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Vodafone Group, PLC v. Steve Ruston [2001] GENDND 931 (11 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is indicated in the Complaint as Vodafone Group, PLC ("Vodafone"), a company incorporated in England and Wales, whose principal place of business is The Courtyard, 2-4 London Road, Newbury, Berkshire, RG14 1JX, England.

The Respondent is identified in the Complaint as Steve Ruston, with an address at 5 Verney Close, Bramshall, Uttoxeter, Staffordshire ST14 5NJ, England.

2. The Domain Name and Registrar

The disputed domain name is <vodafone.org> ("the Domain Name").

The Registrar is CORE, Internet Council of Registrars in Geneva, Switzerland. In a letter dated March 29, 2001, to the WIPO Arbitration and Mediation Center ("the Center"), CORE confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") has been CORE's policy since December 1, 1999, and applies to the Domain Name registered by Respondent on December 8, 1999.

On March 22, 2001, the Complaint, which is in the format required by the Policy, was filed electronically with the Center. The Complaint certifies that the Respondent and CORE were duly served by the Complainant.

On March 26, 2001, a hardcopy of the complaint was received by the Center.

On April 2, 2001, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.

On April 2, 2001, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier.

On April 24, 2001, having received no response to the Complaint from Respondent within the specified time in the Notification of Complaint, the Center notified the Respondent that it was in default.

On May 1, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Lynda Zadra-Symes of Newport Beach, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.

The Complaint asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Respondent registered the Domain Name with CASDNS on December 8, 1999 according to the WHOIS report provided by the Complainant.

Complainant Vodafone Group PLC is the largest wireless operator in the world by subscribers, and has a presence in 26 countries across five continents. At the end of December 2000, Vodafone had approximately 78.7 million proportionate subscribers and approximately 173 million venture customers.

Complainant has been using its VODAFONE trademark in the United Kingdom and elsewhere since 1986, and has developed substantial consumer recognition in that trademark for the goods and services described in its trademark registrations listed below:

Complainant is the owner of the following United Kingdom Trade Mark Registrations for the word mark VODAFONE, copies of which are attached to the Complaint:

Trade Mark No. 1215879 issued December 14, 1988, renewed March 30, 1991, for "Electrical, electronic, telecommunications and telephonic apparatus and instruments; parts included in Class 9 for all the aforesaid goods."

Trade Mark No. 1223053 issued January 17, 1990, renewed March 8, 1991 for "Electrical, electronic, telecommunications and telephonic apparatus and instruments; radio telephones; mobile telephones; parts included in Class 9 for all the aforesaid goods."

Trade Mark No. 1291652 issued November 4, 1986, renewed November 4, 1993, for "Telecommunications, telephone, telegraph, radio telephone, radio facsimile, radiopaging and radio communication services; message sending, receiving and forwarding; transmission and receiving by radio; rental of telephone, radio, radio telephone and radio facsimile apparatus; communication of data by radio and by telecommunications."

Trade Mark No. 2109387 issued September 7, 1996, for "Compilation, storage, retrieval and provision of information; database, on-line and Internet and Internet information, advisory and consultancy services; services for the transmission, provision or display of information for business or domestic purposes from a computer-stored data bank; information and advisory services relating to all the aforesaid services."

Trade Marks Nos. 1215879 and 1223053 referred to above were originally issued to Racal Telecom PLC which changed its name to Vodafone Group PLC in 1991 and to Vodafone AirTouch PLC in 1999, and eventually to Vodafone Group PLC in 2000. Complainant submitted with its Complaint certified copies of Certificates of Incorporation on the Change of Name which provide proof of the name changes described above.

The Complainant also submitted evidence of its ownership of European Community Trademark Registration No. 000134890 for the VODAFONE word-mark, registered on April 1, 1996, for the following goods and services:

(1) Class 9 - "Electrical, electronic, telecommunications and telephonic apparatus and instruments; radio telephones; mobile telephones; encoded cards; tokens for activating electrical, electronic and telecommunications apparatus and instruments; smart cards; data communication apparatus and instruments; modems; parts included in Class 9 for all the aforesaid goods; computer software."

(2) Class 36 - "Financial services, credit card services, charge card services; insurance and guarantee services relating to telecommunications equipment."

(3) Class 37 - "Installation and repair of electrical, electronic, telecommunications, radio facsimile and telephonic apparatus and instruments."

