Vodaphone Group Plc v. Desiree Mendoza

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Vodafone

Group Plc v. Desiree Mendoza

Case No.

D2001-1037

1. The Parties

1.1 The Complainant

is Vodafone Group Plc of The Courtyard, 2-4 London Road, Newbury, Berkshire

RG14 1JX United Kingdom.

1.2 The Respondent is

Desiree Mendoza of 1415 Dubuque Street, Oceanside, CA 92054 USA.

2. The Domain Name and

Registrar

2.1 The domain name upon

which this Complaint is based is <vodaphone.com> (the "Disputed

Domain"). The registrar of the Disputed Domain as at the date of the Complaint

is BulkRegister.com Inc ("BulkRegister").

3. Procedural History

3.1 The Disputed Domain

was registered on June 26, 1998. The Panel queried whether the Uniform Domain

Name Dispute Resolution Policy applied. BulkRegister advised the Center that

the Policy applied to the Disputed Domain. The Panel assumes this is on the

basis that the registration agreement between the Respondent and BulkRegister

includes a provision that BulkRegister may modify that agreement at any time,

and that it has done so to incorporate the Policy since the date of registration

of the Disputed Domain. The Panel has not seen a copy of the Respondent’s registration

agreement and has therefore proceeded on the basis of BulkRegister’s report

that the Policy applies. Were it not for that fact, the Complaint would have

been dismissed as incompetent.

3.2 The Complaint was

made pursuant to the Uniform Domain Name Dispute Resolution Policy approved

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

on October 24, 1999 (the "Policy"), in accordance with the Rules for

Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October

24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy in effect as of December 1, 1999

(the "Supplemental Rules").

3.3 The Complaint was

received by the WIPO Arbitration and Mediation Center (the "Center")

by email on August 16, 2001. The fees prescribed under the Supplemental Rules

have been paid by the Complainant.

3.4 On August 19, 2001,

the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.5 The Center sent

a Request for Registrar Verification to BulkRegister on August 22, 2001,

by email. BulkRegister responded to the Center’s request by email on August

24, 2001, by email, stating:

(a) that BulkRegister

had received a copy of the Complaint from the Complainant;

(b) that BulkRegister

was the registrar for the Disputed Domain;

(c) that the Respondent

was the current registrant of the Disputed Domain;

(d) that the Disputed

Domain <vodaphone.com> was active;

(e) the Respondents’

contact details; and

(f) that the Uniform

Domain Name Dispute Resolution Policy applies to the Disputed Domain.

3.6 On September 20,

2001, the Complainant sent an addition to the Complaint to the Center with the

explanation that it dealt with material evidence that had come to light since

the filing of the Complaint on August 16, 2001. The Respondent objected to the

addition to the Complaint and requested that it not be included as part of the

Complaint. The Panel asked for a copy of the proposed addition, but decided

not to admit it on the basis that it disclosed no material that could not have

been included in the original Complaint.

3.7 The Center sent

the Notification of Complaint and Commencement of Administrative Proceeding

on August 27, 2001, to the Respondent by post/courier (with enclosures) and

by email (without attachments), and to the Complainant by email (without attachments).

3.8 The Center received

a Response from the Respondent by email on September 13, 2001 and in hard

copy on October 9, 2001. The Respondent requested a three member panel. The

additional fees prescribed under the Supplemental Rules have been paid by the

Respondent.

3.9 The Center sent

a Transmission of Case File to Administrative Panel by email on November 14,

2001. The documentation was received in hard copy by the Presiding Panelist

on November 21, 2001, in Sydney, Australia.

3.10 All other procedural

requirements appear to have been satisfied.

4. Factual Background

4.1 Activities of the

Complainant

The following information

is asserted as fact in the Complaint.

The Complainant is a company

incorporated in England and Wales. It is the largest wireless telecommunications

operator in the world by subscribers (83 million proportionate subscribers and

approximately 188 registered customers in ventures in which it either has control

or invests) and it has a presence in 26 countries across 5 continents. The Complainant

has annexed a copy of its Annual Review & Summary Financial Statement for

the year ended March 31, 2001 which attests to this. Each year the Complainant

spends a substantial amount on advertising and promoting the ‘Vodafone’ brand.

