputed

domain name. The second requirement of Paragraph 4(a) of the Policy is therefore

satisfied.

(iii) Bad Faith

The third element of Paragraph 4(a) of the Policy, i.e., the issue of a bad

faith registration and use of the disputed domain name, is very often the most

critical one. In the past, administrative panels have recognized that such bad

faith occurred when through the registration of the disputed domain name a respondent

had attempted to divert users to its website for commercial gain by creating

and exploiting confusion between the disputed domain name and the other party's

trademark.

In the present case Respondent admitted that he has chosen the domain name

to provide services that, at least for a very substantial part, are in strict

association with Complainant’s services. Nevertheless, Respondent denies that

he registered the domain name with the intention to misleadingly attract users

to his website.

Even though Respondent is not a competitor of Complainant, it appears to the

Panel that it is clear that Respondent deliberately choose the disputed domain

name so as to give to consumers the incorrect impression of association with

the Complainant, thereby creating a likelihood of confusion with Complainant

as to the source and endorsement of the information provided under the website

of Respondent when the latter will be operated under the disputed domain name.

By finding for instance information under the domain name on prices of services

offered by Complainant and by other Austrian telecom providers, consumers would

be in the position of believing they have found "official information"

of Complainant. The same would apply, for instance, in relation to statements

on important legal issues like unbundling that would appear in a website operated

under the disputed domain name. Internet users would have reason to believe

that Complainant is sponsor, source or author of such statements.

Given the intention acknowledged by the Respondent to use the domain name for

such a website as described in the Response, the Panel finds bad faith in the

registration of the domain name by the Respondent.

It could seem to be less clear whether the Complainant has proved that the

Respondent is also using the domain name in bad faith, since no websites are

yet operated under the domain name. However, Respondent explicitly admitted

that he is actively blocking the domain name in view of the establishment of

a website, such establishment being in process of preparation. As described

above, the use of the disputed domain name for the allegedly contemplated website

would represent without reasonable doubt an unfair use of a specific domain

name to divert Internet users to the website and to mislead users in relation

with the source of the information provided in the website.

Under these circumstances, and taking in consideration that the Respondent

has not provided any evidence whatsoever of any actual or contemplated legitimate,

good faith use by himself of the domain name, the Panel considers that the Respondent

holding of the domain name amounts to the Respondent acting in bad faith.

The third requirement of Paragraph 4.a of the Policy is therefore satisfied.

7. Decision

The Administrative Panel decides that the Complainant has proven each of the

three requirements of Paragraph 4.a of the Policy. Accordingly, with specific

reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the

Administrative Panel directs that the disputed domain name <telekomaustria.info>

shall be transferred to Complainant.

Michael A.R. Bernasconi

Sole Panelist

Dated: June 5, 2002

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