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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vodafone Group Plc v. Adam Alhashedi

Case No. D2016-0742

1. The Parties

The Complainant is Vodafone Group Plc of Berkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Boult Wade Tennant, United Kingdom.

The Respondent is Adam Alhashedi of Tatarstan, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <fodafone.net> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2016. On April 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details, and confirming that the language of the Registration Agreement is English.

The Center verified that 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").

The Center received email communications from the Respondent in English on April 16, April 18, April 19, and April 20, 2016. In the email of April 18, 2016 the Respondent offered to sell the disputed domain name for at least USD 1000. Accordingly, the Center requested the Complainant confirm whether the proceedings be suspended for the parties to reach a settlement or whether the Center proceed with Notification of Complaint. On April 19, 2016 the Complainant confirmed that the Complainant was not interested in purchasing the disputed domain name from the Respondent and wished to pursue its Complaint.

The Complainant requested that the Center proceed with the Notification of Complaint on April 20, 2016.

On the same day, the Respondent stated that it only understands the Russian language and in a subsequent email insisted that the Registrar's website is in the Russian language and requested communications in the Russian language.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016.

No formal Response was filed with the Center. On May 13, 2016, pursuant to paragraph 6 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center informed the Parties it was proceeding to Panel Appointment.

The Center appointed Ladislav Jakl as the sole panelist in this matter on May 30, 2016. 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 is a mobile communications network operator with its headquarters in Berkshire, England, United Kingdom. The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the NASDAQ (Annex 4 to the Complaint). The Complainant is the holder of many VODAFONE trademarks, including European Union trademarks (Annex 7 to the Complaint) and trademark registrations in the Russian Federation (Annex 7a to the Complaint), UK VODAFONE trademark No. 2109387, registered on January 2, 1998 in class 42 and UK VODAFONE trademark No. 1215879, registered on October 14, 1998 in class 9 and the Russian Federation VODAFONE trademark No. 218657, registered on September 7, 2002 in classes 9, 11, 18, 38, 42. The Complainant is the owner of over 200 domain names consisting of the mark VODAFONE as well as more than 400 domain names in which VODAFONE is used in combination with other words and/or numbers, including <vodafone.net>, registered on January 3, 1996 (Annex 9 to the Complaint).

The disputed domain name <fodafone.net> was registered on June 30, 2013 (Annex 10 to the Complaint).

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name <fodafone.net> reproduces the "odafone" element, contained within its earlier rights. And that it differs only as to the first letter "F" which could be easily mistyped and for many the phonetic pronunciation of "F" is similar to "V". The Complainant also notes that as a result of the identical "odafone" element, there is a significant degree of visual and phonetic similarity such that appearance of the disputed domain name is similar and that it is a classic instance of "typosquatting". The Complainant concludes that disputed domain name is confusingly similar to the VODAFONE trademarks.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection with or affiliation to the Complainant and has not received any express or implied license or authorization to use VODAFONE trademarks in a domain name or in any other manner. The Respondent does not hold any trademark registrations for the word mark "FODAFONE" and is also not known by the name Fodafone. The Complainant's trademarks VODAFONE registrations predate the registration of the disputed domain name. Moreover the disputed domain name purports to be selling products which are directly connected with those offered by the Complainant.

As to the question, whether the disputed domain name was registered and is being used in bad faith, the Complainant contends that the Respondent seeks to create confusion on the part of the public between the Respondent and the Complainant for commercial gain. Such behaviour is indicative of bad faith (Sydney Markets Limited v. Nick Rakis, WIPO Case No. D2001-0932). Moreover the Complainant introduces that it is inconceivable that the Respondent was not aware of the Complainant or its activities when the disputed domain name was registered. The Respondent by using the disputed domain name is intentionally misleading the consumers and confusing them so as to benefit from its confusing similarity with the disputed domain name and from possible typing mistakes by Internet users and to establish in such a way bad faith. The Respondent registered the disputed domain name principally for the purpose of disrupting of the Complainant's business. In addition the Complainant contends that the Respondent registered the disputed domain name for the purpose of attempting to attract for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with Complainant's trademarks as source, sponsorship, affiliation, or endorsement. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name <fodafone.net> be transferred to the Complainant.

