WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Net2Phone Inc. v. Mr. Algaram, MPT Communications Ltd.
Case No. D2007-0545
1. The Parties
The Complainant is Net2Phone Inc., of Newark, United States of America, represented by MAQS Law Firm Advokatbyrå AB, Sweden.
The named Respondents are Mr. Algaram of Harrow, United Kingdom of Great Britain and Northern Ireland, and MPT Communications Limited (“MPT”), also of Harrow, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <net-2phone.net> (“the Domain Name”) is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 16, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On April 16 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details for 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 (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 Respondents of the Complaint, and the proceedings commenced on April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007.
An informal response (a letter from the Respondent Mr. Algaram, with attachments) was received by the Center by fax on April 19.
On April 19 the Center pointed out to Mr. Algaram that he was entitled to a 20 day term to file a detailed response, and stated that if Mr. Algaram wished the Center to consider his April 19 communication as the Respondents’ final response, he should let the Center know.
On April 20, 2007, Mr. Algaram replied by email enclosing another letter (with attachments) and saying: “Please find our updated attachment.”
Mr. Algaram sent another email on April 20, 2007, checking that his April 20 email had been received by the Center, and noting that he would be on holiday between May 9 and June 10.
There was a further email exchange between Mr. Algaram and the Center on May 5, 2007, in the course of which the Center asked Mr. Algaram to let it know if he wished his “updated” letter and attachments sent to the Center on April 20 2007 to be considered as the Respondents’ final response to the Complaint. There was no reply to that request.
The Center appointed Warwick Smith as the sole panelist in this matter on May 21, 2007. 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. Factual Background
The Complainant
The Complainant is a New Jersey Corporation. It is a substantial provider of Voice Over IP, SIP, and wireless solutions around the world. According to the Complaint, the Complainant provides its partners with telephony solutions, calling cards, prefix dialing, and “enterprise services”, in over 100 countries.
A core part of the Complainant’s business, is the provision of services (described as “Internet telephony”) that permit users to make local and long distance telephone calls over the Internet. The necessary enabling software for these services is distributed by the Complainant over the Internet.
The Complainant established a website at “www.net2phone.com” in 1995, and it is from this website that it primarily conducts its internet telephony business. The Complainant also holds the domain names <net2phone.net> (registered February 26, 1997), and <net-2phone.com>.
In 1997, the Complainant established a worldwide reseller program, under which authorized resellers would buy the Complainant’s services and sell those services under the mark NET2PHONE, around the world. The Complaint says that, as at the second quarter of 2006, it had local distributors in 89 countries.
According to the Complaint, the Complainant has made a substantial financial investment in the advertising, marketing, and promotion of its telecommunication services offered under the NET2PHONE mark. It has also received a number of awards for its products offered under that mark.
The Complainant’s Trademarks
The Complainant has produced evidence that it is the proprietor of a number of United States Federal Trademark registrations for the trademark or service mark NET2PHONE. It is not necessary to refer to them all, but by way of example, the evidence shows that the Complainant’s parent company IDT Corporation is the registered proprietor of the word mark NET2PHONE in International Class 38, in respect of:
“Communication services, namely, domestic, international and long distance telephone services, allowing personal computer users to make real-time calls over a global computer network to people using traditional telephones.”
That registration has been in effect in the United States since December 29, 1995.
The Complainant says (and the Respondents do not deny) that it and its parent company are senior users of the NET2PHONE mark.
The Complainant is itself the registered proprietor of United States Registered Mark No. 2417732 for the word mark NET2PHONE, covering the following goods in International Class 9:
“Communications-based hardware, equipment and accessories that operate over a global computer network and other communication systems and networks, namely telephone devices, namely PC telephones, wireless and wireline telephones; video and audio cards that are installed into a PC … computer software via disk, CD ROM, or other media for providing Internet protocol telephony communications.”
The same registration covers calling card services in International Class 36.
In addition to the United States Federal registrations, the Complainant has produced evidence that it is the proprietor of Community Trademark registrations for NET2PHONE. The filing date of one such mark was April 12, 1999, and the date of registration August 2, 2000. This registration covers the following communication services in International Class 38:
“… domestic international and long distance telephone services, allowing personal computer users to make voice equivalent calls over a global computer network to people using traditional telephones.”
Community trademark No 1469535 for the word mark NET2PHONE, registered by the Complainant with effect from January 2000, covers “pre-paid telephone calling card services providing access to a global communications network”, in International Class 36. This registration also covers various Internet telephony services in International Class 38.
The Complainant is also the registered proprietor of the word mark PC2PHONE in the United States, in respect of “computer telephony which allows personal computer users to transmit voice, data and video in real time via the global worldwide computer network”. That registration has effect from September 8, 1999.
