WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi
Case No. D2000-0040
1. The Parties
Complainant is Phone-N-Phone Services (Bermuda) Ltd., Cedar House, 41 Cedar Avenue, Hamilton, HM EX, Bahamas (according to the Complaint, which probably is an error and should be "Bermuda").
Respondent is Shlomi (Salomon) Levi, Mozartstraat 20, Antwerp, Belgium 2018, BE
2. The Domain Name and Registrar
The domain name in issue is phonenphone.com. The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Phone-N-Phone Services (Bermuda) Ltd.ís Complaint on February 2, 2000 (electronically), and February 7, 2000 (hard copy).
On February 8, 2000, the Center transmitted via e-mail to Network Solutions, Inc. a request for registrar verification in connection with this case. On February 8, 2000, Network Solutions, Inc. transmitted by e-mail to the Center Network Solutions Inc.ís verification response, confirming that the registrant of the domain name in issue is "Levi, Salomon (PHONENPHONE2-DOM)" and that both the administrative and billing contacts are Salomon Levi.
In a letter to Complainantís authorized representative, Steven R. Perles, transmitted to firstname.lastname@example.org on February 10, 2000, the Center advised that the Complainant must specify an express choice of one or both of the two mutual jurisdiction options. In the reply to the Center from Steven R. Perles transmitted electronically on February 11, 2000, attaching the Amended Complaint, the Complainantís representative explained that the Amended Complaint now reflected the change in the registrar to Network Solutions, Inc., and specified a designated jurisdiction of the Eastern District of Virginia. The Center received a hard copy of the Amended Complaint on February 14, 2000.
On February 14, 2000, the Center transmitted to Steven R. Perles at the above e-mail address, and by post to Salomon Levi at Mozartstraat 20, Antwerp, Belgium 2018, BE and by facsimile to Infoback at 1 (407) 475-1128 and by e-mail to email@example.com and other addresses, Notification of Complaint and Commencement of Administrative Proceeding. These documents were also transmitted to the Complainantís representative Steven R. Perles, to Network Solutions, Inc. and to ICANN. The Notification of Complaint and Commencement of Administrative Proceeding stated, inter alia, the Center had verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center confirmed that payment in the required amount to the Center has been made by the Complainant and that the formal date of commencement of the administrative proceeding is February 14, 2000.
The Notification of Complaint and Commencement of Administrative Proceeding stated that the last day for the Respondent to send his Response to the Complainant and to the Center was March 4, 2000, and that in the event of his failure to file such a Response by the due date, he would be considered in default. In the event of such a default, an Administrative Panel would still be appointed which would have the discretion but not the obligation to consider a late filed Response.
On March 6, 2000, the Center notified the Respondent and the Complainantís authorized representative, at the respective addresses as above indicated, that he had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of his Response.
On the evening of March 6, 2000, a few minutes after the Notification of Respondent Default had been transmitted, the Respondent transmitted a letter to the Center, advising he had taken note of the notification of default and had been requesting documents of different parties, and requested an extension of the due date for filing a Response.
By letter transmitted March 7, 2000, by the Center, the Respondent was advised that, since the Notification of Respondent Default had already issued, the Administrative Panel would decide, in its sole discretion, whether to consider the Respondentís Response, if submitted, in deciding the case, and that accordingly, the Center was not in a position to extend the past deadline for the Response.
By a letter sent a few minutes later on the morning of March 7, 2000, to the Center, the Respondent referred to his phone conversation of that day and confirmed his request for an extension to answer the Complaint, adding that he and his attorney had been away for two weeks and did not have the opportunity to answer on time.
