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Vodafone Group Plc v. S. Ruston

WIPO Case No. D2001-0403

Outcome
Transfer
Domain names
vodafone.org
Complainant
Vodafone Group Plc
Respondent
S. Ruston
Panelist
Lynda Zadra-Symes
Decided
17 May 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0403.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Vodafone

Group, PLC v. S. Ruston

Case No.

D2001-0403

1. The Parties

The Complainant is indicated

in the Complaint as Vodafone Group, PLC ("Vodafone"), a company incorporated

in England and Wales, whose principal place of business is The Courtyard, 2-4

London Road, Newbury, Berkshire, RG14 1JX, England.

The Respondent is identified

in the Complaint as S. Ruston of England.

2. The Domain Name and

Registrar

The disputed

domain name is <vodafone.org> ("the Domain Name").

The Registrar is CORE,

Internet Council of Registrars in Geneva, Switzerland. In a letter dated March

29, 2001, to the WIPO Arbitration and Mediation Center ("the Center"), CORE

confirmed that the ICANN Uniform Domain Name Dispute Resolution Policy ("the

Policy") has been CORE's policy since December 1, 1999, and applies to the Domain

Name registered by Respondent on December 8, 1999.

3. Procedural History

On March 22, 2001, the

Complaint, which is in the format required by the Policy, was filed electronically

with the Center. The Complaint certifies that the Respondent and CORE were duly

served by the Complainant.

On March 26, 2001, a hardcopy

of the complaint was received by the Center.

On April 2, 2001, having

duly sought and obtained verification from the Registrar, the Center completed

a formal compliance checklist.

On April 2, 2001, the Center

duly served a Notification of Complaint to the Respondent both electronically

and by courier.

On April 24, 2001, having

received no response to the Complaint from Respondent within the specified time

in the Notification of Complaint, the Center notified the Respondent that it

was in default.

On May 1, 2001, the Center

issued to both parties a Notification of Appointment of Administrative Panel

and Projected Decision Date. This Notification informed the parties that the

Administrative Panel would be comprised of a single Panelist, Lynda Zadra-Symes

of Newport Beach, California, who was appointed by the Center after an invitation

had been issued and an acceptance and Declaration of Independence and Impartiality

had been duly returned.

4. Factual Background

The Complaint asserted,

and provided evidence in support of, the following facts, which the Panel

finds established:

The Respondent registered

the Domain Name with CASDNS on December 8, 1999 according to the WHOIS report

provided by the Complainant.

Complainant Vodafone

Group PLC is the largest wireless operator in the world by subscribers,

and has a presence in 26 countries across five continents. At the end of

December 2000, Vodafone had approximately 78.7 million proportionate subscribers

and approximately 173 million venture customers.

Complainant has been

using its VODAFONE trademark in the United Kingdom and elsewhere since 1986,

and has developed substantial consumer recognition in that trademark for

the goods and services described in its trademark registrations listed below:

Complainant is the

owner of the following United Kingdom Trade Mark Registrations for the word

mark VODAFONE, copies of which are attached to the Complaint:

Trade Mark No. 1215879

issued December 14, 1988, renewed March 30, 1991, for "Electrical,

electronic, telecommunications and telephonic apparatus and instruments;

parts included in Class 9 for all the aforesaid goods."

Trade Mark No. 1223053

issued January 17, 1990, renewed March 8, 1991 for "Electrical, electronic,

telecommunications and telephonic apparatus and instruments; radio telephones;

mobile telephones; parts included in Class 9 for all the aforesaid goods."

Trade Mark No. 1291652

issued November 4, 1986, renewed November 4, 1993, for "Telecommunications,

telephone, telegraph, radio telephone, radio facsimile, radiopaging and

radio communication services; message sending, receiving and forwarding;

transmission and receiving by radio; rental of telephone, radio, radio telephone

and radio facsimile apparatus; communication of data by radio and by telecommunications."