The Respondents and the Domain Name
The Domain Name was registered on April 12, 2005.
The Complainant has attached pages from the website to which the Domain Name resolves (“the Respondents’ website”). These pages appear to have been downloaded on March 23, 2007. The first such page was headed “MPT” with a device, immediately below which was the expression “VOIP Exchanger”. The page offered various communication services, including “Family Plans” for “PC-2PHONE”, and calling card services. VOIP services were offered to business users. A number of other services were offered at the website, including voicemail, conference, virtual facts, web conference, and PBX services. Calling rates from a number of (primarily Middle East) countries were quoted in British currency.
A page on the Respondents’ website as at March 23, 2007, was headed “NET-2PHONE”, with the “2” in a distinctive stylized script different from that used for the words “NET” and “PHONE”. On the left of this page, appeared the expression “PC 2 Phone”, and immediately to the right of that expression was a box containing the following:
“Net-2Phone
Net-2Phone is software that allows you to make phone calls and send faxes to anywhere in the world. It connects your PC to any telephone (fixed line as well as mobile) around the world. The calls are established using the Net-2Phone Dialer. With this service you can now call up your friends and family anywhere around the world at a fraction of regular ISD charges. The voice transmission is of very high quality. To get started, download now.”
On the same page of the Respondents’ website, under the heading “What are the Advantages?”, there was listed:
“…
• Send faxes from your PC
• PC2PC calls are always free …”
There followed a section headed “How to get started with Net-2Phone …”, where the site visitor was invited to buy MPT’s global calling card, and to download and install free, the software Dialer. Online purchases could be made by clicking on a “SIGN UP” icon.
A web page headed “Calling Card”, advertised a pre-paid calling card facility, said to be supported by MPT’s integrated calling card platform.
In their “updated” informal response, the Respondents say that the true respondent is in fact MPT (the informal response was signed by Mr. Haitham Algaram as secretary of that company).
The updated informal response says that MPT was established in May 2003, and began providing phone cards in April 2004. That service was stopped in August 2005. The only trading names MPT has used have had no relation with the Complainant’s brand name.
After August 2005, the Respondents say that MPT stopped the phone card service, and started selling two types of telecommunication services. Presumably these are the personal computer to telephone and Voice Over IP services presently offered through the Respondents’ website.
The Respondents say that MPT operates two websites, one at the Domain Name and the other at “www.voipexchanger.com”.
According to the updated informal response, the expressions “Net-2Phone” and “PC-2Phone” appearing on the Respondents’ website, were not meant to brand the Respondents’ products and services.
The Respondents say that MPT has not issued any kind of advertising (via any medium) “which carries the name of your trade (Net2Phone or PC2Phone), or (Net-2Phone or PC-2Phone)”, and that MPT has never issued any invoice bearing either of the trade names “Net-2Phone” or “PC-2Phone”.
After MPT first received notice of the Complaint, the Respondents say that it immediately removed the phrases “PC-2Phone” and “Net-2Phone” from the Respondents’ website. The Respondents say that they do not believe that MPT needs to include those phrases on the Respondents’ website in the future.
The Panel has visited the Respondents’ website, and these two expressions have indeed been removed. First, the expression “NET-2PHONE” with the stylized “2” which appeared at the top of at least two pages on March 23, 2007, has been removed. Secondly, the box previously headed “Net-2Phone” is now headed “Dialer”, and the expression “PC-2Phone” immediately to the left of that box has also been replaced with the word “Dialer”. Otherwise, the text in the box appears to be substantially the same.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Name fully incorporates the Complainant’s NET2PHONE trademark and service mark. The Domain Name is confusingly similar to that trademark.
2. The Respondents have no rights or legitimate interests in respect of the Domain Name, for the following reasons:
2.1 The Complainant has not authorized the Respondents to use and/or register the Domain Name.
2.2 The names of neither of the Respondents have any similarity to the Domain Name.
2.3 The Respondents are not making any legitimate non-commercial or fair use of the Domain Name.
3. The use of the Domain Name is misleading the general public and constitutes a misappropriation of the goodwill and standing of the Complainant and its trademarks. The registration and use of the Domain Name creates the impression among the general public that MPT is a company affiliated with the Complainant.
4. The Domain Name was registered and is being used in bad faith, for the following reasons:
4.1 The Respondents’ registration and use of the Domain Name and the use of the expression “NET2-PHONE” as a trademark on the Respondents’ website, are per se circumstances showing that the Domain Name was registered and is being used in bad faith.