It has also entered into a number of high profile sponsorship arrangements with

third parties such as the Manchester United soccer club, the England cricket

team, the Ferrari Formula 1 Grand Prix team, the Australian rugby team and the

New Zealand rugby team. The Complainant’s name and mark is well known throughout

the world.

4.2 The Complainant’s

trade marks

The following information

is asserted as fact in the Complaint.

The Complainant states

that it is the owner of registrations for the trade mark "VODAFONE"

throughout the world including:

(a) as a word mark in

the United States from 13 May 1996 in respect of "telecommunication services,

namely, telephone communication services; cellular telephone services, radio

communication services; radio paging services; electronic store-and-forwarding

messaging services; radio broadcasting and cable radio transmission services;

electronic transmission of messages and data; and rental of telephones, radios,

radio telephones and radio facsimile machines and equipment";

(b) as a stylised word

mark in the United States from 22 December 1997 in classes 9, 16, 35, 36, 37,

38 and 42;

(c) in the United Kingdom

in classes 9, 38 and 42;

(d) in Europe in classes

9, 36, 37 and 38; and

(e) in Australia, Austria,

Benelux, China, Denmark, Finland, France, Germany, Greece, Hong Kong, Ireland,

Italy, Malta, Norway, Portugal, South Africa, Spain, Sweden, and Switzerland.

In addition, the Complainant

states that it has pending applications in Tanganyika and Zanzibar.

The Complainant has annexed

print-outs from the US Patent and Trademark Office database, the UK Patent Office

database, and the Community Trade Mark Office database attesting to various

of these trademark registrations.

4.3 Activities of the

Respondent

The Respondent states as

fact that she is the mother of an eight month old daughter (and annexes photographic

proof).

No other information as

to the activities of the Respondent are asserted in either the Complaint or

the Response, although the Panel infers that the Respondent claims to be operating

a public service in the form of a website that redirects viewers to the Complainant’s

website or to other sites, depending on what they were looking for.

5. The Complainant’s

contentions in the Complaint

5.1 The Complaint asserts

that each of the elements specified in paragraph 4(a) of the Policy have been

satisfied.

5.2 In reference to

the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the

Disputed Domain, which the Respondent has registered, is confusingly similar

to the Complainant’s "VODAFONE" trade mark as the two are phonetically

identical and visually similar. Further, the Complaint asserts that the Disputed

Domain differs from the Complainant’s name and trademarks only in that it substitutes

the colloquial ‘fone’ with its actual meaning which is ‘phone’.

5.3 The alleged confusion

between the word VODAPHONE which appears in the Disputed Domain and the Complainant’s

name and mark VODAFONE is evidenced in annexures to the Complaint, namely:

(a) a print out of an

internet search for VODAFONE which resulted in a combination of sites including

sites with the words ‘vodaphone’ and ‘vodafone’; and

(b) copies of various

articles and correspondence which mistakenly address the Complainant as Vodaphone.

5.4 In reference to

the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that

the Respondent should be considered as having no legitimate interest in respect

of the Disputed Domain because as at the date of the Complaint:

(a) the Respondent is

not and has never been associated with the Complainant’s business and was not

and has never been authorised by the Complainant to use its name;

(b) the Respondent is

not and has never been known by the name VODAPHONE or the name VODAFONE. The

Complainant further states that it is not aware of any company in the world

other than those within the Complainant’s corporate group that has a legitimate

interest in the name VODAFONE or in any domain name including the word VODAFONE

or any deliberate misspelling of that word;

(c) the Respondent has

made no demonstrable preparations to use the Disputed Domain in connection with

a bona fide offering of goods or services;

(d) the Respondent claims

that she uses the Disputed Domain to assist internet users to learn the correct

spelling of the Complainant’s name and to locate the Complainant’s website but

there is no indication that this is the purpose of the website;

(e) the Respondent made

a thinly veiled request that the Complainant pay her a substantial sum of money

in order to obtain control of the Disputed Domain when she said in an email

to the Complainant on August 13, 2001:

"I should think

that rather than attacking me, your client would want to acknowledge the immense

benefit that I have been providing, inasmuch as the otherwise lost revenues

and goodwill that my actions have salvaged for you, are incalculable.";

(f) the Respondent is

not making a legitimate non-commercial use of the Disputed Domain; and

(g) the mere registration

of the Disputed Domain does not give rise to any right or legitimate interest

in the Disputed Domain.

