Compañia Dominicana de Telefonos (CODETEL) v. Intercode Telephone Communications (CODETEL-DOM)

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Compañia

Dominicana de Telefonos v. Intercode Telephone Communications

Case No.

D2001-0082

1. The Parties

The Complainant is Compañia

Dominicana de Telefonos, a Dominican corporation with its principal place of

business in Santo Domingo, Dominican Republic. The Complainant is represented

by Patricia Selma Villegas Garcia, attorney-at-law, of Santo Domingo, Dominican

Republic.

The Respondent is Intercode

Telephone Communications, a United States corporation having its principal place

of business in El Paso, Texas. The Respondent is represented by Mr Stephen

H. Sturgeon, of Stephen H. Sturgeon & Associates P.C., attorneys of Washington

D.C., U.S.A.

2. The Domain Name and

Registrar

The domain name at issue

is <codetel.com>. The domain name is registered with Network Solutions

Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").

It was registered on November 16, 1997.

3. Procedural History

The original Complaint

having some deficiencies, an Amended Complaint, submitted by Compañia

Dominicana de Teléfonos was received on February 5, 2001, (electronic

version) and February 7, 2001, (hard copy) by the World Intellectual Property

Organization and Mediation Center ("WIPO Center").

On January 30, 2001, a

request for Registrar verification was transmitted by the WIPO Center to NSI,

requesting it to:

- Confirm that a copy

of the Complaint had been sent to it by the Complainant as requested by WIPO

Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental

Rules"), paragraph 4(b).

- Confirm that the domain

name at issue is registered with NSI.

- Confirm that the person

identified as the Respondent is the current registrant of the domain name.

- Provide full contact

details, i.e., postal address(es), telephone number(s), facsimile number(s),

email address(es), available in the Registrar’s WHOIS database for the registrant

of the disputed domain name, the technical contact, the administrative contact

and the building contact for the domain name.

- Confirm that the Uniform

Domain Name Dispute Resolution Policy ("the Policy") was in effect.

- Indicate the current

status of the domain name.

By email dated February 1,

2001, NSI advised WIPO Center as follows:

- NSI had received a

copy of the Complaint from the Complainant.

- NSI is the Registrar

of the domain name registration <codetel.com>.

- The above Respondent

is shown as the "current registrant" of the domain name at the above

address.

- The administrative

and billing contact is Nasim Zahrin, whose address is care of the Respondent.

- NSI’s 5.0 Service

Agreement is in effect.

- The domain name registration

<codetel.com> is currently in "Active" status.

- The NSI has currently

incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy

adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

- The advice from NSI

that the domain name in question is still "active" indicates the Respondent

has not requested that the domain name at issue be deleted from the domain name

database. The Respondent has not sought to terminate the agreement with NSI.

Accordingly, the Respondent is bound by the provisions of NSI’s Domain Name

Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged

the jurisdiction of the Panel.

- Having verified that

the Complaint satisfied the formal requirements of the Policy and the Rules

for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October

24, 1999, ("the Rules"), the WIPO Center on February 9, 2001,

transmitted by post-courier and by email a notification of Complaint and Commencement

of Administrative Proceedings to the Respondent. A copy of the Complaint was

also emailed to NSI and ICANN.

- The Complainant elected

to have its Complaint resolved by a single panel member: it has duly paid the

amount required of it to the WIPO Center.

- The Respondent was

advised that a Response to the Complaint was required within 20 calendar days.

The Respondent was also advised that any Response should be communicated, in

accordance with the Rules, by four sets of hard copy and by email. A Response

was filed by the Respondent on March 1, 2001.

- On March 10,

2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to serve as Sole Panelist in the case. It transmitted to him

a statement of acceptance and requested a declaration of impartiality and independence.

- On March 10,

2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded

to the WIPO Center his statement of impartiality and independence. The Panelist

finds that the Administrative Panel was properly constituted in accordance with

the Rules and the Supplemental Rules. Barring exceptional circumstances, a decision

from the Panel is due on March 25, 2001.

- The Panel has independently

determined and agrees with the assessment of WIPO Center that the Complaint

meets the formal requirements of the Rules and the Supplemental Rules.

- The language of the

administrative proceeding is English, being the language of the registration

agreement.

4. Factual Background

The Complainant owns service

marks registered in the United States and the Dominican Republic for the expression

‘codetel’. The expression ‘codetel’ refers to the first letters of the first

two words of the Complainant’s name. Its marks all relate to the telecommunication

services which it provides in the Dominican Republic.

5. Parties’ Contentions

Complainant

(1) The domain name

<codetel.com> is identical or confusingly similar to the service mark

and trademark CODETEL in which the Complainant has prior rights; and which constitute

a reproduction of the mark of the Complainant and cause a likelihood of confusion

with consumers;

(2) The Respondent has

no rights or legitimate interests in respect of the domain name CODETEL in virtue

of the following:

(i) It is not identified

with the name CODETEL;

(ii) It does not operate

any business or commercial activity under the name CODETEL;

(iii) It does not offer

to the consumer any goods or services under a trademark or service mark known

as CODETEL;

(iv) It does not have

any prior rights over the trademark and service mark CODETEL in the United States

of America;

(v) It does not have

an authorization of the Complainant in order to use its service and trademark

CODETEL;

(vi) The word or name

CODETEL corresponds to the first two letters of the three words in the Complainant’s

name COMPAÑIA DOMINICANA DE TELEFONOS, a name or word that creates a

direct connection with the Complainant.

