National Arbitration Forum

DECISION

 

Telecom Italia S.p.A. v. NetGears LLC c/o Domain Admin

Claim Number: FA0703000944807 

PARTIES

Complainant is Telecom Italia S.p.A. (“Complainant”), represented by Cristina Cazzetta, of Porta, Checcacci & Associati S.p.A., Via Trebbia 20, Milano 20135, Italy.  Respondent is NetGears LLC c/o Domain Admin (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <187.com>, registered with Moniker Online Services, Inc.  

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. 

The Honourable Neil Anthony Brown QC, Terry F. Peppard and David E. Sorkin as Panelists. 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2007. 

On March 30, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <187.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). 

On April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to [email protected] by e-mail. 

A timely Response was received and determined to be complete on April 24, 2007. 

On May 2, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC, Terry F. Peppard and David E. Sorkin as Panelists. 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  

PARTIES’ CONTENTIONS

A. Complainant 

Complainant alleges that the contentious domain name <187.com> should no longer be registered with Respondent but that it should be transferred to Complainant. 

It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to Complainant’s registered trademarks, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant. 

In support of its case on the first of these three elements, Complainant maintains that the domain name <187.com> is identical or confusingly similar to three registered Italian trademarks owned by Complainant, namely for 187 TELECOM ITALIA & DEVICE (Reg. No. 897336), 187 CARD TELECOM ITALIA & DEVICE (Reg. No. 983391), and 187 & DEVICE (Reg. No. 986056). It maintains that the trademarks were registered to reflect the numbers 187 and their use as a customer service number for the Italian telephone system and that such an association with those numbers has become widely known. 

Complainant then contends, to establish the second element, that Respondent has no rights or interests in the domain name because it has been passively holding the domain name for 8 years, showing a lack of any right or legitimacy in the domain name and also because it cannot bring itself within any of the provisions of Policy ¶ 4(c).  

Finally, Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because when Respondent registered the domain name, it had no legitimate interest in it, it must have known of the “187 project” because of the vast expenditure by Complainant in promoting it and because it has been using the website to which the domain name resolves to attract Internet users to the site by creating confusion as to its source, sponsorship, affiliation or endorsement. 

B. Respondent 

Respondent contends first that Complainant does not have a trade or service mark that is sufficient to support the Complaint. It says in addition that the disputed domain name is not identical or confusingly similar to any of the trademarks relied on by Complainant as they are trademarks in the form of graphical logos and as such are neither identical to the domain name nor sufficiently similar to it to give rise to any confusion. 

Respondent also claims it has rights and legitimate interests in the domain name because, before Complainant registered its trademarks and prior to any notification of the current dispute, Respondent registered and has been consistently using the domain name as part of a legitimate business, namely providing web hosting, web design, secure mail, retail shopping and search engine services. Initially, the domain name was used as an index to other Internet sites that Respondent had under construction. More recently, it has been used to generate search engine results tailored by the provider to the interests of users in particular countries and which vary from one to the other. In that regard, the results from searches of “187” have historically been more reflective of the connection between those numbers and music rather than any alleged connection with any telephone service provided by Complainant. 

Respondent also denies that it registered or is using the domain name in bad faith, as it registered the domain name prior to the registration of the trademarks, did not know of the alleged use of the numbers 187 in the Italian telephone service or of the claims by any party to rights based on those numbers and because it was not motivated by bad faith in registering or using the domain name.

FINDINGS

Complainant is an Italian company operating in telecommunications in Italy and overseas. It is the owner of the following trademarks registered in Italy: 

(a) Trademark Registered Number 897336, registered on June 12, 2003 for 187 TELECOM ITALIA & DEVICE; 

(b) Trademark Registered Number 983391, registered on November 11, 2005 for 187 CARD TELECOM ITALIA & DEVICE; and 

(c) Trademark Registered Number 986056, registered on December 13, 2005 for 187 & DEVICE. 

Respondent registered the disputed domain name on January 6, 1999.  

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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.” 

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

1. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

 

It is pivotal to the operation of the UDRP scheme that Complainant must identify a trademark or service mark and show that the disputed domain name is identical or confusingly similar to that mark. Subject to the qualification mentioned below, it appears that Complainant in the present case is relying on the three registered trademarks already described to meet this requirement. 

The registered trademarks. 