4.2 The fact that registration of a domain name that is confusingly similar to a famous trademark by an entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (citing Sporty’s Farm LLC v Sportsman’s Market Inc, 202 F.3d 489, 498 (2d Cir. 2000); AT and T Corp v John Zuccarini D/B/A Music Wave and RaveClub Berlin; WIPO Case No D2002-0440; Veuve Clicquot Ponsard, Maison Fondée en 1772 v The Polygenix Group Co; WIPO Case D2000-0163).
4.3 According to the “Way Back Machine” at “www.archive.org”, there was no website at the Domain Name until about December 2005. The Complainant had been using its NET2PHONE mark for a long period of time before then.
4.4 The Domain Name also fully reflects the name of the Complainant, so the Respondents necessarily knew that the Complainant had established legal rights in NET2PHONE.
4.5 The registration of a trademark as such put the Respondents on constructive notice of the Complainant’s rights in that mark.
4.6 The widespread promotion of the Complainant’s products and services within the same apparent sphere of activity as MPT means that the Domain Name was registered and is being used in bad faith.
4.7 It is not reasonable to expect that the Respondents invented and registered the Domain Name, without knowledge of the Complainant. Therefore, the Respondents knowingly and intentionally registered the Domain Name with the purpose of trading on the goodwill the Complainant has in its name and trademark by intentionally attracting Internet users (for commercial gain) to an entity totally different from the one intended. This is further supported by the fact that the Respondents, in addition to the use and registration of the Domain Name, also use the expression “PC-2Phone” on the Respondents’ website.
4.8 The Domain Name inevitably has the effect of attracting Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark.
B. Respondents
The Respondents contend:
1. They have never had any product in the market branded with the Complainant’s trademarks.
2. The expressions “net-2phone” and “pc-2phone” on the Respondents’ website are not meant to brand MPT‘s products and services. They are generic phrases commonly used in the telecommunications service industry to describe types of operation mode. The expression “PC-2Phone” is a shortcut to a service method of calls from computer users to landline telephones. The expression “Net-2Phone” is a shortcut to a service method of calls from network users to telephone landline.
3. Dozens of telecommunications companies worldwide use the expression “PC2phone” in their websites as a service type.
4. The product/trading names used by MPT have no relationship with the Complainant’s branded name. The Respondents have never entered the United States market under any of the marks or names mentioned in the Complaint.
5. The Respondents’ website clearly shows the name of the company, as MPT. There is no suggestion of any connection or relationship with the Complainant. Therefore, there is no basis for the Complainant to contend that it has suffered losses as a result of the Respondents’ activities.
6. An Internet search for the Complainant’s NET2PHONE trademark and its PC2PHONE trademark through a search engine such as Google or Yahoo!, does not return the Respondents’ website as an associated website or refer to MPT as a similar company that markets similar products.
7. To demonstrate its good faith, the Respondents have removed from the Respondents’ website the two phrases “PC-2phone” and “Net-2phone”.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have 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.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint. It is the registered proprietor of the mark NET2PHONE in the United States and in the European Community, and therefore has rights in that mark.
The Complainant’s NET2PHONE mark is almost identical to the Domain Name. The only differences are that the Domain Name contains a hyphen, and the suffix “.net”. The suffix is not to be taken into account in comparing a domain name with a complainant’s mark under paragraph 4(a)(i) of the Policy, and the hyphen does nothing to distinguish the Domain Name from the Complainant’s mark. Phonetically, the two are identical, and visually they are almost identical. Both the mark and the Domain Name convey the same “idea”, or impression.
The Panel therefore concludes that the Domain Name is confusingly similar to the NET2PHONE mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The wording of paragraph 4 (c) of the Policy appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. (If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.)
That approach to the burden of proof under this paragraph of the Policy is consistent with the “Consensus View” of WIPO panels, described at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has established that the Domain Name is confusingly similar to the NET2PHONE mark in which it has rights, and that it has not authorized the Respondents to use that mark, whether in a domain name or otherwise. So the evidential onus shifts to the Respondents (in particular to Mr. Algaram as registrant of the Domain Name) to demonstrate that they have some right or legitimate interest in the Domain Name.
Looking at the examples of rights or legitimate interests provided at paragraph 4(c) of the Policy, it is clear that paragraph 4(c)(ii) does not apply – there is no suggestion of the Respondents or either of them being “commonly known by” the Domain Name.
Looking at paragraph 4(c)(i) of the Policy, the Respondents have been using the Domain Name. From around December 2005 the Domain Name has been pointed to the Respondents’ website. There is no evidence of the Complainant having given the Respondents notice of the present dispute before December 2005, so the defence under paragraph 4(c)(i) of the Policy must succeed if the Respondents’ use of the Domain Name from that date has been “in connection with a bona fide offering of goods or services”.