5.5 In reference to

the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts

that the Respondent has registered the Disputed Domain in bad faith because

the Respondent has acquired the Disputed Domain for the primary purpose of selling

it to the owner of an identical or similar trademark or personal or company

name for valuable consideration in excess of the out-of-pocket costs directly

related to the Disputed Domain.

In support of this assertion,

the Complaint states the following:

(a) The Respondent knew

of the Complainant’s mark. Indeed, the Complainant’s mark is inherently distinctive

and so it is unlikely that the Respondent conceived of the Disputed Domain independently

of this knowledge.

(b) In registering the

Disputed Domain, the Respondent has registered a deliberate misspelling of the

Complainant’s inherently distinctive name and marks.

(c) The Respondent has

registered the Disputed Domain in order to prevent the Complainant from reflecting

a common misspelling of its name and mark (the Complainant states that it has

registered <vodaphone.co.uk> and <vodaphone-retail.co.uk> in order

to redirect internet users attempting to access its website and that it attempted

to register the Disputed Domain.

(d) The Respondent has

intentionally attempted to attract internet users to the Disputed Domain by

creating the likelihood of confusion with the Complainant’s name and mark.

(e) The Respondent indicated

in an email to the Complainant of April 23, 2001 that the Disputed Domain was

worth at least $150,000 and may be worth $500,000 in the next few years due

to the fact that it receives 50,000 hits per month. The Complainant asserts

that the Disputed Domain receives hits due only to confusion with the Complainant’s

name and mark and that this statement evidences the fact that the Respondent

registered the Disputed Domain for the purpose of selling it to the Complainant.

The Complainant states that this is further evidenced in the same email where:

(i) the Respondent asserts

that $150,000 is a small sum to a $2 billion company;

(ii) the Respondent

likens her registration of the Disputed Domain to the acquisition of a real

property investment by a speculator;

(iii) the Respondent

asserts that "when [the Domain Name’s] value is fully recognized, it

will make all the difference to the future opportunities that I as a mother

will be able to provide for Kerilynn, my three month old daughter";

and

(iv) the Respondent

asserts that it is outrageous that a foreign company should seek to obtain the

Disputed Domain from her "without any honest offer whatsoever of compensation

therefor".

(f) The Respondent has

indicated that the Disputed Domain may be of interest to a third party and has

indicated that if valuable consideration is not received from the Complainant,

the Respondent will transfer the Disputed Domain to a third party. The Complainant

asserts that this allusion to a third party interest does nothing to establish

that the Respondent herself has a legitimate interest in the Disputed Domain

or that she has registered it in good faith.

(g) Registration of

the Disputed Domain amounts to equipping the Respondent with an instrument of

fraud.

6. The Respondent’s

Contentions in Response

6.1 In relation to paragraph

4(a)(i) of the Policy, the Respondent does not contest that the Disputed Domain

is confusingly similar to the name and mark of the Complainant. She even asserts

that the Disputed Domain is "more" confusingly similar to VOTERPHONE

which is a ‘vote by phone’ service being established in the United States to

assist in the electoral process. (There is no evidence that such a service was

even in contemplation at the time the Disputed Domain was registered).