On March 7, 2000, the Respondent transmitted his Response to the Center by e-mail and transmitted a copy of the Response by e-mail to the Complainantís authorized representative and to Network Solutions, Inc. By a letter of March 8, 2000, the Center acknowledged receipt of the Response. A hard copy of the Response, with a covering letter dated March 7, 2000, was received by the Center on March 9, 2000. The Response states that a hard copy of the Response was forwarded to the Complainant and an electronic copy was transmitted to the Complainantís authorized representative. The means used by the Respondent to forward his Response by e-mail and by hard copy to the Complainant are the preferred means of communication stated by the Complainant in its Complaint.
On March 9, 2000, the Center forwarded to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This advised the parties that Mrs. Joan Clark had been appointed as the sole panelist in this proceeding, and advised that the decision of the Administrative Panel was to be forwarded to the Center by March 22, 2000.
4. Factual Background and Partiesí Contentions
Variations in the spelling and capitalization of Phone-N-Phone, PNP, Phone-n-Phone and PnP which appear hereinafter reflect the ways in which these words and letters appear in the documents submitted by the parties.
A. Trademarks or service marks of the Complainant
The Complainant alleges that on January 14, 2000, Complainant Phone-N-Phone Services (Bermuda) Ltd. applied for service mark status for its corporate name Phone-N-Phone and its trade name PNP in the United States. The basis for the application was the "intent to use" Phone-N-Phone and PNP in connection with long distance telephone services.
The Complainant also alleges that it has begun the process of applying for trademark status for Phone-N-Phone and PNP in Hong Kong, Peopleís Republic of China, South Korea and Japan.
The Complainant further alleges that the Complainant uses the trade names Phone-N-Phone and PNP in the regular course of negotiating its status as a provider of long distance telecommunication services, and that it intends to use the names in the provision of long distance telecommunication services.
Although copies of the applications referred to were not annexed to the Complaint, their existence has not been denied by the Respondent in its late filed Response referred to below.
No allegation has been made with respect to the registration of any trademark of the Complainant Phone-N-Phone Services (Bermuda) Ltd.
B. The Complaint
There is no indication in the Complaint that the Complainant has rights in a trademark or service mark, consisting of Phone-N-Phone or PNP, prior to January 14, 2000, date of the first application alleged for registration of the marks. On the contrary, the explicit statements in the Complaint refer to an intent to use the marks in the provision of long distance telecommunication services and to negotiating its status as a provider of such services.
The Complainant alleges that the domain name in dispute, phonenphone.com, is identical, or confusingly similar, to Complainantís trade name and pending service mark.
It is alleged by the Complainant that the Respondent was employed by Horizon Trust Corporation ("Horizon"), a Belgium company, "and an affiliate of Phone-N-Phone France". There is no indication as to the relationship, if any, between Phone-N-Phone France and Complainant Phone-N-Phone Services (Bermuda) Ltd. The initials PNP are used variously in the Complaint as the trade name for Complainant and as a reference to Phone-N-Phone France or PnP France.
In the Complaint, it is alleged that, as part of his employment with Horizon, Respondent provided consulting services to PNP France and that, in furtherance of these consulting services, the company (presumably PNP France) requested Respondent to register certain domain names "for PNP". These domain names were phonenphone.com and phonenphone.net.
In the Complaint, it is also alleged that the Respondent "properly registered phonenphone.net to PNP" and registered phonenphone.com in his own name. It is impossible to know which "PNP" is meant.
The Complaint states that the Respondent stole funds and refused to return company property including a computer system and a cellular phone.
The Complaint contains allegations of Respondentís alleged purpose of using the domain name phonenphone.com for the purpose of extortion from PNP, that his registration of the domain name and refusal to transfer it "to PNP" is an act of bad faith, that the Respondent registered the domain name with the express purpose of preventing PNP which applied for the mark Phone-N-Phone in the United States from reflecting the mark in a corresponding domain name, and finally alleges that Respondent had no right or legitimate interest in the domain name phonenphone.com.
The Complainant requests that the registration of phonenphone.com be cancelled and that the domain name be transferred to PNP.