For the following reasons, the Panel concludes that the Respondents have not been using the Domain Name in connection with a bona fide offering of goods or services, and that the defence under Paragraph 4(c)(i) is not available to the Respondents:
1. Since at least 2003, the Complainant and MPT have been operating in the same fields (Internet telephony, calling cards, and similar services). The Complainant is obviously a major international player in those fields, and it was established as such before the Domain Name was registered in April 2005. The Complainant was also by then the proprietor of the Community Trademark NET2PHONE, and it was the registered holder of the domain names <net2phone.com> and <net2phone.net>. In those circumstances, it is inconceivable that the Respondents could have been unaware of the Complainant when Mr. Algaram registered the Domain Name in April 2005. The Respondents do not suggest otherwise. The Panel so finds.
2. The Domain Name is very nearly identical to the Complainant’s name, and to its registered United States and Community trademarks and service marks.
3. The Respondents must have appreciated when Mr Algaram registered the Domain Name, that there would be a likelihood of confusion amongst Internet users familiar with the Complainant and its products, who would naturally (and not unreasonably) assume that any website at the Domain Name would be operated by or associated with the Complainant.
4. The Complainant has established that it has trademark and service mark rights in the European Community, in the mark NET2PHONE. While it is neither necessary nor appropriate for the Panel in an administrative proceeding such as this to make any findings on questions of trademark infringement, the Panel notes that the Respondents’ use of the expression “NET-2PHONE” at the top of at least two pages on the Respondents’ website as it stood on March 23, 2007, did give the appearance of use of the expression as a product brand (rather than as a topic heading, or some other descriptive use). The position at the top of the page with no related text or other immediate context, the use of the upper case lettering for “NET” and “PHONE”, and the stylized “2”, all tend to suggest use in a trademark sense.
5. The Respondents contend that “net-2phone” and “pc-2phone” are generic phrases, commonly used in the telecommunications service industry, to describe operation modes. But the Respondents have produced no evidence of any such common usage, at least in respect of the expression “net-2phone”. They have produced copies of pages from two websites, which are apparently unrelated to the Complainant, where the expression “PC2Phone” is used as an apparent descriptor of the particular services offered at the websites, but they have produced no similar evidence relating to the expression “net-2phone”. If the Respondents wished to contend that an expression which the Complainant has succeeded in registering as a trademark in the United States and in the European Community is no more than a generic, or descriptive expression available for use by anyone in the telecommunications industry, evidence supporting that contention should have been supplied. It was not.
6. At exhibit MPT1 to the updated informal response, the Respondents offered separate meanings for the expressions “PC-2Phone” and “Net-2phone”. While the expression “PC-2Phone” was claimed to refer generically to any calls made from a computer to a telephone, “Net-2phone” was said to denote, again generically, calls from a network to a telephone (or “from network users to telephone landline”).
The Panel notes that the Complainant’s use of the expression “Net-2Phone” does not appear to suggest any necessary connection with computers linked together on a network (whether a local area network, wide area network, or any other form of computer network which may exist). The “Net” part of the Complainant’s “Net2Phone” name and NET2PHONE mark appears to have been derived from the generic expression “Internet telephony”, rather than from the concept of computers linked together on a network of some sort. Consistent with that view, the Complainant’s United States registration for NET2PHONE in International Class 38 in respect of “communication services”, refers only to “allowing personal computer users to make real-time calls over a global computer network to people using traditional telephones”.
That appears to the Panel to be precisely the same kind of service the Respondents have described by reference to the expression “PC-2Phone”.
7. Looking at the Respondents’ website as it stood at March 23, 2007, it may be that the Respondents believed they were using the expression “PC-2Phone” in a generic, or descriptive sense. Under the heading “Family Plans”, the expression “PC-2PHONE” appeared beside the generic expression “Calling Card”. Other generic or descriptive “click-on” expressions appeared immediately to the right, under the heading “Business Plans”. A site visitor clicking on “PC-2Phone” was taken to a web page where the expression “PC 2 Phone” appeared on the left hand side, in the manner of a topic heading. Almost immediately to the right, in a box, was a section headed “Net-2Phone”, with text below describing Net-2Phone as a particular form of software which allowed the user to make phone calls and send faxes from his or her personal computer. Such calls were said to be established using the “Net-2Phone Dialer”. After the Respondents received notice of the Complaint, they changed both expressions, substituting for each the one word, “Dialer”. That suggests to the Panel that “PC2Phone” and “Net-2Phone” were used by the Respondents on March 23, 2007, to refer to precisely the same product. If that is so, it is not clear why it was necessary to use two expressions at all. One explanation, would be that the expression “Net-2Phone” was intended to be understood as the particular brand of the Respondents’ “PC 2 Phone” service. That would be consistent with the use of the stylized “NET-2PHONE” appearing at the top of the web page.
