WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vodafone Group Plc v. Brendan Conlon

Case No. D2002-0822

The Complainant in this administrative proceeding is Vodafone Group Plc ("Complainant"), a corporation organized and existing under the laws of England and Wales, with its principal place of business at Newbury, Berkshire, United Kingdom.

The Respondent in this administrative proceeding is Brendan Conlon ("Respondent"), an individual with an address at Carnagarve, Moville, Co. Donegal, Ireland.

The domain name at issue is <vodafonestore.com> ("Domain Name") and the Registrar is Schlund & Partner AG (the "Registrar") of Karlsruhe, Germany.

A Complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on August 30, 2002, and subsequently in hardcopy on September 6, 2002. The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on September 2, 2002.

On September 2, 2002, a Request for Registrar Verification was transmitted to the Registrar, who confirmed on September 4, 2002, in its Verification Response that the disputed Domain Name was registered with Schlund & Partner AG and that Respondent was the current registrant of the disputed Domain Name.

A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on September 10, 2002, setting a deadline of September 30, 2002, by which the Respondent could file a Response to the Complaint.

On September 13, 2002, the Respondent, via e-mail, confirmed that he had received the Commencement Notification and stated a new postal address, different from the one registered with the disputed Domain Name, which according to the Respondent was a wrong address.

Having received no response from Respondent, the Center issued on October 2, 2002, a Notification of Respondent Default. This Notification was sent to respondent by e-mail. The Notification was copied to Complainant.

On October 3, 2002, the Respondent issued an e-mail stating that he did not understand the Commencement Notification and wanted an explanation in layman terms and furthermore that he had indeed issued a response before September 31, 2002.

A notification was transmitted on October 4, 2002, to the Respondent stating that the WIPO Center had not received any response but that the Respondent could still issue a late Response.

On October 5, 2002, the Respondent, issued an e-mail stating that "this e-mail is my official response". The e-mail did not include any challenges to the Complainant’s findings or allegations or indeed any bases for the Respondent to retain registration and use for the disputed Domain Name.

The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements. As the Response from the Respondent firstly was issued too late and secondly does not in any way challenge the Complaint, the Respondent is to be considered in Default.

The Complainant has requested that the dispute should be decided by a single-member Panel. The Respondent has not elected to have the dispute decided by a three-member panel. The Center invited Anders Janson to serve as Sole Panelist and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence, which was duly signed and returned to the WIPO Center on October 15, 2002.

The WIPO Center transmitted to the parties on October 17, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date as of October 31, 2002. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

The Administrative Panel has issued its Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules and the late Response from the Respondent.

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

The Complainant is a corporation, which handles the trademark affairs of the VODAFONE word mark throughout the world and is a wireless telecommunications operator with a presence in 28 countries across five continents.

The Complainant is the owner of inter alia four registrations for the word mark VODAFONE in the United Kingdom and within four classes as a Community Trademark Registration within the EU.

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 Respondent is an individual with a stated contact address in Ireland. The Respondent is to be considered in Default and accordingly has not challenged the conclusions of the Complainant.

The disputed Domain Name <vodafonestore.com> was registered by the Respondent with Network Solutions, Inc on July 23, 2002.

The disputed Domain Name is not connected to any website. According to the Complainant the disputed Domain Name earlier was connected to the "Hits4pay" website which the Respondent in an e-mail dated August 13, 2002, has admitted is a completely independent company that he does not own.

The disputed Domain Name was made available as an item for sale at the Internet auction site eBay UK between July 31, 2002, and August 7, 2002. The Respondent invited opening bids to start at £20.00. The advertisement stated, among others, "you are bidding for a really exclusive name <vodafonestore.com>"; and "I haven’t had either of them valued but I’m sure anyone with half a brain could tell you <vodafonestore.com> and <skool.info> are grade A domains and worth a substantial amount of money, weather you use if for your company or to re-sell! The choice is yours!!"

The Respondent offered to transfer the disputed Domain Name to the Complainant if the Complainant was prepared to give him "500 shares in vodafone", produce advertising regarding the disputed Domain Name, make him a main character in the advertising for the disputed Domain Name, cover all expenses for him to participate in the advertising and finally provide him with a free Samsung t100.

Complainant contends that:

- the Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name was registered and is being used in bad faith; and

- the Domain Name <vodafonestore.com> should be transferred to the Complainant.

