WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ITT Manufacturing Enterprises Inc. v. IT&T AG
Case No. D2001-0166
1. The Parties
The Complainant is ITT Manufacturing Enterprises Inc., a Delaware corporation with its principal place of business at Wilmington, Delaware, U.S.A. The Complainant is represented by Mr. Peter A Abruzzese of Kramer, Levin, Naftalis & Frankel LLP, Attorneys of New York, N.Y., U.S.A.
The Respondent is IT&T AG, of Zug, Switzerland. The Respondent is represented by Mr. Ueli Grüter, attorney-at-law, Raaflaub Attorneys of Zurich, Switzerland.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").
3. Procedural History
The Complaint submitted by ITT Manufacturing Enterprises Inc. was received on January 30, 2001, (electronic version) and February 1, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").
On March 2, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.
Indicate the current status of the domain name.
By email dated March 5, 2001, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration .
The Respondent is shown as the "current registrant" of the domain name at Bahnhofstrasse 32, Zug, 6300, Switzerland.
The administrative contact is M Stevan at the same address.
NSI�s 5.0 Service Agreement is in effect.
The domain name registration is currently in "Active" status.
The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI�s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Amended Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on March 9, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a three-member panel: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on March 29, 2001, (electronic) and April 2, 2001, (hard copy). A Reply to the Response was filed by the Complainant on April 12, 2001.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Professor Jeffrey M. Samuels of the University of Akron Ohio Law School and Dr. Thomas Legler of Python Schifferli Peter and Partners of Geneva to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center a statement of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 23, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 7, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant, ITT Manufacturing Enterprises Inc. is a wholly owned subsidiary of ITT Industries, the successor to ITT Corporation (collectively "ITT"), the original owner of the trade name and mark ITT®.
ITT Corporation began in the 1920s, under the corporate name International Telephone and Telegraph Corporation. The operations of International Telephone and Telegraph included a number of telecommunication companies that were formerly owned and operated by the Western Electric Company. International Telephone and Telegraph Corporation, (commonly referred to as ITT), changed its name in 1962, to ITT Corporation.
On December 30, 1985, ITT and Compagnie G�n�rale d�Electricit� formed the joint venture "Alcatel Alsthom" by combining the telecommunication and consumer electronic businesses of both companies. ITT, Alcatel, their subsidiaries and licensees, continued to use the ITT® mark in a wide range of products and services in such businesses as telephone directories, consumer electronics, and telecommunications, educational services, insurance, hotels, automotive, defense and electronics, fluid handling, and casino gaming.
In December 1995, ITT Corporation was restructured into three separate companies, namely ITT Industries Inc., ITT Hartford Group Inc. and a newly incorporated ITT Corporation. The new ITT Corporation included as one of its subsidiaries ITT Sheraton Corporation. The original ITT Corporation was merged into and changed its name to ITT Industries Inc.
From December 1995 until November 1999, the trade name and trademark ITT® was owned by ITT Sheraton Corporation, a wholly owned subsidiary of the new ITT Corporation. During that period, ITT Sheraton Corporation licensed to Complainant and ITT Hartford Group Inc. the rights to use the mark ITT® for a broad range of products and services, including exclusive rights in their respective fields of business; exclusive rights to use certain trade names incorporating the term ITT; and the right to grant sublicenses to use the ITT mark to their subsidiaries. Collectively, those fields of business that continued to use the ITT mark included telephone directories, consumer electronics, and telecommunications, educational services, insurance, hotels, automotive, defense and electronics, fluid handling, and casino gaming.
In November 1999, ITT Sheraton Corporation assigned to Complainant ownership of the trade name and mark ITT®, and numerous other trade names and marks incorporating the term ITT and the outstanding licenses thereto, and the goodwill associated therewith.
ITT, its predecessors in interest and their licensees have used and continue to use the trade name and mark ITT® and numerous other trade names and marks incorporating the term ITT extensively throughout the world on a wide variety of goods and services including electronic components, automotive products, defense and military systems, telecommunications, engineering, technical and advisory services, education services and many other services and products.
ITT, its predecessors in interest and their licensees have used the ITT® mark since at least as early as the 1960s, in the United States and throughout the world, and have promoted the ITT® mark in connection with a wide range of products and services in the United States and throughout the world since the 1960s.