6.2 In relation to paragraph

4(a)(ii) of the Policy, the Respondent argues that she has a right and a legitimate

interest in respect of the Disputed Domain on the basis that:

(a) she registered and

legally paid for the Disputed Domain and has been operating the domain for over

3 years;

(b) she uses the Disputed

Domain in connection with the bona fide offering of a service. This service

is a ‘courtesy site’ which aims to eliminate confusion that may arise as the

result of Internet users making a spelling or typographical error and thereby

accessing the Disputed Domain. This service takes the form of offering visitors

to the Disputed Domain a "GoTo" search option. This search option

prioritises the home website of the Complainant and is accompanied by a paragraph

explaining to users how they can use the GoTo search option to access the website(s)

of the Complainant. In more recent times, a second GoTo Search option prioritising

the website of Votaphone has been added. The Respondent states that she receives

no revenue for the provision of this service; and

(c) she is making a

fair use of the Disputed Domain without intent to misleadingly divert consumers

or to tarnish the trademark at issue on the grounds that, over the last 3 years,

the Respondent has used the Disputed Domain to redirect close to 2 million internet

users to "their intended destinations by clearing up spelling and/or typographical

confusions". Rather than resulting in the diversion of consumers or the

tarnishing of the Complainant’s mark, the Respondent claims that her use of

the Disputed Domain has assisted the Complainant in directing large numbers

of internet users to its website(s). In addition, the Respondent states that

she has a genuine patriotic interest in holding the Disputed Domain as she believes

there is a possibility that it may be used in the future by VOTERPHONE to assist

in the American electoral process.

(d) The Respondent does

not argue that she has been commonly known by the Disputed Domain.

6.3 In relation to paragraph

4(a)(iii) of the Policy, the Respondent argues that she did not acquire the

Disputed Domain primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant. In support of

this submission, the Response states that:

(a) it has taken the

Complainant over 3 years to lodge a complaint in relation to the Disputed Domain

which is evidence that they have not regarded the Respondent’s registration

or operation of the Disputed Domain as objectionable or detrimental, let alone

vital to their business;

(b) the Respondent has

used the Disputed Domain to clear confusion rather than to create it by redirecting

internet users who access the site to their intended destination. Indeed, the

Respondent uses the Disputed Domain to provide a "refreshingly useful non-commercial

service" to internet users who are trying to access the Complainant’s home

website, who are trying to access general information about the Complainant

or who are trying to access information about Voterphone which owns the domain

votaphone.com. The Respondent redirects internet users to the Complainant’s

main site which is exactly what the Complainant would seek to use the Disputed

Domain for except that she also offers internet users the opportunity to access

the Voterphone site. As such, the Respondent’s use of the Disputed Domain is

more generally useful than that of the Complainant would be;

(c) the Respondent states

that her use of the Disputed Domain has delivered enormous tangible benefit

to the Complainant and has created real value for the worldwide internet community

at large;

(d) the Respondent states

that she does not want to sell and has no intention of selling the Disputed

Domain to the Complainant or a competitor of the Complainant. The Respondent

notes that she may sell the Disputed Domain to Voterphone but states that they

are not a competitor of the Complainant;

(e) the Respondent states

that she has not indicated to the Complainant that she will transfer the Disputed

Domain to a third party if valuable consideration is not received from the Complainant

in exchange for control of the domain. She contests that she told them simply

that she does not want the Disputed Domain to fall into their hands as it may

be required by Voterphone and that she has a right to transfer her property

to whomever she chooses;

(f) the Respondent states

that she did not register the Disputed Domain for the purpose of preventing

the Complainant from reflecting a common misspelling of its name and marks.

The Respondent further notes that this issue is not relevant as the Respondent

has never registered any other domain name so it cannot be said that she displays

a pattern of acquiring domain names for the purpose of reselling, renting or

transferring them; and

(g) the Respondent states

that she receives no commercial gain from the service she provides using the

Disputed Domain.

7. Discussion

and Panel Findings

7.1 This section

is structured by reference to the elements required by paragraph 4(a) of the

Policy. In order to be successful, the Complainant has the burden of proving,

on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical

or confusingly similar to Complainant’s trade mark

The Disputed Domain is

<vodaphone.com>. The Complainant owns registrations for the trademark

"VODAFONE" in 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

and the name and marks of the Complainant are confusingly similar. The Respondent

does not contest this supposition, indeed, she has acknowledged it by prioritising

the Complainant’s website(s) as a destination to which she redirects visitors

who use the Disputed Domain.

