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Vodafone Group, Plc v. Phone-Express [2004] GENDND 1091 (31 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Vodafone Group, Plc v. Phone-Express

Case No. D2004-0505

1. The Parties

The Complainant is Vodafone Group, Plc, of Newbury, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ms. Maria Eugenia Trujilio of Gómez-Acebo & Pombo Abogados, Spain.

The Respondent is Phone-Express, of Palma de Mallorca, Baleares, Spain.

2. The Domain Names and Registrar

The disputed domain names <vodafone-servicecentre.com> and <vodaphone-express.com> are registered with Network Solutions, LLC., Herdnon, Virginia, U.S.A. (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on July 12, 2004. The Complaint named two respondents: Mr. Stanley Fredericks and Phone Express, both of the same address. On July 12, 2004, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On July 13, 2004, Network Solutions, LLC transmitted by e-mail to the Center its verification response confirming that Phone Express is listed as the registrant and Mr. Stanley Frederiks as the administrative and billing contact of the registrant. In the same e-mail the Registrar provided the contact details of the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Phone-Express (attn. Stanley Fredericks) as the Respondent of the Complaint, and the proceedings commenced on July 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2004.

The Center appointed Marcin Krajewski as the Sole Panelist in this matter on August 17, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel finds that only the registrant, and not a person named as an administrative or billing contact, is bound by the Policy. Therefore, only the registrant is required to submit to the administrative proceedings. Considering the fact that Phone-Express is the sole registrant in this case, the Panel finds that this company must be treated as the sole Respondent, and the Panel has no jurisdiction over Mr. Stanley Fredericks acting as administrative and billing contact. This conclusion does not determine whether Phone-Express, in legal terms, is a separate legal entity or just a business name under which Mr. Frederiks or any other person(s) carry out their business. The Panel finds that for the purpose of these proceedings it is not necessary to determine the latter question.

4. Factual Background

The Complainant is the holding company of the Vodafone Group of Companies, one of the world’s largest mobile telecommunication network operators. Vodafone Group operates in 26 countries worldwide and at the end of 2003 the number of Complainant’s clients, calculated on a proportionate basis in accordance with the company’s percentage share in various mobile telecommunication ventures, amounted to approximately 130.4 million customers. The turnover of the Vodafone Group in 2003 amounted to £30,375.0 million.

In Spain, the Complainant’s subsidiary, Vodafone España is one of three mobile phone operators.

The Complainant has used the trademark and service mark VODAFONE to promote its services and products since 1985. Presently, the Complainant owns numerous trademarks and service marks in connection to a variety of goods and services, including services in mobile telecommunications. In particular the Complainant owns:

(i) 7 European Community trademarks (e.g. the word design “Vodafone” registered on April 16, 1998),

(ii) 3 Spanish trademarks,

(iii) 4 international trademarks.

Each of the above-mentioned trademarks consists of a word or figurative design including the word “Vodafone” or its variations. The trademarks were registered between 1990 and 2004.

The Complainant’s trademarks, and in particular the word “Vodafone,” are well known worldwide, with the Complainant continuously undertaking intense global commercial action in order to promote its services and trademarks. The Complainant has invested substantial effort and money in promoting its trademarks and service marks. The expenses of Vodafone Group in relation to publicity concerning the trademarks and services in 2003 amounted to 272 million Euros.

The Respondent is located in Palma de Mallorca and owns a virtual telecommunication products shop using the web page “www.phone-express.com.” On July 23, 2003, the Respondent registered the domain name <vodaphone-express.com> and on July 26, 2003, the domain name <vodafone-servicecenter.com>. Initially, the registered domain names resolved to no active web pages, and users who tried to enter them were redirected to the Registrar’s standard “under construction” page.

On December 29, 2004, the Complainant wrote a formal letter to the Respondent demanding that he cease operation of the domain names in dispute and transfer them to the Complainant. The letter was written in English yet the Respondent replied that he had not understood it. Subsequently, the Complainant’s subsidiary (Vodafone España S.A.) sent the same letter translated into Spanish to the Respondent. This time, however, the Respondent failed to answer.

After receiving the above-mentioned letters, the Respondent redirected the domain name <vodaphone-express.com> to its website “www.phone-express,” and at the same time inserted a statement in Spanish in its website, stating that it does not bear any relationship with Vodafone España S.A. The second website “www.vodafone-servicecenter.com” still does not resolve to any active website except for the Registrar’s standard “under construction” page.

The facts mentioned above have been established on the basis of the complaint and documents attached thereto in accordance with paragraph 2(e) of the Rules.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The domain names in dispute are confusingly similar to the trademarks and service marks in which the Complainant has rights

The domain name <vodafone-servicecentre.com> is identical to the Complainant’s trademark VODAFONE with the addition of the word “servicecentre.” The Complainant contends that the term “servicecentre” is a generic term which does not distinguish a company, and that only the word “vodafone” is of such a distinctive nature. The Complainant cites numerous WIPO Panel decisions according to which the addition of a generic term to the trademark is legally inconsequential and does not prevent a finding of confusing similarity.