Trade Mark No. 2109387

issued September 7, 1996, for "Compilation, storage, retrieval and provision

of information; database, on-line and Internet and Internet information,

advisory and consultancy services; services for the transmission, provision

or display of information for business or domestic purposes from a computer-stored

data bank; information and advisory services relating to all the aforesaid

services."

Trade Marks Nos. 1215879

and 1223053 referred to above were originally issued to Racal Telecom PLC

which changed its name to Vodafone Group PLC in 1991 and to Vodafone AirTouch

PLC in 1999, and eventually to Vodafone Group PLC in 2000. Complainant submitted

with its Complaint certified copies of Certificates of Incorporation on

the Change of Name which provide proof of the name changes described above.

The Complainant also

submitted evidence of its ownership of European Community Trademark Registration

No. 000134890 for the VODAFONE word-mark, registered on April 1, 1996, for

the following goods and services:

(1) Class

9 - "Electrical, electronic, telecommunications and telephonic apparatus

and instruments; radio telephones; mobile telephones; encoded cards;

tokens for activating electrical, electronic and telecommunications

apparatus and instruments; smart cards; data communication apparatus

and instruments; modems; parts included in Class 9 for all the aforesaid

goods; computer software."

(2) Class

36 - "Financial services, credit card services, charge card services;

insurance and guarantee services relating to telecommunications equipment."

(3) Class

37 - "Installation and repair of electrical, electronic, telecommunications,

radio facsimile and telephonic apparatus and instruments."

(4) Class

38 - "Telecommunications, telephone, telegraph, radio telegraph, radio

facsimile, radio paging and radio communication services; message

sending, receiving and forwarding; transmission and receiving by radio;

rental of telephone, radio, radio telephone and radio facsimile apparatus;

communication of data by radio and by telecommunications; automatic

telephone answering services."

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 Complainant also

claims it has registered or is seeking to register the VODAFONE word mark

in other jurisdictions, but did not provide copies of proofs of those registered

trademarks or applications.

5. Factual Background

A. Complainant

The Complainant made

the following allegations, which Respondent did not contest:

(a) The Domain

Name <vodafone.org> is based on the word "vodafone" which is

identical to the VODAFONE trademark. The Complainant has established

rights in that name since 1986, both by reason of the registrations

referred to above, and by reason of common law rights arising out

of usage of and consequent goodwill in the word VODAFONE.

(b) The Respondent

has no rights or legitimate interests with respect to the Domain Name.

The "vodafone" word was created by the Complainant in conjunction

with its business and, through both the trademark registration and

public usage, the name has become unequivocally associated with the

Complainant and its business activities. The Respondent is in no way

associated with the Complainant's business and does not, either through

his own name or any associated company name, have any right or legitimate

interest in that name.

In the course of a

telephone conversation with Ian Gardener (in-house solicitor for the Complainant)

on February 26, 2001, the Respondent stated that he could not believe that

the Complainant had overlooked such an obvious registration and had therefore

registered the disputed domain name himself. In that conversation, the Respondent

gave no indication that he had any right or legitimate interest in the Domain

Name.

(c) The Respondent's

registration of the Domain Name was and is in bad faith in that the

Respondent registered the Domain Name 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

relating to the Domain Name ...." Complainant submitted the following

evidence to support its claim that the Domain Name was registered

and is being used in bad faith:

(i) On February

14, 2001, Ian Gardener of Complainant wrote to Respondent pointing

out Complainant's concern that Respondent's registration of the

Domain Name "may be in contravention of [Complainant's] rights in

the registered trademark" and requesting transfer of the Domain

Name to the Complainant within 21 days of the date of the letter.

Respondent responded to this letter with an email stating that Respondent

is only the administration address for the Domain Name. Complainant

responded by email indicating that Respondent's name is listed as

the registrant of the Domain Name and requesting reasons why the

Respondent should not accordingly be liable.