B. Respondent

The Respondent did not submit a formal response to the Complainant's contentions but instead submitted several emails, requesting a settlement, offering to sell the disputed domain name stating he only understood Russian. In one of the emails of April 20, 2016, the Respondent stated the following "I agree with you, the amount indicated is highly likely for more than the domain name was purchased, But you must take into consideration customers who will be losing them due to take you our domain purchased about six years ago, and many other things will lose it. If you did not pay the amount of our loss we will not give up the domain we will give the necessary documents in a timely manner. How much you can pay to buy the domain name? tell us your amount!"

6. Discussion and Findings

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

(i) the disputed 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 disputed domain name; and

(iii) the disputed 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 three elements are present lies with the Complainant.

Paragraph 11(a) of the Rules provides that "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Panel notes the registrar confirms the language of the registration agreement is English, and notes the Respondent's communications and website content in English. Having regard to these circumstances, the Panel determines that English shall be the language of the administrative proceeding.

A. Identical or Confusingly Similar

The Complainant is the holder of many VODAFONE trademarks, as described above. The disputed domain name <fodafone.net> includes the "odafone" element, contained within the VODAFONE trademarks and that it differs only as to the first letter "F" which could be easily mistyped and for many the phonetic pronunciation of "F" is similar to "V". There is a significant degree of visual and phonetic similarity such that appearance of the domain name is confusingly similar and that it is a classic instance of "typosquatting". In the Panel's assessment, there is no doubt, that the disputed domain name <fodafone.net> incorporates the Complainant's trademarks VODAFONE in with a typographical error and that the addition of the Top-Level Domain gTLD ".net" does not sufficiently distinguish the disputed domain name from the trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).

For all the above cited reasons, the Panel concludes that disputed domain name <fodafone.net> is confusingly similar to the Complainant's trademark VODAFONE in which the Complainant has rights, and therefore, the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, he has not used or has not made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has not been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name, seeing that the Respondent has no connection with or affiliation to the Complainant and has not received any express or implied license or authorization to use VODAFONE trademarks in a domain name or in any other manner. The Respondent does not hold any trademark registrations for the word mark VODAFONE and is also not known by the name "Fodafone". A mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). Moreover the Respondent is using the Complainant's trademarks in order to divert Internet users from the Complainant's website by capitalizing on the public recognition of the VODAFONE trademarks (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Moreover the disputed domain name purports to be selling products which are directly connected with those offered by the Complainant. The Respondent is using the Complainant's trademarks in order to divert Internet users from the Complainant's website by capitalizing on the public recognition of the VODAFONE trademarks (Telstra Corporation Limited v. Nuclear Marshmallows, supra. This cannot provide the Respondent with any rights or legitimate interests in the disputed domain name.

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith because he seeks to create confusion on the part of the public between the Respondent and the Complainant for commercial gain. Such behaviour is indicative of bad faith (Sydney Markets Limited v. Nick Rakis, WIPO Case No. D2001-0932). There is no doubt that the Respondent has registered the disputed domain name with full knowledge of the Complainant's rights in the VODAFONE trademarks. Previous UDRP decisions have found bad faith in a case the disputed domain name was registered where the respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (Philip Morris USA Inc. v. Jose Vicente Gomar Llacer and Gandiyork SL, WIPO Case No. D2014-2264; Philip Morris USA Inc.v.ADN HOSTING, WIPO Case No. D2007-1609). The Respondent by using the disputed domain name is intentionally misleading the consumers and confusing them so as to benefit from its confusing similarity with the disputed domain name and from possible typing mistakes by Internet users and to establish in such a way bad faith. Undoubtedly the Respondent registered the disputed domain name principally for the purpose of disrupting of the Complainant's business. In addition the Respondent registered the disputed domain name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with Complainant's trademarks as source, sponsorship, affiliation, or endorsement (Popular Enterprises.LLC v. American Consumers First et al., WIPO Case No. D2003-0742). As well the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). Lastly, the Panel notes that the Respondent offered the disputed domain name for sale for an amount exceeding its likely out-of-pocket costs.

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fodafone.net> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: June 13, 2016

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