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Associated British Foods v. Domain Admin [2005] GENDND 445 (23 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vodafone Group Public Limited Company v. Akio Nagata

Case No. D2005-0077

1. The Parties

The Complainant is Vodafone Group Public Limited Company, Vodafone House, Newbury, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Yasushige Hagio, Japan.

The Respondent is Akio Nagata, Saitama, Japan.

2. The Domain Name and Registrar

The Domain Name at issue is <vodafone-user.net>. This Domain Name is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 25, 2005, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Domain Name at issue. On January 25, 2005, the Center received from eNom, Inc. its response by e-mail confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.

On February 11, 2005, the Center confirmed that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules of the Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On February 11, 2005, the Center, in accordance with the Rules, paragraph 2 (a) and 4(a), formally notified the Respondent of the Complaint, and commenced the proceedings.

The Respondent failed to file any Response to the Complaint by March 3, 2005, the due date for the filing of Response under the Rules, paragraph 5(a). Accordingly, the Center sent a Notification of the Respondent’s Default to the parties on March 8, 2005.

The Center appointed Teruo Doi as the sole panelist in this matter on March 16, 2005. 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.

On March 16, 2005, the Center sent to the Panelist the Case File by e-mail and in hardcopy by courier.

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The Complainant owns many registered trademarks for the term “VODAFONE” mainly with respect to communication equipment and communication services not only in Japan but also in many countries of the world. A list of the Complainant’s registered trademarks is attached to the Complaint as Annex 3.

(2) The Complainant was founded in 1982 and is one of the most famous and well-known mobile telecommunications network companies which now provides mobile telecommunication services in about 30 countries including the United Kingdom and is the largest mobile telecommunications service company in the world on a subscription basis. Annex 4 shows that 146,693,000 subscribers as of September 30, 2004, calculated on a proportionate basis in accordance with the Complainant’s percentage interest in these ventures.

(3) The Complainant has been sponsoring, as a part of its advertisement activities, several European professional football teams such as Manchester United of United Kingdom as well as the Ferrari Formula One automobile racing team, and its trademarks have appeared widely in TV broadcasting. As a result of these activities, it is apparent that the VODAFONE trademark is well-known all over the world.

(4) In Japan, the Complainant entered the communication business market in September 2001, by purchasing Japan Telecom Kabushiki Kaisha. The Complainant separated the mobile phone section (J-phone Kabushiki Kaisha) and sold the section for fixed type telephone and data-communication business (previous Japan Telecom Kabushiki Kaisha proper), thereby making only the mobile phone section its affiliated company. J-phone K.K. changed its service name and company name to “Vodafone” and “Vodafone Kabushiki Kaisha” respectively and has been active as a Japanese corporation (referred to as “the Japanese subsidiary of the Complainant”). The Complainant has been active in advertisement activities in Japan; TV, magazines and trains continuously carry advertisements of the Complainant; the number of subscribers in Japan exceeds 15 million as of August 2004. The name of the Complainant is apparently well and widely known in Japan.

(5) In the past, the UDRP decisions in four domain name cases held that the VODAFONE mark is well-known world wide. The following cases are attached to the Complaint: WIPO Case No. D2002-0749 Airtel Móvil, S.A. and Vodafone Group Public Ltd. Co. v. Manuel Hortas Doncel (Annex 5); WIPO Case No. D2001-0403 (Annex 6); WIPO Case No. D2002-0822 Vodafone Group Plc v. Brendan Conlon (Annex 7); and WIPO Case No. D2001-1037 Vodafone Group Plc v. Desiree Mendoza (Annex 8).

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <vodafone-user.net>, be transferred to the Complainant, in accordance with Paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Name at issue is identical or confusingly similar to the Complainant’s trademark: The material part of the Respondent’s Domain Name, <vodafone-user.net>, is the word “vodafone”, because the word “user” is a common noun and “net” indicates the type of the domain name, and therefore, these two words have no distinctive quality. The “vodafone” part of the Domain Name is identical with the widely recognized trademark owned by the Complainant. The trademark “VODAFONE” for which the Complainant has trademark rights and the Domain Name in dispute are similar to such an extent that the likelihood of confusion is obvious. Previous WIPO Panelists have stated that the addition of a generic term to a complainant’s trademark does not necessarily prevent a finding of confusing similarity. See: WIPO Case No. D2003-0755: Vernon International Inc. v. Frank F. Jackson and Nancy Miller (Annex 9); WIPO Case No. D2001-1442: Viacom International, Inc. v. Matrix Management and T. Parrott (Annex 10); WIPO Case No. D2001-1002: Playboy Enterprises International, Inc. v. Tonya Flynt Foundation (Annex 11); and WIPO Case No. D2000-0047: EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc. (Annex 12).