(ii) On

February 26, 2001, the Respondent telephoned Ian Gardener. In that

conversation, the Respondent stated his reason for registering the

Domain Name (referred to in paragraph (b) above), and queried whether

the Complainant was planning to sue him for infringement. Mr. Gardener

replied that he was trying to explore whether Respondent would be

willing to transfer the Domain Name and to enter into a suitable

undertaking that no other similar names had been registered by the

Respondent. Mr. Gardener also suggested that the Complainant might

be prepared to cover the Respondent's out-of-pocket costs directly

related to his registration of the Domain Name.

(iii) On

February 28, 2001, the Respondent sent an email to Mr. Gardener

indicating that he had made an agreement to transfer the Domain

Name to a Mr. Benson, stating that the arrangement had been legally

documented but had not yet been completed. On the same day, Respondent

telephoned Mr. Gardener and stated that he was willing to transfer

the Domain Name to the Complainant provided that the Complainant

would cover the cost of his registering and transferring the name

(estimated at £100), and on the basis that the Complainant would

make a "goodwill gesture" to him. The Respondent did not specify

the amount of such a "gesture" but implied that he wanted it "to

clear student debts, credit cards and so on." The Respondent added

that he had already had an offer from a third party who would be

willing to seek to sell the name to the Complainant "at a higher

price" and that such third party would be "looking for a lot more

money."

The Respondent

added that it might be embarrassing for the Complainant if it were

known that Complainant had missed such an obvious registration,

but that the publicity of making a goodwill gesture to recover it

might be good publicity. The Respondent also said that, while he

was not considering going ahead with the transfer to a third party,

if the Complainant would not be willing to make such a "goodwill

gesture" then he might do so.

(iv) By

email dated March 1, 2001, the Respondent stated that, in addition

to transfer costs of £103.40, he was seeking a "goodwill gesture

of £12,000."

B. Respondent

Respondent did not

respond to the Complaint, and has made no submissions to controvert the

Complainant's contentions.

6. Discussion and

Findings

Pursuant to paragraph

4.a. of the Policy, Complainant must prove the following three elements:

(i) the Domain

Name is identical or confusingly similar to a trademark or servicemark

in which the Complainant has rights; and

(ii) Respondent

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

(iii) the domain

name has been registered and is being used in bad faith.

This Panel, as directed

by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision

on the basis of the statements and documents submitted, in accordance with

the Policy, the Rules and principles of law that it deems applicable. The

Panel may draw such inferences as it deems appropriate on the basis of Respondent's

Response and give such weight as it considers appropriate to the Complainant's

undisputed representations.

The Respondent did

not submit any response and made no attempt to rebut Complainant's prima

facie showing. Thus, the Complainant's representations are undisputed.

A. The Domain

Name is Identical Or Confusingly Similar to the VODAFONE Trademark

There can be no doubt

that the domain name <vodafone.org> is identical and confusingly similar

to Complainant's VODAFONE trademarks. The relevant part of the domain name

is "vodafone." The Panel finds that this part of the domain name is identical

to the numerous trademark registrations of the word VODAFONE held by the

Complainant. In addition, the Panel finds that the whole of the domain name

is confusingly similar to those trademark registrations.

Accordingly, the Panel

finds that the Domain Name is confusingly similar to, and incorporates identically,

the VODAFONE trademark, to which Complainant has rights.

B. The Respondent

Does Not Have A Legitimate Interest in the Domain Name

The record establishes

that the Respondent was fully aware of Complainant's trademark rights when

registering the Domain Name in December 1999. According to paragraph 13(2)

of the Complaint, in his conversation with Mr. Gardener on February 26,

2001, Respondent stated that he "could not believe that the Complainant

had overlooked such an obvious registration and had therefore registered

the Domain Name himself." In the same conversation the Respondent also stated

that he had originally registered the Domain Name with a view to creating

a web-site containing some form of charitable link-up to the Complainant's

business. There is no evidence, however, that this was the Respondent's

true intention. Moreover, Complainant did not agree to such a proposal by

the Complainant. Indeed, there is no evidence that Respondent even attempted

to contact Complainant with such a proposal prior to receiving the letter

from Complainant dated February 14, 2001, which requested transfer of the

Domain Name to Complainant.