The domain name <vodaphone-express.com> is identical to the Complainant’s trademark VODAFONE with the addition of the word “express” and replacement of the letter “f” with “ph.” In the Complainant’s view, the word “express” is a generic term like “servicecentre” and the reasoning mentioned above applies to it. The letters “ph” read together are pronounced “f,” which may confuse consumers searching for the website of the Complainant. The Complainant cites numerous decisions where misspelling had not prevented the panel from finding a domain name and a trademark confusingly similar.

(ii) The Respondent has no rights or legitimate interests in respect of the domain names in dispute

The Complainant states that the Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use its “corporate name and goodwill.”

Further, the Complainant contends that the Respondent is known by the name “Phone Express” and in no way by the disputed domain names. Moreover, the Respondent must have been aware of the fact that “Vodafone” is a famous brand name for telecommunications products and services.

The Complainant contends that consumers can be deceived into believing that there is a connection between the Complainant and the domain names. In the consumer’s mind, the quality of the Complainant’s products is associated with this particular company.

In addition, the Complainant alleges that the mere registration of a domain name is insufficient to establish rights or legitimate interests in it. The Complainant cites numerous WIPO panel decisions supporting this view.

(iii) The domain names in dispute were registered and used in bad faith

In support of this position, the Complainant provides that by registering the domain names in dispute, the Respondent intended to cause damage to the Complainant’ s fame and reputation in trade. The Complainant submits that it is impossible for the Respondent to have registered the names without being aware of the trademarks of the Complainant and its activity in the telecommunications sector, all the more so as the Respondent owns a shop trading in telecommunications products.

Supporting the position that the Respondent not only registered the domain names in bad faith but was using it in bad faith as well, the Complainant cites the case of J. García Carrión, S.A. v. MŞ José Catalán Frías (WIPO Case No. D2000-0239) where, according to the Panel, “whoever has registered a domain name in bad faith and without any legitimate interest is using it in bad faith, since any other solution is contradictory.” Moreover, the Complainant alleges that the Respondent has registered the disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which constitutes a pattern of such conduct (Paragraph 4b(ii) of the Policy). Furthermore, the criteria set forth in Paragraph 4(b) of the Policy are non-exclusive and the registration of a domain name without taking any positive action can constitute bad faith. In support of its allegations, the Complainant cites numerous WIPO panel decisions where “passive holding” of a domain name was considered as using it in bad faith.

Regarding the domain name <vodaphone-express.com> (the one which is automatically redirected to the Respondent’s page “www.phone-express.com”), the Complainant contends that the Respondent’s purpose is to obtain commercial gains by diverting Internet traffic from the Complainant. The Complainant cites numerous UDRP cases supporting this view.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant a remedy:

(1) 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; and

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The relevant parts of the domain names in dispute are “vodafone-servicecentre” and “vodaphone-express.” For the purposes of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “com” must be disregarded as being simply a necessary component of a generic top level domain name.

The Panel accepts the Complainant’s allegations that the addition of a generic term to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity. This refers to the words “servicecentre” and “express.” There are numerous WIPO UDRP decisions were it was found that the addition of a generic term does not serve to distinguish the domain name from the trademark, but rather would reinforce the association of the Complainant’s trademark with the domain name (see Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755, Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275). This Panel sees no reason to challenge this prevailing opinion.

Regarding the disputed domain name <vodaphone-express.com>, the Panel agrees that the words “vodaphone” and “vodafone” are phonetically identical. Therefore it is possible that an Internet user seeking the Complainant’s website, yet unfamiliar with the precise spelling of the Complainant’s mark, is likely to use the spelling variant “vodaphone” in entering an Internet address intended to locate the Complainant’s website. For this reason, misspelling does not eliminate the risk of confusion.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is satisfied with the Complainant’s statement that the Respondent is not affiliated with the Complainant in any way and has never been authorized to use any trademark including the word “vodafone.” The Respondent has not provided evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the domain names in dispute.

Moreover, the Panel agrees with the Complainant that the mere registration of a domain name is insufficient to establish rights or legitimate interests in it. Otherwise “all registrants would have such rights or interest, and no complainant could succeed on a claim of abusive registration” (see The Hamlet Group. Inc v. James Lansford, WIPO Case No. D2000-0073).