Furthermore, since the material part of the Domain Name at issue is, at the same time, similar to complainant’s trade name or the well-known abbreviation thereof, the Domain Name <vodafone-user.net> owned by the Respondent as a whole creates a concept or an image of a “network of Vodafone users”. It is quite likely that the Domain Name at issue would cause an erroneous recognition and confusion to anyone who comes into contact therewith as if the website in question was the official site of the Complainant.

(2) The Respondent has no rights or legitimate interests in the Domain Name at issue: There is no evidence of the Respondent’s use of, or demonstrable preparation to use, the Domain Name at issue or name corresponding to it in connection with a bona fide offering of goods or services. Also, there is no evidence that the Respondent has been commonly known by the name <vodafone-user.net> or “vodafone”. Due to the distinctive nature of the trademark VODAFONE, it is quite doubtful that the Respondent would have adopted the word “vodafone” by coincidence.

(3) The Domain Name at issue was registered and is being used in bad faith: The

Complainant further asserts that the Respondent has registered and used the Domain Name in bad faith. The Complainant refers, inter alia, to the Policy, paragraph 4(b)(iv), and alleges that the Respondent has registered and is using the domain name in order to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

B. Respondent

The Respondent failed to file a Response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) 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

(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.

The Panel notes that the Respondent has failed to respond to the Complainant within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Paragraph 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response.

A. Identical or Confusingly Similar

The Domain Name at issue, <vodafone-user.net>, is confusingly similar to the Complainant’s trademark or service mark VODAFONE registered and used by the Complainant throughout the world, including Japan where the Respondent resides.

As the Complainant correctly asserts, the dominant part of the Domain Name at issue, <vodafone-user.com>, is the word “vodafone”, because the word “user” is a common noun and the “net” part indicates the type of the domain name and these two words have no distinctive quality. The word “vodafone” is a coined word adopted by the Complainant for its trade name and trademark in doing business in the mobile telecommunication service throughout the world. The VODAFONE trademark is registered and used by the Complainant as evidenced by the list of registered VODAFONE trademarks attached to the Complaint (see, Annex 3).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence that the Respondent has been or is commonly known by the Domain Name, or that the Respondent has acquired any trademark rights in the Domain Name, neither has the Complainant authorized or permitted the Respondent to use the word “vodafone” for its Domain Name.

C. Registered and Used in Bad Faith

The disputed Domain Name has been registered and is being used in bad faith by the Respondent on the following grounds:

The word “vodafone” is a coined word adopted by the Complainant as its trademark. The Panel finds it hardly conceivable that the Respondent would have adopted the disputed Domain Name without having knowledge of the Complainant’s well-known trademark VODAFONE. The website to which the Domain Name resolves is considerably similar to the website operated by the Complainant’s Japanese subsidiary, Annex 17 to the Complaint. The Respondent’s websites seem to provide a get-together opportunity for men and women, Annex 16 to the Complaint.

From April 2004, numerous text messages inviting to access the website to which the disputed Domain Name resolves (“www.vodafone-user.net” and “www.vodafone-user.net/point-max/”) began to be dispatched to mobile phone users in Japan. The Complainant’s Japanese subsidiary started receiving inquiries of the origin of these text messages. The Complainant tried to contact the Respondent on several occasions, objecting the Respondent’s use of the Complainant’s trademark and requesting the Respondent to cease using the Domain Name. The Respondent chose not to respond to these communications, which, in the Panel’s view, is a further indication of bad faith.

In light of these considerations, it is reasonable to conclude that the disputed Domain Name was registered primarily for the purpose of disrupting the business of the Complainant and its Japanese subsidiary, and that the Respondent is using the Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the disputed Domain Name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(a)(iii) and (iv)of the Policy.

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with Paragraph 4 (i) of the Policy and Paragraph 15 of the Rules, that the Domain Name <vodafone-user.net> be transferred to the Complainant.

Teruo Doi
Sole Panelist

Date: March 30, 2005