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First National Telecom Services Limited v. Richard Gibbs [2004] GENDND 887 (19 July 2004)

1. The Parties

The Complainant is First National Telecom Services Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Mayer, Brown, Rowe & Maw of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Richard Gibbs of Brighton, East Sussex, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <fntele.net> and <fntele.info> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2004. On May 17, 2004, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On May 18, 2004, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant in respect of the domain names <fntele.net> and <fntele.info> and providing the contact details for the administrative, billing, and technical contact.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2004.

The Center appointed Mary Vitoria, QC as the sole panelist in this matter on July 8, 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 language of the proceedings is English.

4. Factual Background

The Complainant is a telecommunications company and is the market leader in the United Kingdom of Great Britain and Northern Ireland in prepaid calling cards, including the FIRST NATIONAL card. The Complainant operates as the retail division of the WaveCrest group, Europe’s largest wholesale voice carrier and provides low cost residential and international telephony services. The Complainant is the owner of United Kingdom and Community registered trade marks FIRST NATIONAL. Copies of the registrations were enclosed with the Complaint. The Complainant asserts that it is the owner in the United Kingdom of Great Britain and Northern Ireland of rights in the unregistered marks FNTELE and FIRST NATIONAL TELECOM used in connection with prepaid calling cards and telephony services.

The Respondent is an individual. He was employed by the Complainant and its predecessor-in-business from about April 17, 2000 to about July 2, 2003. His contract of employment described him as an Account Executive. On December 6, 2002, the Complainant wrote to the Respondent requesting that he attend a formal hearing to discuss his performance at work which was said to be sub-standard on several measures. Matters did not improve and on June 16, 2003, the Complainant again wrote to the Respondent requesting him to attend another formal hearing to discuss his work performance. At a meeting which was held on July 2, 2003, the Respondent produced a letter of resignation raising four main points of contention. The meeting failed to resolve the differences and on July 18, 2003, the Complainant wrote to the Respondent confirming that the contract of employment had terminated on July 2, 2003. It is immaterial to the resolution of this dispute who terminated the contract of employment.

The Respondent registered the domain names <fntele.net> and <fntele.info> on August 17, 2003, shortly after his employment by the Complainant had terminated. Accessing “www.fntele.net” currently leads to the site of “Couch Potato Audio Video Ltd.,” a business selling audio and video DVDs and computer games over the Internet. Accessing “www.fntele.info” currently leads to the same website.

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint:

“In accordance with Policy, Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because:

(1) The Disputed Domain Names are identical to or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(3) The Disputed Domain Names were registered and are being used in bad faith.”

The Complainant’s case under each of these three requirements is as follows:

(i) The Disputed Domain Names are identical to or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Complainant is the owner of unregistered trade mark rights in respect of the marks FNTELE and FIRST NATIONAL TELECOM by virtue of the Complainant’s extensive use of these marks – in particular, their use in the domain names of the Complainant’s principal website (“www.fntele.com”) and in the email addresses of the Complainant’s employees – as well as registered trade marks for FIRST NATIONAL. The unregistered rights are enforceable in the United Kingdom by an action for passing off. The Disputed Domain Names are identical to the unregistered trade mark FNTELE, and are confusingly similar to the unregistered trade mark FIRST NATIONAL TELECOM and the registered trade mark FIRST NATIONAL, in that they are an abbreviation of these trade marks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The marks FNTELE and FIRST NATIONAL TELECOM are unique to the Complainant. The Complainant is not aware of any other commercial use of the marks FNTELE and FIRST NATIONAL TELECOM anywhere in the world.

(iii) The Disputed Domain Names were registered and are being used in bad faith. The Complainant’s marks FNTELE and FIRST NATIONAL TELECOM have a strong reputation and are widely known; in particular, the Complainant’s name and website address are well-known to the Respondent, a former employee of the Complainant. The fact that the Respondent was an employee of the Complainant and the circumstances of his departure from the Complainant’s employment make it impossible to believe that the Disputed Domain Names were not registered and were not being used in bad faith.

(i) The Complainant’s trade mark rights and confusing similarity

Unregistered Trade Marks

The Complainant asks the Panel to take into account its unregistered trade mark rights in the marks FNTELE and FIRST NATIONAL TELECOM, which are enforceable in the United Kingdom by an action for passing off. The Complainant notes that unregistered rights have been taken into account in a large number of decisions under this Policy.