Complainant therefore says as its first proposition that the domain name <187.com> is identical to each of those trademarks. The Panel does not accept that proposition. The Panel, of course, is handicapped by not having seen any of the trademarks, for they have not been attached to the Complaint and Complainant has not accepted the invitation of Respondent to present them to the Panel with a Supplemental Submission. It is clear from the description of the trademarks in the Complaint, however, that each of the trademarks relied on is a figurative or graphic trademark which, as well as the numbers “187,” contains a device or visual representation. Although such a trademark may in appropriate circumstances be confusingly similar to a domain name, it cannot be identical to it, for it consists of something more than the mere figures or numbers that are contained in the domain name. The Panel has made a comparison between the disputed domain name and the description of the trademarks as set out in the Complaint and finds that the domain name is not identical to any of the trademarks relied on. 

The question remains, however, whether the domain name is confusingly similar to the trademarks or any of them. It is here that the omission of the trademarks themselves from Complainant’s evidence is a major defect in Complainant’s case. 

The Panel is of course cognizant of its ability to request further information of the Parties under Rule 12. In this case, however, the missing information is so central to Complainant’s case that the Panel is not prepared to excuse its omission from Complainant’s initial submission. 

As has been observed above, it is possible for a domain name to be confusingly similar to a figurative or graphic trademark. But there must be facts put before the Panel to enable it to make a rational comparison between the domain name and the trademark before it can reach such a conclusion. Even when such material is available, it is not an easy task for the Panel to perform, as is illustrated by the case cited by Complainant, Tesla Indus., Inc. v. Grossman, FA 547889 (Nat. Arb. Forum Dec. 5, 2005) and the other cases cited in that decision. 

The task was recently described in Deutsche Post AG v. NJDomains, D2006-0001, (WIPO Mar. 1, 2006), where the German Post Office argued that the domain name <post.com> was confusingly similar to its trademark that consisted of the word ‘Post,’ but with the addition of a prominent depiction of a hunting or post horn. The Panel said on that occasion: 

The question then is whether the domain name is identical or confusingly similar to this word/figurative mark. 

That type of question is not always easy to resolve, for the figurative or graphic part of a trademark cannot be translated into a domain name and a true comparison is therefore difficult to make. 

There are some obvious similarities between the two expressions, for they both contain the words ‘Post’.  However, that is where the similarities end.  Thereafter, it is necessary to make the comparison having regard to how a reasonable bystander would view the domain name and the trademark. The Panel is of the opinion that a reasonable bystander would not regard the domain name as confusingly similar to the trademark because the trademark is figurative and is an entirely different representation from the domain name. 

That is so because the trademark is dominated by the very prominent illustration of a horn.  It is true that some UDRP panelists have taken the view that in making the comparison presently under discussion, devices and similar figurative depictions should be ignored so that a straight comparison can be made between the words. Thus, the panelist in Sweeps Vacuums & Repair Ctr. v. Nett Corp., WIPO Case No. D2001-0031 said that “graphic elements . . . not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”  On the other hand, the panelist in Curvon Corp. v. Lauren Kallareou, WIPO Case No. D2001- 0565, said that “The Mark . . . is the whole of the composite of design matter and word matter [that] is shown in the registration document,” which is the same view taken by other panelists.  

The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying that test, the overall impression of the trademark in the present case is entirely different from that conveyed by the domain name. The pictorial representation of the horn is such a prominent and dominating part of the trademark that the result is a logo of the horn as well as the word ‘Post.’ It is highly artificial to contend that this is a trademark for the word ‘Post’ when it clearly is far more than that. 

Nor in the opinion of the Panel could a reasonable bystander looking at the domain name, which evokes the common generic word ‘Post,’ be confused into thinking that it was really referring to a coloured logo of a horn with the word Post added to it and the company whose logo it was. 

Accordingly, the Panel finds that the domain name is neither identical to nor confusingly similar to the German trademark registered number 39540404. 

Deutsche Post AG v. NJDomains, D2006-0001, (WIPO Mar. 1, 2006). Those remarks are equally applicable to the present case, for in reality Complainant is asking the Panel to conclude that the trademarks relied on are trademarks for “187” or trademarks similar to those numbers, without producing the trademarks themselves so that a fair comparison may be made. The Panel is therefore not prepared to conclude that the domain name is confusingly similar to any of those trademarks without having them produced in evidence and where, even on the limited material that has been presented, it is clear that the trademarks consist of something more than the numbers 187. 

Complainant is also asking the Panel to find that an objective bystander would be confused into thinking that the domain name was really referring to the figures “187” and a device of some sort without the Panel even being shown the device in question.  

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) requires the Panel to decide the case on the evidence and Paragraph 4(a) of the Policy requires that Complainant must prove each of the three requisite elements. 

Accordingly, the Panel concludes that the disputed domain name is not identical or confusingly similar to any of the registered trademarks relied on. 

The common law trademarks 

It seems from the wording of the Complaint that Complainant may also be relying on an unregistered trademark in the expression “187.” Complainant’s formal allegations are limited to the registered trademarks, but in at least one point in the Complaint, it asserts as follows: “Telecom Italia has expended substantial revenue in connection with the advertising and promotion of the 187 marks and the number 187 has acquired a common law significance.” 