C. The Response
In his Response, the Respondent declares he has been working in the telecommunications industry for about ten years and that his speciality is to set up telecommunications companies, manage them for about two to three years and then resell them to a large operator. He declares that he sold his last company in September 1997 to the Telecommunications Group "Interoute" which has been purchased by Sandoz in Switzerland. At that time, the Respondent created a new corporation named "The Phone Company".
The Respondent declares he introduced Interoute to Mr. Eliyahu Kelman, owner of Horizon, and that Mr. Kelman, who had no knowledge about telecom, asked Respondent to help him manage Interoute, which Respondent did for six months. During this period, Respondent declares he trained Mr. Kelman and his staff in the business of international telephony, and also worked with his own company, The Phone Company, on a project of setting up international Gateways to create an international network for the purpose of telephony wholesale.
The Respondent states that he presented this project, called Phone-N-Phone, to Mr. Kelman, suggesting he participate financially in the project, to which Mr. Kelman agreed. According to Respondent, their "deal" was to be partners in the business that Mr. Kelman would finance and that would be managed by Respondent.
In a letter to Respondent from Lee J. Dudak, Group Finance Director of Interoute dated November 1, 1999, the writer states that prior to September 1998 both Respondent and Mr. Kelman had discussed with the writer a new project called "Phone-N-Phone"; the writer, Mr. Dudak, declared that his understanding was always that the concept for the business of Phone-N-Phone, the plan and the technical strategy, came from Respondent and that Mr. Kelman had been asked to assist in raising finance.
Another letter to the Respondent dated January 25, 2000, from Chris Dewitte, Managing Director, Scriptor, also refers to the period from September 1997 until September 1998 when he reported that Respondent set up an innovative telecom project in partnership with Horizon, named Phone-N-Phone.
The Respondent declares in his Response that he had registered the domain name Phonenphone.net and later Phonenphone.com and annexes copy of an invoice showing that "The Phone Company", the company of Respondent, had ordered the domain name phonenphone.net on May 27, 1999.
The Respondent alleges difficulties which ensued between himself and Mr. Kelman, alleges that debts of Mr. Kelmanís company, presumably Horizon, to Respondentís company, presumably The Phone Company, amount to about US $500,000.
The Respondent alleges that it was he who created the telephony project Phone-n-Phone, that he has legitimate rights and interests in the domain name of phonenphone, and that it was Mr. Kelman who "stole" the business and the company from Respondent.
The Respondent declares that Horizon is not an affiliate of Phone-n-Phone France, denies that Horizon provided any consulting services to PnP France, and further declares that the owner of Phone-n-Phone offices (presumably of Phone-n-Phone France), certain professionals and Respondentís company (presumably The Phone Company), have not been paid for several months.
The Respondent alleges dishonesty on the part of Mr. Kelman, denies that he stole any funds, computers or cellular phones, affirms he was full partner of Phone-N-Phone and declares it is the Respondent who introduced the lawsuit against Mr. Kelman in Belgium.
The Respondent reiterates that Phone-N-Phone was created by him and that Mr. Kelman acted in bad faith and took the business away from its original starting place in France and Belgium to the United States.
5. Discussion and Findings
As the Response was transmitted by e-mail to the Center and to the Complainant three days after the due date and one day after Notification of Respondent Default, as a hard copy of the Response was received by the Center on March 9, 2000, and as the Response stated that a copy of the Response was sent by e-mail and by post to the Complainantís authorized representative, the Panel considers that no prejudice has been caused to the Complainant by this delay and, in the interest of justice, the Response should be considered. The Panel has therefore analyzed the Complaint and the Response to arrive at its decision.
Pursuant to paragraph 4.a of the Policy, Phone-N-Phone Services (Bermuda) Ltd. must prove each of the following in order that the Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to Phone-N-Phone Services (Bermuda) Ltd.ís trademark or service mark, and
(ii) Shlomi (Salomon) Levi 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identity or confusing similarity to a trademark or service mark in which the Complainant has rights
The Complainant alleges that phonenphone.com is identical, or confusingly similar, to PNPís trade name and pending service mark.