The Complainant is a modern telecommunications company, and uses the corporate name FIRST NATIONAL TELECOM SERVICES LIMITED and the trading name FIRST NATIONAL TELECOM. The Complainant operates a website at the URL “www.fntele.com,” and the Complainant’s employees use email addresses of the form name@fntele.com. This domain name is an abbreviation of the Complainant’s corporate and trading names. Because the Complainant is a modern telecommunications company, its website and email addresses are of vital importance to its business. And through the use of this domain name and these email addresses, the Complainant has acquired unregistered rights in the mark FNTELE. (In support of these various contentions, see the Whois searches giving details of domain names owned by the Complainant at Annex 5, the sample copies of business cards showing the Complainant’s use of the FNTELE name in its email addresses at Annex 6, the print-outs from the Complainant’s website at Annex 7, and the first three pages of results from a Google search against FNTELE at Annex 8 (all of the hits in these pages appear to refer to the Complainant). The Complainant’s unregistered rights in FIRST NATIONAL TELECOM stem, in particular, from its use of this trade mark as a trading name. Again, see the print-outs from the Complainant’s website attached at Annex 7. The Complainant and its affiliated companies own the following domain names in addition to the <fntele.com> domain name (see Annex 5):

- <fntele.biz>;
- <fntele.ie>,
- <fncard.co.uk>,
- <fncard.com>;
- <fncard.net>;
- <firstnationalcard.co.uk>;
- <firstnationalcard.net>;
- <firstnationalpluscard.co.uk>;
- <firstnationalpluscard.com>;
- <firstnationalpluscard.net>;
- <firstnationaltele.com>.

Registered Trade Marks

Complainant is the registered proprietor of various trade marks, including: a United Kingdom registration for FIRST NATIONAL (figurative) in Classes 9 and 38 (No 2186219); a Community registration for FIRST NATIONAL (word) in Classes 9, 37, 38, and 42 (No 1809466); and a Community registration 1 FIRST NATIONAL (figurative) in Classes 9, 37, 38, and 42 (No 154919). Print-outs from the United Kingdom Patent Office and OHIM (Office for Harmonization in the Internal Market) websites giving details of these registrations are set out at Annex 9.

Products and Services

The Complainant’s registered and unregistered trade marks cited in this Complaint are used in connection with the following products and services: a range of telephone calling cards; low cost residential telephony services; and low cost international telephony services.

Identity and Confusing Similarity

The Disputed Domain Names are identical to the Complainant’s unregistered trade mark FNTELE, which as noted above is used by the Complainant as the domain name of its principal website in the email addresses of its employees. Moreover, the Disputed Domain names are confusingly similar with the Complainant’s unregistered and registered trade marks inasmuch as they are abbreviations of FIRST NATIONAL and FIRST NATIONAL TELECOM and FIRST NATIONAL TELECOM SERVICES. There have been a large number of cases decided under the UDRP in which domain names consisting of abbreviations of trade marks in which a complainant has rights have been transferred to the Complainant. See, for example: Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones (WIPO Case No. D2002-1164); Den norske Bank ASA (DnB) v. Anders Foss (WIPO Case No. D2003-0575); and Sony Kabushiki Kaisha also trading as Sony Corporation v. Fujiko Kikuno (WIPO Case No. D2000-1372). Copies of these decisions are attached at Annex 10.

(ii) Respondent’s rights and legitimate interests in the domain name

In Section A, the Complainant has set out the reputation and goodwill it has in the trade marks FNTELE and FIRST NATIONAL TELECOM and its registered trade mark rights in relation to FIRST NATIONAL. It follows from this goodwill and reputation and these registered rights that the Complainant has the exclusive right to use the marks FNTELE and FIRST NATIONAL TELECOM worldwide. The Respondent does not have the consent of the Complainant to register or to use the Disputed Domain Names. The Respondent uses the Disputed Domain Names to link to a website called “Couch Potato Audio Video,” which appears to be a website offering “DVD, music, games and gifts” for sale. There is nothing on this website to suggest that the mark FNTELE is used by the Respondent in the course of this business. If it were so used by the Respondent, the Complainant would take steps to prevent such use. See the print-outs from the Respondent’s website at Annex 11. The Complainant is not aware of anyone else using the marks FNTELE or FIRST NATIONAL TELECOM in the course of a business anywhere in the world and, if it was, it would take steps to prevent this use. It follows from the considerations set out above that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