(4) Class 38 - "Telecommunications, telephone, telegraph, radio telegraph, radio facsimile, radio paging and radio communication services; message sending, receiving and forwarding; transmission and receiving by radio; rental of telephone, radio, radio telephone and radio facsimile apparatus; communication of data by radio and by telecommunications; automatic telephone answering services."

The Panel notes that the registration dates of all of the above referenced UK and European Community trademark registrations predate the date of registration of the Domain Name by the Respondent.

The Complainant also claims it has registered or is seeking to register the VODAFONE word mark in other jurisdictions, but did not provide copies of proofs of those registered trademarks or applications.

The Complainant made the following allegations, which Respondent did not contest:

(a) The Domain Name <vodafone.org> is based on the word "vodafone" which is identical to the VODAFONE trademark. The Complainant has established rights in that name since 1986, both by reason of the registrations referred to above, and by reason of common law rights arising out of usage of and consequent goodwill in the word VODAFONE.

(b) The Respondent has no rights or legitimate interests with respect to the Domain Name. The "vodafone" word was created by the Complainant in conjunction with its business and, through both the trademark registration and public usage, the name has become unequivocally associated with the Complainant and its business activities. The Respondent is in no way associated with the Complainant's business and does not, either through his own name or any associated company name, have any right or legitimate interest in that name.

In the course of a telephone conversation with Ian Gardener (in-house solicitor for the Complainant) on February 26, 2001, the Respondent stated that he could not believe that the Complainant had overlooked such an obvious registration and had therefore registered the disputed domain name himself. In that conversation, the Respondent gave no indication that he had any right or legitimate interest in the Domain Name.

(c) The Respondent's registration of the Domain Name was and is in bad faith in that the Respondent registered the Domain Name for the purpose of "selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly relating to the Domain Name ...." Complainant submitted the following evidence to support its claim that the Domain Name was registered and is being used in bad faith:

(i) On February 14, 2001, Ian Gardener of Complainant wrote to Respondent pointing out Complainant's concern that Respondent's registration of the Domain Name "may be in contravention of [Complainant's] rights in the registered trademark" and requesting transfer of the Domain Name to the Complainant within 21 days of the date of the letter. Respondent responded to this letter with an email stating that Respondent is only the administration address for the Domain Name. Complainant responded by email indicating that Respondent's name is listed as the registrant of the Domain Name and requesting reasons why the Respondent should not accordingly be liable.

(ii) On February 26, 2001, the Respondent telephoned Ian Gardener. In that conversation, the Respondent stated his reason for registering the Domain Name (referred to in paragraph (b) above), and queried whether the Complainant was planning to sue him for infringement. Mr. Gardener replied that he was trying to explore whether Respondent would be willing to transfer the Domain Name and to enter into a suitable undertaking that no other similar names had been registered by the Respondent. Mr. Gardener also suggested that the Complainant might be prepared to cover the Respondent's out-of-pocket costs directly related to his registration of the Domain Name.

(iii) On February 28, 2001, the Respondent sent an email to Mr. Gardener indicating that he had made an agreement to transfer the Domain Name to a Mr. Benson, stating that the arrangement had been legally documented but had not yet been completed. On the same day, Respondent telephoned Mr. Gardener and stated that he was willing to transfer the Domain Name to the Complainant provided that the Complainant would cover the cost of his registering and transferring the name (estimated at £100), and on the basis that the Complainant would make a "goodwill gesture" to him. The Respondent did not specify the amount of such a "gesture" but implied that he wanted it "to clear student debts, credit cards and so on." The Respondent added that he had already had an offer from a third party who would be willing to seek to sell the name to the Complainant "at a higher price" and that such third party would be "looking for a lot more money."

The Respondent added that it might be embarrassing for the Complainant if it were known that Complainant had missed such an obvious registration, but that the publicity of making a goodwill gesture to recover it might be good publicity. The Respondent also said that, while he was not considering going ahead with the transfer to a third party, if the Complainant would not be willing to make such a "goodwill gesture" then he might do so.

(iv) By email dated March 1, 2001, the Respondent stated that, in addition to transfer costs of £103.40, he was seeking a "goodwill gesture of £12,000."

Respondent did not respond to the Complaint, and has made no submissions to controvert the Complainant's contentions.

Pursuant to paragraph 4.a. of the Policy, Complainant must prove the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or servicemark in which the Complainant has rights; and

(ii) 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.

This Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainant's undisputed representations.

The Respondent did not submit any response and made no attempt to rebut Complainant's prima facie showing. Thus, the Complainant's representations are undisputed.

There can be no doubt that the domain name <vodafone.org> is identical and confusingly similar to Complainant's VODAFONE trademarks. The relevant part of the domain name is "vodafone." The Panel finds that this part of the domain name is identical to the numerous trademark registrations of the word VODAFONE held by the Complainant. In addition, the Panel finds that the whole of the domain name is confusingly similar to those trademark registrations.

Accordingly, the Panel finds that the Domain Name is confusingly similar to, and incorporates identically, the VODAFONE trademark, to which Complainant has rights.

The record establishes that the Respondent was fully aware of Complainant's trademark rights when registering the Domain Name in December 1999. According to paragraph 13(2) of the Complaint, in his conversation with Mr. Gardener on February 26, 2001, Respondent stated that he "could not believe that the Complainant had overlooked such an obvious registration and had therefore registered the Domain Name himself." In the same conversation the Respondent also stated that he had originally registered the Domain Name with a view to creating a web-site containing some form of charitable link-up to the Complainant's business. There is no evidence, however, that this was the Respondent's true intention. Moreover, Complainant did not agree to such a proposal by the Complainant. Indeed, there is no evidence that Respondent even attempted to contact Complainant with such a proposal prior to receiving the letter from Complainant dated February 14, 2001, which requested transfer of the Domain Name to Complainant.

This Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Name. Respondent has not used or prepared to use the Domain Name in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy, nor is Respondent making a legitimate non-commercial or fair use of the Domain Name as contemplated under paragraph 4(c)(iii) of the Policy.

Accordingly, this Panel finds that Complainant has proved that the Respondent does not have a legitimate interest in the Domain Name.

Paragraph 4(b)(i) of the Policy provides that the following circumstances, amongst others, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that Respondent registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 Respondent's web site or location or of a product or service on Respondent's web site or location.

Each of the four circumstances in paragraph 4(b), if found, is a separate instance of "registration and use of a domain name in bad faith."

The record indicates that Complainant's VODAFONE trademark is well-known and that Respondent was fully aware of Complainant's trademark rights when Respondent registered the Domain Name, as evidenced by Respondent's statement that "it was an obvious registration" which Complainant had missed.

The record also indicates that Respondent sought a substantial sum of money, £12,000, from Complainant in return for the transfer of the Domain Name. This sum is far in excess of the £103.40 transfer costs incurred by the Respondent. The Respondent also stated in conversations with Mr. Gardener that, if the Complainant was not willing to agree to pay such a sum, then the Domain Name would be sold to a third party who would seek an even higher sum from Complainant in return for the transfer of the Domain Name to the Complainant.

These circumstances clearly fall within paragraph 4(b)(i) because they indicate that Respondent registered or 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 trademark, for valuable consideration in excess of Respondent's out-of-pocket costs.

Although the Domain Name does not presently resolve to a website and thus does not appear to be in "use" by Respondent, the circumstances described in paragraph 4(b)(i) are present and sufficiently support a finding that Respondent registered and used the Domain Name in bad faith. In any event, this is a case where the concept of "passive use" referred to in the Telstra-Case WIPO Case No. D2000-0003 would be applicable because, considering all the circumstances of the case, it can be said that the Respondent is acting in bad faith.

Accordingly, the Panel concludes that Respondent has registered and used the Domain Name in bad faith on the grounds that (1) the Respondent could not legitimately use the Domain Name which incorporates Complainant's well-known VODAFONE trademark; (2) Respondent was aware of Complainant's rights in the VODAFONE trademark at the time of registration; (3) Respondent has no rights or legitimate interests in the Domain Name; and (4) Respondent attempted to sell the Domain Name to the Complainant for substantially more than Respondent's out-of-pocket costs.

For all of the foregoing reasons, the Panel decides that the Complainant has met its burden of proof under paragraph four of the Policy; the domain name <vodafone.org> is identical and confusingly similar to trademarks in which Complainant has rights; Respondent lacks a legitimate interest in the Domain Name; and Respondent has registered and used the Domain Name in bad faith. Accordingly, this panel concludes that the domain name <vodafone.org> should be transferred to the Complainant Vodafone Group, PLC.

Lynda Zadra-Symes
Sole Panelist

Dated: May 11, 2001