The Complainant has also

provided evidence and statements that confusion between the Disputed Domain

and the name and marks of the Complainant actually exists in the context

of the Internet and in other environments. Again, the Respondent does not contest

this supposition and, in correspondence with the Complainant and in the Response,

she has indicated that large numbers of Internet users who visit the site to

which the Disputed Domain resolves are attempting to access the site of the

Complainant.

In this case, the fact

that the Disputed Domain may also be similar to another third party’s names

or marks (such as Voterphone in America) or that the Respondent uses the Disputed

Domain to clear confusion does not detract from the confusing similarity between

the Disputed Domain and the Complainant’s name and marks. This is particularly

the case since the Complainant is an extremely widely recognised and established

brand across the world. No evidence has been provided to indicate that the American

voting service provider Voterphone has a similar level of recognition.

The Panel is quite satisfied

that the Disputed Domain is confusingly similar to numerous trademarks in which

the Complainant has rights. Accordingly, the Panel finds that the Complainant

has proven paragraph 4(a)(i) of the Policy.

7.3 The Respondent has

no rights or legitimate interests in the Domain Name

The Complainant asserts

that the Respondent has no legitimate rights or interest in the Disputed Domain.

The Panel has seen no evidence

to support an inference that the Respondent has any legitimate right or interest

in the Disputed Domain. However, paragraph 4(c) of the Policy lists a number

of circumstances which, if proven to exist by the Respondent, can be taken to

demonstrate a Respondent’s rights or legitimate interests in the domain name.

These are if the Respondent can show that:

(a) before any notice

to the Respondent of the dispute, their 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 or services; or

(b) the Respondent (as

an individual, business, or other organisation) has been commonly known by the

domain name, even if they have acquired no trademark or service mark rights;

or

(c) the Respondent is

making a legitimate non-commercial 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.

We consider each of these

below.

(a) Bona fide offering

of services

The Respondent asserts

that she uses the Disputed Domain in connection with the bona fide offer of

a service, being the redirection of internet users to their intended destination.

This was the website(s) of the Complainant and, more recently, has included

the website of "Voterphone".

For the reasons set out

in section 7.4 below, the Respondent has not persuaded the Panel of her bona

fides in this regard.

(b) Commonly known by

the domain name

The Respondent has provided

no evidence that she is or ever has been known by the Disputed Domain.

(c) Use of the domain

name

The Respondent has stated

that she derives no revenue from the Disputed Domain and that she maintains

it in order to alleviate confusion on the internet by redirecting consumers

either to the Complainant’s website(s) or to the Voterphone site.

If the Respondent’s true

aim were to alleviate confusion between the Disputed Domain and the Complainant’s

name and marks she would not include the Complainant’s trademark as a metatag

on her site to attract even more internet users to the site. Based on the evidence

and discussion set out in section 7.4 below, it seems abundantly clear that,

from the beginning, the Disputed Domain was intended to misleadingly attract

consumers looking for the Complainant’s website.

The Respondent has said

that her other interest in maintaining the Disputed Domain is so that it may

be utilised in the future by Voterphone in connection with the American electoral

process. As discussed in part 7.4 below, the Respondent’s interest in Voterphone

appears to be relatively recent. The Panel sees no reason for this recent graft

onto the site’s already implausible basis to be accorded any credit whatsoever.

The Respondent has not

demonstrated that paragraph 4(c) applies; the Complainant has discharged its

onus in proving on the balance of probabilities that the Respondent has no rights

or legitimate interests in the Disputed Domain. Accordingly, the Complainant

has made out paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has

been registered and is being used in bad faith

In order to show bad faith

registration by the Respondent, the Complainant asserts that the Disputed Domain

was registered for the primary purpose of selling it to the Complainant who

is the owner of the registered trademark "VODAFONE" or a competitor

of the Complainant for valuable consideration in excess of documented out-of-pocket

costs directly related to the domain name.