The Panel will therefore consider whether Complainant has made out a case for a common law or unregistered trademark, for it is now clear that common law trademarks are sufficient to found proceedings under the Policy. Where, however, the alleged common law trademark consists of generic or common words, good evidence will be needed to show a significant secondary meaning and, above all, one associated with Complainant. See, for example, 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 contained two generic terms and was not exclusively associated with its business). 

Applying that test, Complainant’s evidence thus falls far short of what is required to establish a common law trademark. There is no real allegation in the Complaint and certainly no evidence to the effect that the numbers “187” by themselves are a mark associated with Complainant’s trade or a word or symbol to describe the origin of goods or services. The numbers are apparently a telephone number and constitute the access code for the information service of Complainant’s telephone service. Thus, they are correctly described in the Complaint as a “client service” and as a “single reference point of the client service” rather than as a brand. 

Moreover, the numbers are presented as such on Complainant’s website <187.it> and are not claimed to be a trademark. The numbers are, it is true, presented in one place on the website in combination with a logo, but even if that combined representation were a common law trademark, which is not the claim of Complainant, the domain name is neither identical to or confusingly similar to that representation. 

It is also instructive that Exhibit B to the Complaint, which is the “TELECOM ITALIA Group brochure,” promotes the company’s brands, but does not list the “187” service as one of them. 

More importantly, however, there must be serious doubt on the evidence as a whole, as to whether the numbers standing alone have the meaning contended for by Complainant, let alone whether that meaning is associated with Complainant. As Respondent says, Complainant must show that any common law rights it relies on arise in a common law jurisdiction and it has not done so. Indeed, its own evidence is to the effect that as well as its activities in Italy, France and Germany, it operates in Brazil, which is not a common law country. GLB Servicos Interativos S.A. v. Ultimate Search Inc, D2002-0189 (WIPO May 29, 2002). 

Nor, on the evidence, would Complainant be able to make out such a case, for it is far more likely that in common law jurisdictions the numbers in question have an entirely different meaning from that contended for by Complainant. The evidence tendered by Respondent and not contradicted by Complainant shows that in the United States, where Respondent is domiciled, the expression “187” has nothing to do with telephone services, but has an entirely different meaning, stemming as it does from Clause 187 of the Californian Penal Code which deals with the crime of murder. From there, it has worked its way into popular culture, particularly of the genre known as “Gangster Rap” where again it is synonymous with murder and it has also been used as the title of a popular movie and songs, television shows, wrestling allusions and even a drink. With the internationalization of culture, it must be assumed that such usage has spread to other countries. 

It is equally instructive that Exhibit F to the Response shows that when Respondent’s webpage is opened and viewed from the United States, it reveals a host of references to music, videos, “Police Code 187” and such like and none to telephone services in Italy or anywhere else. When the page is opened in Australia, the result is the same. 

The Panel must admit, however, that to an older generation, “187” refers to Proposition 187 which was a referendum proposal put to the electors of California in 1994, the burden of which was a law to deny social services, health care, and public education to illegal immigrants. Although the measure was passed and then declared unconstitutional, it was not abandoned until July 1999 and in the meantime it had generated very wide international publicity. Accordingly, it is much more likely that when the domain name was registered on January 6, 1999, at the height of this controversy, it would have been taken by residents in at least some common law jurisdictions to be referring to the referendum and the controversy surrounding it. 

But whatever of these alternative meanings is accepted, or even none of them, the Panel is not satisfied on the evidence that the numbers, by themselves, have a secondary meaning that is sufficiently clear that they invoke the narrow use in the Italian telephone service contended for by Complainant. 

Accordingly, Complainant has not established the common law trademark that it claims.  

Complainant has therefore failed to make out the first of the three elements that it must establish.

Rights or Legitimate Interests and Registration and Use in Bad Faith

 

In view of the findings already made it is not strictly necessary to deal with the other two elements. It would be apparent, however, from the findings of the Panel that it would be impossible on the evidence for Complainant to make out either of the remaining two elements. As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.  

For the same reason, Respondent could not be said to have registered or used the domain name in bad faith. That is so because on the evidence it would be entirely unjustified to draw the inference that Respondent registered the domain name in 1999 for reasons that had anything at all to do with Complainant, let alone for some improper motive.   

DECISION

For all of these reasons, the Panel concludes that relief shall be DENIED. 
 

The Honourable Neil Anthony Brown QC

Presiding Panelist 

Terry F. Peppard

Panelist           

David E. Sorkin

Panelist 
 
 

Dated: May 16, 2007