The Complainant is Mtt Magyar Telefonkonyvkiado, Budaörs, Baross, of Hungary, represented by S.B.G.& K. Patent and Law Offices, Hungary.
The Respondent is Dexter Black, Beau Vallon, of Seychelles.
The disputed domain name <telefonkonyv.org> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 19, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 19, 2008, Network Solutions, LLC transmitted by email to the Center its verification response disclosing the contact information for the registrant for the disputed domain name which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2008 providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 27, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2008.
The Center appointed David Perkins as the sole panelist in this matter on
January 19, 2009. 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.
4.A.1 The Complainant was incorporated in Hungary in 1991. It is the market leader in that country for telephone book publishing and advertising. It has published numerous telephone books / directories and operates several online telephone books / directories at its “www.telefonkonyv.hu” website. The domain name <telefonkonyv.hu> was registered on June 19, 1997.
4.A.2 The Complainant is the proprietor of the following registered trademarks in Hungary.
Registration No. | Mark | Classes | Date of Filing / Registration |
|
140,490 |
TELEFONKONYV and device |
16 and 41 |
Filed: February 25, 1992 Registered: November 4, 1996 |
|
165,043 |
TELEFONKONYV and device |
9 and 38 |
Filed: February 27, 2000 Registered: May 16, 2001 |
WHOIS searches show the registrant as one, Dexter Black, whose address is given as that of the registrant, Network Solutions, LLC. The Complainant believes that Dexter Black is a fictitious name: paragraph 6.8 below.
4.C.1 On May 6, 2005, the Complainant initiated proceedings in the Metropolitan Court of Budapest against T-Könyv Szolgáltató és Kiadó Korlátolt Felelösségü Társaság and Ferenc Buzanksy (as individual) (“the Defendant”) for an injunction to restrain use by the Defendant of the domain name <telefonkonyv.org> on the basis of infringement of the TELEFONKONYV trademark and unfair market practices. A preliminary injunction was granted by that Court on July 12, 2005.
4.C.2 On January 18, 2007, that injunction was affirmed by the Hungarian Metropolitan Court of Appeal. The Defendant was represented by Dr. Krisztian Zoltan Law Office.
4.C.3 Notwithstanding those judgments, according to the Complainant and registrar's WHOIS the disputed domain name was created on July 30, 2008, and is being used by Teleinfo Media Szolgáltató és Kereskedelmi Korlátolt Felelösségü Társaság of Budapest [“Teleinfo Media”], which was incorporated on April 7, 2008. The address in Budapest given as the headquarters of Teleinfo Media is the same as the address of the law firm which represented the Defendant in the litigation described in the preceding two paragraphs.
4.C.4 On October 21, 2008 counsel for the Complainant sent a cease and desist letter to the Respondent.
4.C.5 The disputed domain name resolves to a website which prominently reproduces the Complainant's TELEFONKONYV trademark and which provides links for advertising third party companies and their services. Further, the Complaint exhibits nine (9) examples of written proposals sent by Teleinfo Media to potential customers, which the Complainant says are confusingly similar in terms of content, form, and structure to statements which it sends to its customers. These documents prominently reproduce the Complainant's TELEFONKONYV trademark in the same colour and typeface as that used by the Complainant.
5.A.1 The Complainant is the proprietor of the registered trademark TELEFONKONYV in Hungary, the earliest registration dating from 1992. The Complainant was incorporated the previous year (1991). It is the market leader in Hungary in the publication of telephone directories both in hard copy and online. The Complainant is commonly known in Hungary by the name “Telefonkonyv”.
5.A.2 The disputed domain name, <telefonkonyv.org>, is identical to that of the Complainant's TELEFONKONYV registered trademark. The disputed domain name was created on July 30, 2008.
5.A.3 The Complainant's case is that none of the circumstances set out in paragraph 4(c) of the Policy are present in this dispute.
5.A.4 The use which is being made of the disputed domain name to resolve to the webpage operated by Teleinfo Media a company incorporated in Hungary in April 2008 is neither bona fide nor fair or legitimate. In this respect, the Complainant bases its case on the background litigation in Hungary and the current activities of Teleinfo Media, which are summarized in Section 4.C above.
5.A.5 The Complainant states that the Respondent must have known of the existence of its TELEFONKONYV trademark, which had been registered and used for some 16 years which was well-known in Hungary, when the disputed domain name was registered on July 30, 2008.
5.A.6 As to use, the disputed domain name which is identical to the Complainant's TELEFONKONYV trademark is being used by a direct competitor of the Complainant in a way calculated to create a likelihood of confusion with that trademark: paragraph 4(b)(iv) of the Policy.
5.A.7 This bad faith use is, the Complainant says, compounded by the manner in which Media Teleinfo is operating through the website to which the disputed domain name resolves. That is described in paragraph 4.C.3 to 5 above. It also has to be viewed, the Complainant says, against the background of the earlier litigation described in paragraphs 4.C.1 and 2 and that the address of Media Teleinfo is the same as the address of the law firm which represented the Defendant in that litigation.
5.A.8 Finally, both the cease and desist letter to the Respondent dated October 21, 2008 has been ignored by the Respondent, as well as the Complaint to which the Respondent has failed to submit a Response. This conduct is also, the Complainant says, indicative of bad faith.
As noted in section 3 above, no Response has been filed.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainant has rights to the TELEFONKONYV trademark, which is registered in Hungary, the earliest registration dating from 1992.
6.6. The disputed domain name <telegonkonyv.org> is identical to that trademark.
6.7. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.8. It is plain from the circumstances set out in the Complaint and particularly the background litigation in Hungary and the use which is currently being made of the disputed domain name by Media Teleinfo summarized in section 4.C above, that the Respondent has no rights or legitimate interests in the domain name. The Respondent, who has failed to reply to the Complainant's cease and desist letter of October 21, 2008 and has also failed to submit a Response in this administrative proceeding, would appear to be as the Complainant suggests a non-existent person. His address is given in the WHOIS particulars as that of the registrar of the disputed domain name.
6.9 There is no basis for any of the circumstances set out in paragraph 4(c) of the Policy to apply on the facts of this case. First, the use made of the disputed domain name by the Media Teleinfo is clearly not bona fide. Second, there is no evidence that the Respondent is commonly known by the disputed domain name. Third, the use being made of the disputed domain name is not a legitimate noncommercial or fair use having regard to the description of that use summarized in paragraph 4.C.5 above.
6.10 In the circumstances, the Complaint also satisfies the requirement of paragraph 4(a)(ii) of the Policy.
6.11 It is unnecessary to repeat the case advanced by the Complainant in paragraphs 5.A.5 to 5.A.8 above. The evidence is simply overwhelming that the disputed domain was registered and is being used in bad faith. Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy see e.g., UDRP paragraph 4(b)(i).
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 name <telegonkonyv.org> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: February 2, 2009