ITT owns more than 700 valid and subsisting trademark and service mark registrations for marks incorporating the ITT® mark in 140 countries and jurisdictions throughout the world. Such trademark registrations include United States Federal Registration Nos. 1,178,512; 688,679; 892,234; 1,047,873; 1,299,968; 1,698,663; 1,642,007; 1,889,609, which cover a broad variety of goods and services, which include telephone and telecommunications services and equipment and related engineering and advisory services. ITT also owns Swiss Trademark Registration Nos. 417,320; 393,424; 326,640 for the ITT® mark in connection with a wide assortment of goods and services including business information and directory services and telecommunications services, and Swiss Registration No. 360,293 for the mark ITT WORLD DIRECTORIES® which covers printed matter.
The ITT® mark is advertised extensively throughout the world via print, television, radio and other advertising. Such September 1998, ITT and its affiliated companies have expended approximately $40,000,000.00 (U.S.) in connection with the advertising and promotion of goods and services offered under the ITT® mark.
In 1999, ITT Industries Inc. and its subsidiaries realized annual sales and revenues in excess of $4.6 billion (U.S.) resulting from its products and services offered in connection with the ITT® mark.
During the period of 1989 through 1998, ITT World Directories Inc., an ITT affiliate, used the ITT name and mark in connection with telephone directors, which were distributed in several countries in Western Europe. From 1989 to 1996, such directories were distributed under the ITT Promedia name; and from 1995, through 1998, with the ITT® logo. In addition, ITT Thomas Publishing Europe N.V., a joint venture between ITT and Thomas International Publishing Company Inc., published a Pan-European business telephone directory using the ITT® logo that was distributed in Europe in 1995/1996.
ITT owns trademark registrations in Australia, Greece, Hong Kong, New Zealand, Oman, Singapore, Thailand, and most notably, Switzerland (Reg. No. 417,320), covering marks including ITT®, INTERNATIONAL TELEPHONE & TELEGRAPH® and ITT WORLD DIRECTORIES® mark for use in connection with telephone and business directories, databases and related information services.
Respondent is a corporation registered as IT&T AG in the canton of Zug, Switzerland in 1994. It has traded as such since then. It registered the disputed domain name on August 9, 1997.
5. Parties� Contentions
Complainant:
(a) Respondent is not a licensee of Complainant and was at no time authorized by Complainant to use the ITT® trademark or to register the domain name.
(b) Respondent operates a website on which it has published commercial communications directories and databases since 1994. The website prominently bears the name "IT&T".
(c) Since 1997, Respondent has engaged in a pattern of sending to numerous businesses worldwide deceptive unsolicited mass mailings under the name IT&T or IT&T AG. A selection of such mailings, including one such mailing addressed to Complainant, were attached to the Complaint. These mailings appear to be bills or invoices for previously ordered listings in Respondent�s putative business directory. The cost recited in these documents for such a listing is generally in the area of $1,000.00 (U.S.). Although the fine print in the mailing states that it is an offer for a listing, the overall impression created by the document suggests that it is an invoice or bill for services previously ordered. Given the misleading appearance of the mailings, many recipients are likely to pay the amount listed on the "invoice" without investigating the legitimacy of the document.
(d) Respondent�s deceptive mailings attracted the attention of the U.S. Postal Service, which initiated an administrative action against Respondent. On June 3, 1998, a Tentative Decision and Order of the Postal Service held that Respondent, by virtue of its deceptive mailings, was "engaged in conducting a scheme or device for obtaining money or property through the mail by means of false representations" in violation of 39 U.S.C. � 3005(a). Consequently, Respondent was ordered to cease and desist the transmittal of its mailings through the U.S. Postal Service. On January 27, 1999, this Tentative Decision and Order was affirmed and made a Final Decision and Order of the Postal Service. In re IT&T AG, P.S. Docket No. FOR 98-227. Nevertheless, even following the issuance of these orders, Respondent has apparently continued sending its deceptive, and illegal, mailings.
(e) Respondent�s activities have been the subject of numerous expos� articles in newspapers around the world, warning businesses about the deceptive invoices. Consumer watchdog groups have also issued warnings about Respondent�s illegal activities.
(f) Respondent has never actually published or distributed any copies of a directory of business listings.
(g) Respondent registered and is using the domain name at issue in this action as a "front" for these deceptive and illegal mailing activities by creating the appearance that it is operating a legitimate business.
(h) The domain name is identical or confusingly similar to marks in which the complainant has rights.
(i) The disputed domain name differs from Complainant�s mark only in the addition of the German-language generic business identifier, "AG", followed by the generic top-level domain extension. These differences do nothing to distinguish Respondent�s domain name from Complainant�s mark.
(j) Respondent�s use of the ITT® in conjunction with the "AG" symbol is likely to increase confusion by misleading consumers into believing that the domain name may be owned by a German subsidiary of ITT.