This Panel finds that

there is no indication that the Respondent has any rights or legitimate

interests in respect of the Domain Name. Respondent has not used or prepared

to use the Domain Name in connection with any bona fide offering of goods

or services as contemplated under paragraph 4(c)(i) of the Policy. Respondent

is not commonly known by the Domain Name as contemplated under paragraph

4(c)(ii) of the Policy, nor is Respondent making a legitimate non-commercial

or fair use of the Domain Name as contemplated under paragraph 4(c)(iii)

of the Policy.

Accordingly, this Panel

finds that Complainant has proved that the Respondent does not have a legitimate

interest in the Domain Name.

C. The Respondent Registered

and Used the Domain Name in Bad Faith

Paragraph 4(b)(i) of

the Policy provides that the following circumstances, amongst others, if

found by the Panel to be present, shall be evidence of the registration

and use of a domain name in bad faith:

(i) circumstances

indicating that Respondent 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 Respondent's out-of-pocket

costs directly related to the domain name; or

(ii) 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 Respondent has engaged in a pattern of

such conduct; or

(iii) Respondent

has registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using

the domain name, Respondent has intentionally attempted to attract,

for commercial gain, Internet users to its web site 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

Respondent's web site or location or of a product or service on Respondent's

web site or location.

Each of the four circumstances

in paragraph 4(b), if found, is a separate instance of "registration and

use of a domain name in bad faith."

The record indicates

that Complainant's VODAFONE trademark is well-known and that Respondent

was fully aware of Complainant's trademark rights when Respondent registered

the Domain Name, as evidenced by Respondent's statement that "it was an

obvious registration" which Complainant had missed.

The record also indicates

that Respondent sought a substantial sum of money, £12,000, from Complainant

in return for the transfer of the Domain Name. This sum is far in excess

of the £103.40 transfer costs incurred by the Respondent. The Respondent

also stated in conversations with Mr. Gardener that, if the Complainant

was not willing to agree to pay such a sum, then the Domain Name would be

sold to a third party who would seek an even higher sum from Complainant

in return for the transfer of the Domain Name to the Complainant.

These circumstances

clearly fall within paragraph 4(b)(i) because they indicate that Respondent

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, for valuable consideration in excess

of Respondent's out-of-pocket costs.

Although the Domain

Name does not presently resolve to a website and thus does not appear to

be in "use" by Respondent, the circumstances described in paragraph 4(b)(i)

are present and sufficiently support a finding that Respondent registered

and used the Domain Name in bad faith. In any event, this is a case where

the concept of "passive use" referred to in the Telstra-Case WIPO Case No.

D2000-0003 would be applicable because, considering all the circumstances

of the case, it can be said that the Respondent is acting in bad faith.

Accordingly, the Panel

concludes that Respondent has registered and used the Domain Name in bad

faith on the grounds that (1) the Respondent could not legitimately use

the Domain Name which incorporates Complainant's well-known VODAFONE trademark;

(2) Respondent was aware of Complainant's rights in the VODAFONE trademark

at the time of registration; (3) Respondent has no rights or legitimate

interests in the Domain Name; and (4) Respondent attempted to sell the Domain

Name to the Complainant for substantially more than Respondent's out-of-pocket

costs.

7. Decision

For all of the foregoing

reasons, the Panel decides that the Complainant has met its burden of proof

under paragraph four of the Policy; the domain name <vodafone.org> is

identical and confusingly similar to trademarks in which Complainant has rights;

Respondent lacks a legitimate interest in the Domain Name; and Respondent has

registered and used the Domain Name in bad faith. Accordingly, this panel concludes

that the domain name <vodafone.org> should be transferred to the Complainant

Vodafone Group, PLC.

Lynda Zadra-Symes

Sole Panelist

Dated:

May 11, 2001

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