The Panel finds that the domain name phonenphone.com is phonetically identical, and is confusingly similar to the trademark or service mark Phone-N-Phone which Complainant has declared its intent to use, and for which it has filed an application for registration in the U.S. Patent Office, and proposes to file applications for registration in other trademark offices.
The requirement of paragraph 4.a(i) of the Policy has therefore been met.
B. Rights or legitimate interests in the domain name
Respondent has established by an invoice that his company, The Phone Company, ordered the domain name phonenphone.net on May 27, 1999. It is at a later (undisclosed) date that the Respondent declares he registered the domain name phonenphone.com. Respondent declares he developed a project to create an international network for telephone wholesale, called Phone-N-Phone, which he presented to Mr. Kelman. As early as September 1998, Respondent had promoted, together with Mr. Kelman, the name Phone-N-Phone in connection with a new telecom project and offering of services which were contemplated, in partnership with Horizon.
The basis for Complainantís objection to the domain name must be that it is identical to or confusingly similar to a trade-mark or service mark of Complainant. The only trade-marks or service marks of Complainant alleged in the Complaint are Phone-N-Phone and PNP, for which Complainant filed applications for registration on January 14, 2000, on the basis of "Intent to Use". The dispute cannot therefore have existed before at least nascent rights in the service mark Phone-N-Phone were created on January 14, 2000.
Accordingly, the Panel finds that, before any notice to Respondent of the dispute concerning his registration of phonenphone.com, he had made demonstrable preparations to use a name corresponding to the domain name in connection with a bona fide offering of services. This evidence shows that, for the purposes of paragraph 4.a(ii) of the Policy, the Respondent had rights or legitimate interests in respect of the domain name, and the requirement of paragraph 4.a(ii) of the Policy has not been met.
C. Bad faith
In view of the conclusion reached by the Panel under the preceding paragraph B, it is not necessary to explore if there were any evidence of registration and use of the domain name by Respondent in bad faith. It does appear to the Panel, however, that in light of the effort made by the Respondent, whether alone or in partnership with Mr. Kelman, in the 1997-98 period, to promote "a project of setting up international Gateways, to create an international network for the purpose of telephony wholesale" under the name Phone-N-Phone, it cannot be concluded that Respondent registered a domain name primarily for the purpose of selling, renting or otherwise transferring its registration to the Complainant, or to a competitor of the Complainant, for a valuable consideration in excess of the out-of-pocket costs related to the domain name (paragraph 4(b)(i) of the Policy).
Nor can it be concluded that Respondent registered the domain name in order to prevent Complainant, applicant for registration of the trade-mark, from reflecting the mark in a corresponding domain name (paragraph 4(b)(ii) of the Policy).
Nor is there any evidence that the domain name was registered by the Respondent primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii) of the Policy).
The Panel did not find that Respondent had intentionally attempted to attract, for commercial gain, internet users to his web site by creating a likelihood of confusion with the Complainantís mark, both because there was no evidence to this effect, and because the mark on which the Complaint is based was not used at the time the domain name was registered, but has only been the subject of an application for registration based on intent to use since January 14, 2000 (paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds there is no evidence that the domain name was registered and is being used in bad faith. The requirement of paragraph 4(a)(iii) of the Policy is therefore not met.
The Administrative Panel finds no evidence to support two of the three essential elements which would require Respondent to submit to a mandatory administrative proceeding. The evidence does not establish that Respondent had no rights or legitimate interests in the domain name and does not establish that Respondent registered the domain name in bad faith. Accordingly, the remedy requested by Complainant pursuant to paragraph 4(i) of the Policy is denied. The Administrative Panel does not require that Respondentís registration of the domain name be cancelled and that the domain name be transferred to Complainant.
Dated: March 23, 2000