(iii) Registration and use in bad faith

The Complainant’s marks, FNTELE and FIRST NATIONAL TELECOM have a strong reputation and are widely known. They are particularly well-known to the Respondent, a former employee of the Complainant, who is and was fully aware that in registering the Disputed Domain Names he would trespass upon the rights of his erstwhile employer. See the contract of employment attached at Annex 12. In particular, the Respondent was aware of the Complainant’s website at “www.fntele.com.” The Respondent registered the Disputed Domain Names shortly after leaving the Complainant’s employment and over two years after the Complainant originally registered the domain name <fntele.com> on June 12, 2001. The Complainant began operating the website at “www.fntele.com” shortly after acquiring the domain name. The Respondent was well aware at the date of the registration of the Disputed Domain Names that the Complainant’s website was at an identical ‘.com’ domain. Moreover, the fact and circumstances of the Respondent’s departure from the Complainant’s employ are likely to give rise to an inference of bad faith. Between December 6, 2002 and July 1, 2003, the Respondent was subject to an internal disciplinary procedure. He resigned his employment on July 1, 2003. The Disputed Domain Names were registered shortly thereafter. This strongly suggests that the Disputed Domain Names were registered primarily for the purpose of disrupting the Complainant’s business and to prevent the Complainant from registering and utilizing the Disputed Domain Names. See the summary of various documents relating to the Respondent’s departure attached at Annex 13. Moreover, by using the Disputed Domain Names to divert traffic to his own website – Couch Potatoes Audio Video – the Complainant is using them in bad faith. Finally, because of the identity/similarity of the Disputed Domain Names to the Complainant’s registered and unregistered marks, it is very difficult to conceive of any plausible actual or contemplated use of the Disputed Domain Names that would not be illegitimate, by reason of constituting an infringement of the Complainant’s rights.”

B. Respondent

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

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The 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.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:

A. Identical or Confusingly Similar

The Complainant’s registered trade marks all have the words “FIRST NATIONAL” either on their own or accompanied by a device. Although the letters “fn” in <fntele.net> and <fntele.info> are an abbreviation of the words “first national” that is not enough in itself to establish confusing similarity with any of the Complainant’s registered trade marks.

The Complainant does not have registrations for the mark FNTELE, but claims protection for it under the English law of passing off as an unregistered mark. The law of passing off does not protect an unregistered mark as such, but instead protects the goodwill of the business in which the mark has been used and in respect of which business the mark has, by use, become distinctive. The owner of the goodwill does not have an absolute monopoly in the mark, but merely has a right to prevent others from damaging the trading reputation of his business by means of misrepresentations (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the owner of the goodwill.

The Panel notes that in WIPO Case No. D2002-1164, Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones, that the Complainant succeeded on the basis of unregistered marks used in Finland. However, in that case, the Finnish Trade Mark Act (section 2, subsection 1 and 3) enabled the owner of an unregistered right to obtain the exclusive right to a trade mark through use (emphasis added). English law does not confer such an exclusive right on the owner of an unregistered mark.

However, the Panel is of the view that paragraph 4(a) of the Policy, which requires that the Complainant should have “rights” in a trade mark or service mark, should be construed purposively. The purpose of the Policy is to resolve disputes involving the use of domain names which are the same as or confusingly similar to a Complainant’s trade mark or service mark. A Complainant’s right to object to such a domain name should not depend on the precise manner in which a national legal system gives a Complainant the right to interfere. Although under the English law of passing off a Complainant cannot claim to own the mark he sues upon, his ability to prevent by way of injunction and to obtain damages for the misuse of the same or a similar mark is just the same as if he did. The Panel concludes that a Complainant who can establish that he has a goodwill and reputation in a mark protectable by way of a passing off action has “rights” in the trade mark or service mark in question for the purposes of paragraph 4(a) of the Policy. The Panel notes that a similar conclusion was reached by the English High Court in finding that an unregistered mark protectable by a passing off action constituted an “earlier right” for the purposes of Article 8(4) of Council Directive 40/94 (Compass Publishing BV v. Compass Logistics Ltd. [2004] EWHC 520, [2004] R.P.C. 41).

To succeed in an action for passing off, the Complainant would have to show that it had acquired a substantial goodwill and reputation in the mark FNTELE such that the mark was distinctive of its goods and services, that the use by the Respondent of the domain names <fntele.net> and <fntele.info> amounted to a misrepresentation that his goods or services or his business was that of the Complainant or that they were connected with the Complainant and that such a misrepresentation was likely to lead to damage. The Complainant has to show that it had acquired the requisite goodwill and reputation at the date the Respondent registered the domain names <fntele.net> and <fntele.info>, that is to say at August 17, 2003.

The evidence submitted by the Complainant does not clearly distinguish between use made by it of the unregistered mark FNTELE before August 17, 2003, and use made after that date. Whilst the Complainant owns a number of domain names, only one, <fntele.com>, was registered prior to August 17, 2003. The Complainant registered the domain name <fntele.com> on June 13, 2001, and has operated a website at “www.fntele.com” from about that date. Its employees have email addresses in the form [name]@fntele.com. Anyone who accesses the Complainant’s website will be made aware that the letters “FN” are in use as an abbreviation for “First National” and they will be directed for sales enquiries to sales@fntele.com and for customer support to customerservices@fntele.com. Given the size of the Complainant’s business, it is likely that there was substantial customer awareness of the use of the mark FNTELE, at the very least, as part of the website “www.fntele.com” and e-mail address fntele.com prior to August 17, 2003. The Complainant has established that it has acquired the requisite goodwill and reputation in the mark FNTELE to support a passing off action. Under English law, it has been held that the placing on an Internet register of a distinctive name makes a misrepresentation to persons who consult the register that the registrant was connected or associated with the name registered and thus the owner of the goodwill in the name and that this amounted to passing off: British Telecommunications plc v. One in a Million Ltd [1998] EWCA Civ 1272; [1999] F.S.R. 1, Court of Appeal. This Court also held that any realistic use by the registrant of a domain name comprising a third party’s distinctive name would amount to passing off.