Accordingly the Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed domain names. This means that bad faith registrations or bad faith use alone do not give rise to a remedy under the Policy. Therefore the Panel can not agree with the Complainant’s allegations (citing a WIPO UDRP decision) that someone who has registered a domain name in bad faith is using it in bad faith and that other solutions are contradictory. Firstly, it is possible to register a domain name and not to use it at all. Secondly, it is also possible to imagine such circumstances (very exceptional) when a person who registered a domain name in bad faith is subsequently using it in good faith.

Considering the question whether the domain names in dispute were registered in bad faith, it is necessary to underline that “vodafone” appears to be an invented word. Therefore, it is not likely that any trader could choose to use it without seeking to create an impression of an association with the Complainant. Taking into account the fact that there are only three mobile phone operators in Spain and that the Respondent himself owns a shop selling telecommunications products, it must be asserted that the Respondent must have been aware of the Complainant’s trade and service marks while registering the domain names in dispute. This finding leads to the conclusion that the domain names in dispute have been registered in bad faith.

The Panel sees no difficulties in establishing that the domain name <vodaphone-express.com> is being used in bad faith. Redirecting Internet traffic to the Respondent’s page “phone-express.com” falls within the scope of paragraph 4(b)(iv) of the Policy. According to this provision, it is evidence of registration and use of a domain name in bad faith when a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of this website. The Panel finds that the Respondent’s statement that it has no links with one of the Complainant’s subsidiaries, and which was inserted on the Respondent’s website, does not prevent finding that the Respondent’s behaviour falls within the scope of the aforementioned provision.

It is less clear whether it can be established that the domain name <vodafone-servicecentre.com> was also used in bad faith. The Panel can not agree with the Complainant’s allegation that the Respondent has registered both disputed domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, and that it constitutes a pattern of such conduct (paragraph 4(b)(ii) of the Policy). No circumstances in this case lead to such a conclusion, and the actual intentions of the Respondent in regard to the domain name <vodafone-servicecentre.com > remain unclear.

According to the prevailing opinion of numerous WIPO panels, in some circumstances so-called “passive holding” of a domain name can be treated as using it in bad faith. The leading case in this regard is Telstra Corporative Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003). The learned Panelist in this case found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that he had undertaken any positive action in relation to the domain name. In some circumstances even inaction (“passive holding”) is within the concept of the domain name “being used in bad faith.” In Telstra it was additionally stated that it is not possible to determine in abstract what circumstances of passive holding other than identified in paragraphs 4(b)(i-iii) of the Policy can constitute bad faith use and in considering whether the passive holding of a domain name following a bad faith registration of it satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.

The Panel sees no reason to challenge the opinion of the learned Panelist in Telstra in its whole. However, it seems necessary to make the effort in order to answer in abstract what circumstances decide that inaction constitutes “using in bad faith” of the domain name. Otherwise, every decision in this matter may seem arbitrary.

It is necessary to note that not every kind of passive holding may be found as use in bad faith. Otherwise, the necessity to prove that a domain name was actually used would be illusory. When finding special circumstances where inaction equals use in bad faith, it must be remembered that one of the basic aims of the Policy is to provide the community of Internet users with better service. To quote a Panel decision in Educational Testing Service v. TOEFL, ICANN (WIPO Case No. D2000-0044), “because Respondent is contributing no value-added to the Internet - it is merely attempting to exploit a general rule of registration - the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.”

Regarding the above-mentioned opinion, the Panel finds that passive holding constitutes use of a domain name in bad faith when it can be established that the registrant is obstructing possibilities to use the domain name fairly and legitimately. When the following facts are present, they may be evidence of such an obstruction:

(i) taking into account all the circumstances of the case, it is not possible to conceive of any active use of the domain name in dispute by the registrant that would not be illegitimate (see Telstra), unless he receives permission from a trademark holder, and

(ii) the registrant is aware of the trademark holder’s demand to transfer the disputed domain name, and

(iii) the registrant denies taking any action that would enable the domain name to be legitimately used either by the trademark holder (by transferring the name to the holder) or by the registrant himself (e.g. obtaining any kind of license or other permission from the trademark holder).

In other words, inaction of the registrant equals using a domain name in bad faith when the circumstances indicate that the registrant should act in order not to obstruct a fair and legitimate use of a given domain name.

The circumstances of the present case indicate that passive holding of the domain name <vodafone-servicecentre.com> actually amounts to the Respondent acting in bad faith. When receiving a formal letter of demand in English from the Complainant, the Respondent firstly replied that he had not understood it, then failed to answer the same letter translated into Spanish. In so doing, the Respondent is preventing the domain name <vodaphone-servicecentre.com> from being be fairly and legitimately used and is therefore using it in bad faith.

Accordingly, the Panel finds that the Complainant satisfies paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <vodafone-servicecentre.com> and <vodaphone-express.com> be transferred to the Complainant.

Marcin Krajewski
Sole Panelist

Dated: August 31, 2004