The "waybackmachine"

at <web.archive.org> (the "Archive") reveals that, in 1998,

the Respondent was indeed using the Disputed Domain solely to redirect Internet

users that visited her site to the Complainant’s United Kingdom website. According

to the Archive, as at November 11, 1998, the site displayed the following text:

"We know that many

people will be trying to reach you by typing "xxxxxxx.vodaphone.com"

After all. they may never have seen the name in print with an "F".

So they will naturally attempt to spell it in what they believe to be the most

likely way, the way they learned back in the second grade, and the way they

have spelled it all of their lives. Even those who know differently will still

make this mistake out of force of habit that is very deeply ingrained in English

speaking people. The proof of this is that from day one, when this site went

up over half a year ago, it has been averaging around 150 hits per day!"

The Archive also reveals

that, from when the Respondent commenced use of the Disputed Domain up until

at least July 21, 2001, the Respondent used some or all of the following meta

tags to draw Internet searchers to the site:

"vodafone vodaphone

phone cellphone cellphones cellular pager pagers satelite sattelite handheld

communications globalstar".

At the time of writing

this decision, the Respondent’s site still included the following metatags:

"vodafone, vodaphone,

mobile, phone, cell, cellphone".

According to the Archive,

as recently as July 21, 2001, the Respondent included no reference to Voterphone

on her site and only offered visitors a link to the Complainant’s website. Indeed

her site did not include redirection to Voterphone until about the time of notice

to the Respondent of this dispute on September 16, 2001. It seems to the

Panel that the connection between Voterphone and the Disputed Domain has only

been treated by the Respondent as important since notice of the Complainant’s

desire to gain control of the Disputed Domain.

The inescapable conclusion

drawn by the Panel, assisted by the Respondent’s use of the ‘vodafone’ metatag,

as well as metatags corresponding to common misspellings or trademarks such

as "satelite" and ‘globalstar’, is that the Respondent was well aware

of the Complainant’s name and marks and that, prior to any notice of this dispute,

the purpose for registering the Disputed Domain and its intended and actual

use was to create a site to take advantage of the confusion between the Disputed

Domain and the name and marks of the Complainant. Although the Respondent then

redirects users to their intended destination (usually the Complainant’s website),

the Panel is not convinced that this use of the Disputed Domain can be described

as bona fide, nor that it demonstrates a bona fide registration or use of the

Disputed Domain. The Panel notes that, although the Complainant did not mention

the Respondent’s use of its trademark as a metatag as evidence of bad faith,

the evidence is publicly available and the Panel is entitled to pay due regard

to it in forming its view of the Respondent’s bona fides.

The Response includes a

copy of a letter dated September 14, 2001 purporting to have been sent to US

President George W Bush, in which the Respondent claims:

"Unfortunately

a large cell-phone company based in England, which also owns a name similar

to my own, namely vodafone.com, has elected to try and take my property away

from me by force for no compensation whatsoever, with devastatingly ruinous

implications for my own future and that of my eight month old daughter".

This statement indicates

to the Panel that the Respondent registered and has been maintaining the Disputed

Domain for the purpose of selling it to the Complainant or to a competitor of

the Complainant for valuable consideration in excess of the registration costs.

The possibility that the

Respondent may sell the Disputed Domain to Voterphone does not preclude this

finding (and in any event, Voterphone was not known to the Respondent at the

time of registering the Disputed Domain).

The Panel finds that the

Disputed Domain name was registered for the reason outlined in sub-paragraph

4 (b)(i) of the Policy. The Complainant has accordingly made out paragraph 4(a)(iii)

of the Policy.

8. Decision

The Panel has found that

all of the requirements of paragraph 4(a) of the Policy have been persuasively

made out. Accordingly, and for the purposes of paragraph 3(c) of the

Policy, the Panel orders

that the domain name <vodaphone.com> be transferred by BulkRegister

to the Complainant, Vodafone Group Plc.

Philip N.

Argy

Presiding Panelist

William

R. Cornish Richard W. Page

Panelists

Dated: December

4, 2001