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Compañia Dominicana de Telefonos v. Intercode Telephone Communications [2001] GENDND 575 (21 March 2001)

WIPO Arbitration and Mediation Center

The Complainant is Compañia Dominicana de Telefonos, a Dominican corporation with its principal place of business in Santo Domingo, Dominican Republic. The Complainant is represented by Patricia Selma Villegas Garcia, attorney-at-law, of Santo Domingo, Dominican Republic.

The Respondent is Intercode Telephone Communications, a United States corporation having its principal place of business in El Paso, Texas. The Respondent is represented by Mr Stephen H. Sturgeon, of Stephen H. Sturgeon & Associates P.C., attorneys of Washington D.C., U.S.A.

The domain name at issue is <codetel.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI"). It was registered on November 16, 1997.

The original Complaint having some deficiencies, an Amended Complaint, submitted by Compañia Dominicana de Teléfonos was received on February 5, 2001, (electronic version) and February 7, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").

On January 30, 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 Name Dispute Resolution Policy ("the Policy") was in effect.

- Indicate the current status of the domain name.

By email dated February 1, 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 <codetel.com>.

- The above Respondent is shown as the "current registrant" of the domain name at the above address.

- The administrative and billing contact is Nasim Zahrin, whose address is care of the Respondent.

- NSI’s 5.0 Service Agreement is in effect.

- The domain name registration <codetel.com> is currently in "Active" status.

- The NSI has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy 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 Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules"), the WIPO Center on February 9, 2001, transmitted by post-courier and by email a notification of 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 single panel member: 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 1, 2001.

- On March 10, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

- On March 10, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Barring exceptional circumstances, a decision from the Panel is due on March 25, 2001.

- 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.

- The language of the administrative proceeding is English, being the language of the registration agreement.

The Complainant owns service marks registered in the United States and the Dominican Republic for the expression ‘codetel’. The expression ‘codetel’ refers to the first letters of the first two words of the Complainant’s name. Its marks all relate to the telecommunication services which it provides in the Dominican Republic.

(1) The domain name <codetel.com> is identical or confusingly similar to the service mark and trademark CODETEL in which the Complainant has prior rights; and which constitute a reproduction of the mark of the Complainant and cause a likelihood of confusion with consumers;

(2) The Respondent has no rights or legitimate interests in respect of the domain name CODETEL in virtue of the following:

(i) It is not identified with the name CODETEL;

(ii) It does not operate any business or commercial activity under the name CODETEL;

(iii) It does not offer to the consumer any goods or services under a trademark or service mark known as CODETEL;

(iv) It does not have any prior rights over the trademark and service mark CODETEL in the United States of America;

(v) It does not have an authorization of the Complainant in order to use its service and trademark CODETEL;

(vi) The word or name CODETEL corresponds to the first two letters of the three words in the Complainant’s name COMPAÑIA DOMINICANA DE TELEFONOS, a name or word that creates a direct connection with the Complainant.

(1) Since November 16, 1997 Mr. Zahran has been developing a business to engage in software development for marketing purposes. This fact is evidenced by his testimony in his Affidavit (Attachment A to the Response).

(2) In July of 2000, Mr Zahran entered into a partnership with one Oscar Loayza. Mr Loayza assisted with the development of the business and with the development of marketing material, concepts and business plans for the business. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A) and (2) by the testimony of Oscar Loayza in his Affidavit (Attachment B).

(3) Prior to notification of the domain name dispute, Mr Zahran conducted research with respect to the concepts and the business potential of the business activity. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A), and (2) by Attachment C which is a magazine article of November 14, 2000 which Mr Zahran has used in the development of his business strategy and (3) by Attachment D consisting of a second magazine article (from the magazine E-3-B of August of 2000) which Mr Zahran has also used in the development of his business strategy.

(4) Prior to the notification of the domain name dispute, Mr Zahran developed strategies and marketing plans. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A), and (2) by Attachment F that consists of the marketing plan that has been developed for the business.

(5) Prior to the notification of the domain name dispute Mr Zahran developed a logo for his business activities. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A) and (2) by copy of the logo affixed hereto as Attachment F. The logo uses the word ‘Code Tel’.

(6) Prior to the notification of the domain name dispute, Mr Zahran negotiated for hosting services. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A), and (2) a copy of the correspondence (Attachment G).

(7) Prior to the notification of the domain name dispute, Mr Zahran planned the installation of communication wiring for his office for the month of March 2001. This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment A), and (2) a copy of the correspondence (Attachment H).

Although the Complainant did not specifically plead bad faith, the Respondent did not act in bad faith for the following reasons:

(1) Neither Mr Zahran nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark CODETEL (Attachment A & Attachment B).

(2) Mr Zahran has never sold or attempted to sell any domain name (Attachment A & Attachment B).

(3) Mr Zahran has not registered any other domain name in his name or in the name of any other person or organization except for domains directly related to his business activities (Attachment A & Attachment B).

(4) Mr Zahran has not registered the domain name for the purpose of disrupting the business of Complainant or any competitor (Attachment A & Attachment B).

(5) Mr Zahran has not attempted to or intended to attract, for commercial gain, internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

There has been no evidence presented by Complainant to show one of the circumstances of bad faith listed in the Policy or any other circumstances of bad faith. Therefore, the Complainant has therefore failed to establish this element.

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.

The domain name <codetel.com> is, in the judgment of the Panel, identical to the Complainant’s mark.

The Complainant gave the Respondent no rights or legitimate interests in the disputed domain name. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(a)(ii) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:

(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.

The evidence (including affidavits) shows that the Respondent, before any notice to it of the dispute (which was when the Complaint was served), made demonstrable preparations to use the domain name in connection with a bona fide offering of services. The evidence submitted with some care by the Respondent makes this clear. Possibly there could be some action to be taken by Complainant in United States Courts for alleged trademark infringement but the Panel must decide the case strictly on the Policy criteria. Respondent must succeed under the second criterion.

Nor is there any proof of bad faith on the part of the Respondent in registering or continuing to use the name. There was no "cease and desist" letter, nor any evidence from which it could be inferred that the Respondent knew of the Complainant’s activities or its marks. The situation disclosed is quite different from the usual case of either an opportunistic cyber-squatter or a respondent who concocts some far-fetched excuse about creating a business with little hard evidence to support the contentions. Here the Respondent has gone to some trouble to prove its bona fides by including affidavit evidence in support of its case. Its explanation is plausible.

Accordingly the Panel considers that the Complainant has failed to prove the second and third criteria under the Policy.

The Panel therefore declines to order any transfer of the disputed domain name to the Complainant.

Hon. Sir Ian Barker QC
Sole Panelist

Dated: March 21, 2001