Respondent

(1) Since November 16,

1997 Mr. Zahran has been developing a business to engage in software development

for marketing purposes. This fact is evidenced by his testimony in his Affidavit

(Attachment A to the Response).

(2) In July of 2000,

Mr Zahran entered into a partnership with one Oscar Loayza. Mr Loayza

assisted with the development of the business and with the development of marketing

material, concepts and business plans for the business. This fact is evidenced

(1) by the testimony of Nasim Zahran in his Affidavit (Attachment A) and

(2) by the testimony of Oscar Loayza in his Affidavit (Attachment B).

(3) Prior to notification

of the domain name dispute, Mr Zahran conducted research with respect to

the concepts and the business potential of the business activity. This fact

is evidenced (1) by the testimony of Nasim Zahran in his Affidavit (Attachment

A), and (2) by Attachment C which is a magazine article of November 14,

2000 which Mr Zahran has used in the development of his business strategy

and (3) by Attachment D consisting of a second magazine article (from the magazine

E-3-B of August of 2000) which Mr Zahran has also used in the development

of his business strategy.

(4) Prior to the notification

of the domain name dispute, Mr Zahran developed strategies and marketing

plans. This fact is evidenced (1) by the testimony of Nasim Zahran in his

Affidavit (Attachment A), and (2) by Attachment F that consists of the marketing

plan that has been developed for the business.

(5) Prior to the notification

of the domain name dispute Mr Zahran developed a logo for his business

activities. This fact is evidenced (1) by the testimony of Nasim Zahran

in his Affidavit (Attachment A) and (2) by copy of the logo affixed hereto as

Attachment F. The logo uses the word ‘Code Tel’.

(6) Prior to the notification

of the domain name dispute, Mr Zahran negotiated for hosting services.

This fact is evidenced (1) by the testimony of Nasim Zahran in his Affidavit

(Attachment A), and (2) a copy of the correspondence (Attachment G).

(7) Prior to the notification

of the domain name dispute, Mr Zahran planned the installation of communication

wiring for his office for the month of March 2001. This fact is evidenced

(1) by the testimony of Nasim Zahran in his Affidavit (Attachment A), and

(2) a copy of the correspondence (Attachment H).

Although the Complainant

did not specifically plead bad faith, the Respondent did not act in bad faith

for the following reasons:

(1) Neither Mr Zahran

nor any of his associates have had any intent for commercial gain to misleadingly

divert consumers or to tarnish the trademark or service mark CODETEL (Attachment

A & Attachment B).

(2) Mr Zahran has never

sold or attempted to sell any domain name (Attachment A & Attachment B).

(3) Mr Zahran has

not registered any other domain name in his name or in the name of any other

person or organization except for domains directly related to his business activities

(Attachment A & Attachment B).

(4) Mr Zahran has

not registered the domain name for the purpose of disrupting the business of

Complainant or any competitor (Attachment A & Attachment B).

(5) Mr Zahran has

not attempted to or intended to attract, for commercial gain, internet users

to his 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 his website.

There has been no evidence

presented by Complainant to show one of the circumstances of bad faith listed

in the Policy or any other circumstances of bad faith. Therefore, the Complainant

has therefore failed to establish this element.

6. Discussion and Findings

Paragraph 15(a) of the

Rules instructs 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".

The burden for the Complainant,

under paragraph 4(a) of the ICANN Policy, is to show:

- 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;

- That the Respondent

has no legitimate interests in respect of the domain name; and

- The domain name

has been registered and used in bad faith.

The domain name <codetel.com>

is, in the judgment of the Panel, identical to the Complainant’s mark.

The Complainant gave the

Respondent no rights or legitimate interests in the disputed domain name. That

finding can sometimes be sufficient for the Complainant to discharge the initial

evidential burden. Paragraph 4(a)(ii) of the Policy indicates that a Respondent

can demonstrate rights or legitimate interests in the domain name. Thus:

(i) before any notice

to you of the dispute, your use 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 and services; or

(ii) you (as an individual,

business or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making

a legitimate non-commercial or fair use of the domain name, without intent for

commercial gain to misleadingly direct customers or to tarnish the trademark

or service mark at issue.

The evidence (including

affidavits) shows that the Respondent, before any notice to it of the dispute

(which was when the Complaint was served), made demonstrable preparations to

use the domain name in connection with a bona fide offering of services.

The evidence submitted with some care by the Respondent makes this clear. Possibly

there could be some action to be taken by Complainant in United States Courts

for alleged trademark infringement but the Panel must decide the case strictly

on the Policy criteria. Respondent must succeed under the second criterion.

Nor is there any proof

of bad faith on the part of the Respondent in registering or continuing to use

the name. There was no "cease and desist" letter, nor any evidence

from which it could be inferred that the Respondent knew of the Complainant’s

activities or its marks. The situation disclosed is quite different from the

usual case of either an opportunistic cyber-squatter or a respondent who concocts

some far-fetched excuse about creating a business with little hard evidence

to support the contentions. Here the Respondent has gone to some trouble to

prove its bona fides by including affidavit evidence in support of its

case. Its explanation is plausible.

7. Decision

Accordingly the Panel considers

that the Complainant has failed to prove the second and third criteria under

the Policy.

The Panel therefore declines

to order any transfer of the disputed domain name to the Complainant.

Hon. Sir

Ian Barker QC

Sole Panelist

Dated: March

21, 2001