Respondent has not submitted any viable Response and is to be considered in Default. According to documentation available in the case file, the Complaint and the Notification of Respondent Default Respondent were served on the Respondent.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

"(i) 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

(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."

The Domain Name at issue is <vodafonestore.com>. Complainant is the holder of the registered trademark "VODAFONE". The Complainant owns registrations for the trademark "VODAFONE" in inter alia, the United Kingdom, the United States, Austria, France, Germany, Greece, Hong Kong, Ireland, Malta, Italy, Spain, Norway, Portugal, South Africa, Sweden the Benelux countries, and Switzerland. The Complainant has provided statements to support the supposition that the disputed Domain Name and the name and marks of the Complainant are confusingly similar. The Respondent does not contest this supposition.

By incorporating the Complainant's mark with the word "store" - a generic term indicating a place where a customer can buy a product or a service - at the end of the domain name, the likelihood of confusion cannot be considered diminished but rather aggravated because the name indicates a website with a store selling products or services connected to the trademark VODAFONE. Therefore, the disputed Domain Name may easily confuse consumers as to the source or origin of the website.

When trying to access the website assigned to the disputed Domain Name the Panel has only received DNS-error messages.

The Panel agrees with the Complainant that by virtue of the Complainant many trademark registrations and extensive use, the trademark VODAFONE is well known and distinctive. The generic term "store" does not diminish the similarities between the trademark and the disputed Domain Name. The Panel therefore holds that the Complainant has established element (i) of the Policy's Paragraph 4(a).

As mentioned above the Respondent has not filed a Response in accordance with the Rules, Paragraph 5. In those circumstances when Respondent clearly has no obvious connection with the disputed Domain Name, and indeed when the Domain Name has not been actively used, the mere assertion from Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists. Respondent has not submitted any viable response. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of Paragraph 4(a)(ii) of the Policy. In conclusion the Respondent has not presented any evidence of rights or legitimate interests in using the disputed Domain Name.

The Panel therefore holds that the Complainant has established element (ii) of the Policy's Paragraph 4(a).

Finally the Panel has to consider the question of the disputed Domain Name having been registered and used in "bad faith".

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name. Paragraph 4(b)(i) states that a circumstance indicating bad faith is the registration of a domain name primarily for the purpose of selling, or otherwise transferring the domain name registration to the owner of the trademark or servicemark.

The Respondent has registered the disputed Domain Name on July 23, 2002, and put the domain as an item for sale at a well-known Internet auction site only 8 days later. The text advertising the item for sale at the Internet auction site proclaimed that the disputed Domain Name obviously should be "worth a substantial amount of money, weather you use if for your company or to re-sell".

It is the view of the Panel that the disputed Domain Name has been registered for the sole purpose of selling it.

Selling a domain name is however not in itself prohibited by the ICANN Policy, as stated in Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638 (<manchesterairport.com>): "Selling a domain name is not per se prohibited by the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically reprehensible). Selling of domain names is prohibited by the ICANN Policy only if the other elements of the ICANN Policy are also violated, namely trademark infringement and lack of legitimate interest."

There is no question that the trademark VODAFONE is very well known, at least in Europe. It is therefore highly unlikely that the Respondent could have registered the domain name without being aware of the trademark. The Panel considers that this is sufficient in itself to prove that the Respondent was fully aware of the existence and significant reputation of the Complainant at the time of registration. Furthermore the correspondence between the Complainant and the Respondent clearly shows that the Respondent had no doubt of the Complainant’s legitimate interest in the disputed Domain Name but rather performed the registration when he discovered that the Complainant had "missed" the opportunity to register its trademark.

It is the Panel’s opinion that only because a domain name contains a well-known trademark, it is not necessarily used in bad faith. It is quite possible that a registrant has a plausible and acceptable reason or use for the domain name that does not constitute bad faith. In this particular case however the Respondent, has registered a domain name which he has no plausible legitimate rights to, performed this registration for the sole purpose of selling it and been aware of the Complainant and its legitimate interest in the disputed Domain Name.

Furthermore the Respondent has not presented any reasons or evidence or arguments of a legitimate interest in using the disputed Domain Name. It is not possible to conceive an obvious reason in which the Respondent could legitimately use the domain name.

The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical and confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.

Consequently the Panel decides that the Domain Name <vodafonestore.com> shall be transferred to the Complainant.