8. Exhibit MPT1 to the updated informal response suggests that the use of the “Net” in the expression “Net-2Phone” was chosen to distinguish calls made by users of networked computers, from the situation where the user was operating a stand-alone computer (in which case the expression “PC-2Phone” would have been indicated). But the expression “Net-2Phone” on the Respondents’ website appeared in a section dealing with “Family Plans”, and where the user was encouraged to “call up your friends and family ….” It seems to the Panel that nearly all home, or family, computer users, would have been users of stand-alone PCs, which were not linked to any network. Network to phone services would have been of little interest to most users in that category.
9. For the reasons stated in paragraphs 4 to 8 above, the Panel is not satisfied on the evidence produced by the Respondents either:
(i) That the expression “Net-2Phone” has the common usage meaning in the telecommunications industry for which the Respondents contend; or
(ii) That the Respondents chose to use the expression “Net-2Phone” for the reason they have claimed (namely, as a “shortcut to a service method of calls from network users to telephone land line”).
10. Having regard to the near-identity of the Domain Name to the Complainant’s name and mark, the Respondents’ knowledge of the Complainant’s name and mark, their knowledge of the likelihood of confusion being caused by their use of the Domain Name, and the unsatisfactory nature of their explanation for their use of the expression “Net2Phone”, the Panel is led to conclude that the Respondents’ use of the Domain Name has not been bona fide, and has therefore not been a use “in connection with a bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) of the Policy.
For the same reasons, the Panel concludes that the Respondents’ use of the Domain Name has been neither fair nor legitimate. Paragraph 4(c)(iii) of the Policy therefore cannot assist the Respondents.
The Respondents have not suggested any other basis on which the Panel might find that they have a right or legitimate interest in the Domain Name. In the updated informal response, they refer to a number of other matters, including the nature and names of particular products they have (or have had) in the market, the names they have used in advertising and on invoices, the financial losses suffered by MPT, and the fact that their activities would not have caused the Complainant any loss. None of those submissions seems to the Panel to be relevant to the Panel’s task, which is concerned only with the Domain Name, and whether or not it has been registered and used in breach of paragraph 4(a) of the Policy. It is not necessary for the Complainant to show that the Respondents’ activities have caused it any loss, and nor is it relevant whether or not the Respondents’ registration and use of the Domain Name has in fact resulted in any financial gain for either of them.
There being no basis for the Panel to find that the Respondents have any right or legitimate interest in the Domain Name, the Complainant succeeds on this part of the Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted 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.
The Panel is satisfied that the circumstances fall within paragraph 4(b)(iv) above. By using the Domain Name, the Respondents have intentionally attempted to attract, for commercial gain, internet users to the Respondents’ website, by creating a likelihood of confusion with the Complainant’s NET2PHONE mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website.
The Complainant and the Respondents operate in the same field of commercial activity, and the Respondents have deliberately chosen to register a domain name which is almost identical with the Complainant’s name, its principal trademark, and its principal domain name. It must have been obvious to Mr. Algaram and MPT when the Domain Name was registered, that internet users coming across the Domain Name who were familiar with the Complainant and its well known products, would assume that the Domain Name would point to a website which was operated by the Complainant, or at least affiliated with the Complainant or endorsed by the Complainant. The Respondents’ website is clearly commercial in nature, and the only sensible conclusion the Panel can draw is that the Respondents (through Mr. Algaram) registered the Domain Name with a view to commercial gain. The fact that MPT may not have succeeded in making a profit does not affect that conclusion.
For the reasons set out above under the heading “rights or legitimate interests”, the Panel does not accept the Respondents’ explanation for their choice of the Domain Name, or their reasons for using the expression “Net-2Phone” on the Respondents’ website. The Respondents’ decision to remove that expression from the Respondents’ website after the Complaint was notified, and their failure to comply with the Rules by filing a proper Response, are further indicators suggesting that the Respondents’ registration and use of the Domain Name has not been in good faith. (Under paragraph 5(b)(viii) of the Rules, the Respondent was required to include in the Response a certificate to the effect that the information contained in the Response was to the best of the Respondents’ knowledge, complete and accurate. No such certificate was contained in the updated informal response provided to the Center on April 20, 2007, or in any other documents.)’
The Complainant having proved the various matters required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
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 Name, <net-2phone.net>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: June 4, 2007