The Panel, therefore, concludes that the Complainant has established that it has rights in the unregistered mark FNTELE.

The domain names <fntele.net> and <fntele.info> are identical and confusingly similar to the Complainant’s earlier mark FNTELE in which it has rights.

The Complainant also asserts unregistered rights in the mark FIRST NATIONAL TELECOM. The evidence establishes that the Complainant has used its corporate name, First National Telecom Services Ltd., since about 1997, but there is little evidence to show that the Complainant has used the mark FIRST NATIONAL TELECOM as such as a trading name. The extract from the website shows use of FIRST NATIONAL as the predominant trading name.

The Panel concludes that there is insufficient evidence to establish that the Complainant has enforceable rights in the unregistered mark FIRST NATIONAL TELECOM.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark FNTELE or to apply for any domain name including this trademark.

There is no evidence that the Respondent uses the domain name for his own legitimate commercial or non-commercial activities, if any, nor is there any evidence of any preparations for such use. In fact, when the domain name is accessed it leads to a website owned by Couch Potato Audio Video Ltd. There is no information concerning the directors or shareholders of Couch Potato Audio Video Ltd., but the telephone number given for that company is the same as that of the Respondent and both have addresses in Brighton, Sussex. The Panel draws the inference that the Respondent is closely connected with the company Couch Potato Audio Video Ltd.

There is no visual, aural or conceptual link between the domain names <fntele.net> and <fntele.info> and the company Couch Potato Audio Video Ltd. as to suggest any reason for the adoption by that company of those domain names.

Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant must satisfy the Panel that the domain names <fntele.net> and <fntele.info> have been registered and are being used in bad faith.

The Respondent was employed by the Complainant before he registered the domain names in issue and must have been aware in the course of his employment that the Complainant frequently used the abbreviation “FNTELE” and that it was the owner of the website “www.fntele.com.” The Panel is, therefore, satisfied that the Respondent had knowledge of the Complainant’s FNTELE mark.

By reason of his employment by the Complainant, it must have been obvious to the Respondent that the Complainant might wish to use the domain names <fntele.net> and <fntele.info> or, at the least, to stop other people from doing so.

The name “FNTELE” is not a descriptive term and has no inherent meaning. The suffix “TELE” is suggestive of a business concerned with telecommunications or with television while the prefix “FN” suggests that these letters are an abbreviation of two unspecified words. The name “FNTELE” does not bear any obvious connection with the activities carried on by Couch Potato Audio Video Ltd. through the websites “www.fntele.net” and “www.fntele.info” so as to give rise to any independent explanation for the adoption of the disputed domain names.

Even though the Respondent may be trading lawfully through the company Couch Potato Audio Video Ltd., the fact that the Respondent registered the domain names shortly after leaving the employment of the Complainant after a period of mutual dissatisfaction, coupled with the fact that there is no natural connection between the mark FNTELE and the name Couch Potato Audio Video Ltd. or its business, gives rise to the inference that the Disputed Domain Names were registered for the purpose of preventing the Complainant from registering and utilizing the Disputed Domain Names. There is, however, no evidence that the Respondent has engaged in a pattern of such conduct.

The business of Couch Potato Audio Video Ltd. is not competitive with that of the Complainant and there is no evidence that the Respondent is engaged in any other business which is competitive with that of the Complainant. In the circumstances, the Panel finds that there is no evidence that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant.

Persons who are aware of the Complainant’s use of its unregistered mark FNTELE are likely to be misled into accessing the websites “www.fntele.net” and “www.fntele.info” in the mistaken belief that these websites are owned or controlled or affiliated or sponsored by the Complainant. In the absence of any plausible explanation for the adoption of the Disputed Domain Names by the Respondent and their use by Couch Potato Audio Video Ltd. and, having regard to the Respondent’s previous employment by the Complainant and knowledge of its use of the unregistered mark FNTELE and its use of this mark in its website “www.fntele.com,” the Panel finds that the Respondent has used these names with the intention of attracting, for commercial gain, Internet users to the two websites in question.

On the facts and the evidence in this case, the Panel finds that the contested domain names have been registered and are being used in bad faith.

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 <fntele.net> and <fntele.info> be transferred to the Complainant.

Mary Vitoria, QC
Sole Panelist

Dated: July 19, 2004