(k) Such likelihood of confusion is amplified by the goods that Respondent purports to sell, namely, business directories. Complainant and its licensees have developed substantial goodwill in the ITT® mark in connection with telephone directories throughout Western Europe. Furthermore, Complainant owns a number of trademark registrations, notably in Switzerland, covering telephone directories and related information services. The close similarity between these goods and services of Complainant and the products supposedly offered by Respondent under the domain name in dispute creates a strong likelihood of consumer confusion.
(l) Respondent has no rights or legitimate interests in respect of the domain name.
(m) Respondent registered and uses the domain name in furtherance of its deceptive and illegal mailing scheme. This activity cannot reasonably be characterized as a "bona fide offering of goods and services".
(n) Use of the name Ittag constitutes infringement and dilution of ITT�s marks. Such use cannot establish rights or legitimate interest in the domain name by Respondent.
(o) Respondent may establish rights or legitimate interests in the name if it can show it is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Because Respondent registered and used the domain name with the specific intent of reaping commercial gain by misleadingly diverting consumers and tarnishing the trademark and service mark at issue, it cannot claim protection under this factor.
(p) Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion.
(q) Respondent selected the name IT&T AG and registered the corresponding domain name for the clear purpose of causing consumer confusion as to the source of its business directories. When Respondent registered the domain name in question in August 1997, among the leading products offered by Complainant and its licensees, were telephone directories. Respondent�s selection of the name closely similar to ITT�s registered trademark for use in connection with its putative offer of goods directly related to those of ITT creates the strong inference that Respondent�s intention was to profit by attracting ITT�s customers to its site by creating a false impression of source, sponsorship, affiliation, or endorsement of its site by Complainant.
(r) Respondent has registered the domain name primarily for the purpose of furthering its deceptive and illegal mailing schemes.
(s) Respondent has used the website to which the website resolves as a "front" in furtherance of its deceptive and illegal trade practices.
Respondent:
(a) It denies that the Complainant�s ITT mark is famous and known worldwide. It alleges the marks are unknown in Switzerland.
(b) There is no proof Complainant�s directories were published in Switzerland.
(c) The mailings which the Complainant describes were made separately from the Internet.
(d) The Complainant�s allegations are libellous and constitute unfair competition.
(e) IT&T AG is Respondent�s legally registered trading name. It is pronounced "IT&T A G" in Switzerland but would be pronounced "ittag" in English-speaking countries.
(f) Complainant did not oppose registration of the Respondent�s company name.
(g) Respondent�s directories can be ordered on-line and by other means.
(h) The Complainant is guilty of reverse domain name hijacking and the Panel should so hold.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- 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;
- That the Respondent has no legitimate interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the view of the Panel the disputed domain name is not confusingly similar to the Complainant�s marks. The Internet user would pronounce the domain name in two syllables as "etag" not i-t-t-a-g. Nor would the national user recognize the letters "a g" in the name as signifying the Swiss and German designation of a limited liability corporation. Only those familiar with German and Swiss business practice would perhaps recognize the letters "A G" as signifying a business corporation.
The Respondent has been using its company name in Switzerland since 1994, without challenge from the Complainant or its subordinates or licensees. Moreover, the letters "IT" are commonly used to signify information technology and there must be many domain names that include those letters.
The view of the Panel that the Complainant has not proved confusing similarity between the disputed domain name and the Complainant�s mark is sufficient to resolve the case in the Respondent�s favor. It is not necessary therefore to decide whether the Complainant has proved the other two criteria under the Policy.
The Panel notes from the decision of the U.S. Postal Service allegations that the Respondent may have been guilty of sending invoices for unsolicited goods and services. This activity is not material. The Policy is concerned with the criteria therein. A Panel cannot sit in judgment on the business activities of parties who come before it except where such activities contravene the Policy. Disputed claims relating to fair trading / consumer laws or trademark infringements are better suited for determination by a Court than under the Policy.
7. Reverse Domain Name Hijacking
The Panel does not consider that a case of reverse domain name hijacking has been made out. The Complainant�s case, while not strong on the first criterion, in the Panel�s view, may have had some strengths on the second and third criteria. The Panel accordingly declines to make a declaration against the Complainant.
8. Decision
The Panel accordingly decides:
(a) That the Complaint be denied.
(b) That there be no finding of reverse domain name hijacking against the Complainant.
Hon. Sir Ian Barker QC
Presiding Panelist
Professor Jeffrey M. Samuels
Panelist
Dr. Thomas Legler
Panelist
Dated: May 6, 2001
Full & Egal Universal Law Academy