WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESAT Digifone Limited v. Colin Hayes
Case No. D2000 0600
1. The Parties
The Complainant is ESAT Digifone Limited, a company incorporated in Ireland, having its registered office at 76 Lower Baggot Street, Dublin, Ireland.
The Respondent is Colin Hayes of 55 Shelbourne Road, Dublin, Ireland.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name <digifonewap.com>. The registrar with which the domain name is registered is Register.com Inc
3. Procedural History
On June 14, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on June 15, 2000 and complied with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.
On June 22, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail. A copy of the said Acknowledgment were sent at the same time to the Respondent by e-mail. The said e-mail to the Respondent was returned to the sender as the Respondent's e-mail address failed.
On June 22, 2000 the Center sent a Request for Registrar Verification to Register.com Inc. the Registrar of the said domain name. On June 28, 2000 the Registrar responded to the Center and stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said <digifonewap.com> domain name, confirmed that the Respondent is the registrant, confirmed that the Policy is applicable to the said domain name and that the said domain name is in "active" status.
The Center reviewed the Complaint and was satisfied that it complied with the formal requirements.
On June 30, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the <digifonewap.com> domain name to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint with attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to Network Solutions Inc., the Registrar of the <digifone.net> domain name (Complaint without attachments).
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on June 30, 2000 and that the Respondent was required to submit a Response to the Center on or before July 22, 2000. This e-mail to the Respondent was also returned to the sender as the Respondent's e-mail address failed.
The Respondent failed to submit a Response and on July 25, 2000 the Center sent a Notification of Respondent Default to the Respondent by post/courier, facsimile and e-mail advising the Respondent that the consequences of said default included inter alia that the Center would proceed to appoint a single member Administrative Panel.
On July 26, 2000 the Respondent sent an e-mail to the Center stating as follows:"Please note that I am no longer the owner of this domain. I will shortly be notifying the relevant registration people. My solicitors will furnish you with details of the new owners."
On July 26, 2000 the Center invited James Bridgeman to act as Administrative Panel in these proceedings and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member on July 31, 2000. On the same date, the case file was transferred to the Administrative Panel.
In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
Given the Respondent's failure to file a Response in this case, the Administrative Panel accepts as true and accurate, all statements of fact made by the Complainant in its submissions. (vide: Talk City Inc. v. Robertson, (WIPO Case D 2000-0009, February 24, 2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D 2000-0096, April 9, 2000).
The Complainant is a provider of mobile telephone services in the Irish market. It started business in March 1997 and now has 38% of the Irish market in mobile telephone services (both analogue and GSM), servicing over 649,500 business and personal users throughout Ireland. Its share of the GSM market is presently 42.4%. The Complainant employs over 650 staff. Its turnover for the year ending 31 December 1998 was IR£222.2 million.
The Complainant has made substantial financial investment in the marketing and promotion of its mobile telephone services, with particular emphasis on the development of the <DIGIFONE> trade mark/service mark, and has built up a substantial reputation in that mark. The Complainant spends approximately IR£5 million per year on advertising and sponsorship. From its inception to date the Complainant has spent IR£12.5 million on advertising campaigns and a further IR£3.5 million on promotions and sponsorships.
In addition to its principal service of providing mobile telephone services the Complainant offers the following services:
<DIGIFONE BEELINE>: this is the provision of a private corporate network linking office and mobile calls telephony.
<DOT DIGIFONE ONLINE>: this service allows access to internet information through WAP-enabled mobile telephones.
<ESAT DIGIFONE SPEAKEASY>: a prepaid mobile telephone service aimed at personal users.
<DIGIFONE EASYDATA>: this service allows access to oneís personal computer via a mobile telephone.
In addition, the Complainant has registered one Irish registered device mark <DIGIFONE BUSINESS ADVANTAGE> registration no. 207421, registered on 6th October 1997. The Complainant also has a number of trade mark applications pending before the Irish Trade Marks Office which consist of, or incorporate, the mark <DIGIFONE>.
There has been no Response or other submissions filed by the Respondent in these Administrative Proceedings so this Administrative Panel must rely on the information received by the Center from the Registrar, the submissions and evidence adduced in the Complaint and the Respondent's brief e-mail of July 26, 2000 as the source of information relating to the Respondent. There is very little information available to this Adminstrative Panel about the Respondent save that the Registrar's records indicate that his is the registrant of the said domain name and the Respondent claims to have assigned the domain name to a third party.
The Complainant's solicitors first wrote to the Respondent on March 21, 2000 in relation to this dispute and there followed a brief exchange of correspondence between the solicitors for the Parties prior to the commencement of this dispute.
5. Partiesí Contentions
A. The Complainant
With regard to the substantive issues in dispute, the Complainant asserts that each of the three conditions in paragraph 4(a) of the Policy is satisfied:
(i) The Complainant submits that the <digifonewap.com> domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
In support of this position the Complainant submits that the domain name <digifonewap.com> is confusingly similar to the Complainant's <DIGIFONE> mark, comprising, as it does the top level domain and the Complainantís mark with a <WAP> suffix. It is submitted by the Complainant that the <WAP> suffix is generic and in itself would not serve to distinguish goods, services.
The Complainant submits that it has rights in the <DIGIFONE> trade mark under Irish common law based on the extensive use it has made of the mark since starting business in March 1997, and the substantial reputation and recognition which the mark enjoys in Ireland by virtue of its large customer base and its high profile advertising and promotional campaigns.
Further, on 1 December 1999 the Complainant launched a service allowing access to Internet information through WAP-enabled mobile telephones. This new service was extensively advertised and in the period November 1999 to June 2000, the Complainant spent approximately IR£858,676 on advertising and promoting it. The Complainant submits that the term <digifonewap> therefore comprises the Complainant's trade mark <DIGIFONE> plus a description of a service recently made available by the Complainant.
It is submitted by the Complainant that the Complainant possesses intellectual property rights in the <DIGIFONE> trademark/service mark based on its use of the mark in the Irish market for mobile telephony services, and that such rights are sufficient to establish the rights requirement in condition (i) of paragraph 4(a) of the Policy.
The Complainant refers for support for this conclusion to the WIPO panel decision in Adobe Systems Incorporated v Domain OZ (Decision D2000-0057) where common law rights in trade marks were deemed to satisfy the test set out in the Policy.
The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in respect of the <digifonewap.com> domain name.
At the time of initiation of this dispute procedure, the Respondent was not using the <digifonewap.com> domain name in connection with a bona fide offering of goods or services nor is there any evidence of demonstrable preparations to so use the domain name. The domain name resolves to a www site containing an advertisement for the registering body, Register.com.
The Complainant submits that in correspondence with the Complainantís solicitors, the Respondentís solicitors have indicated that the Respondent is setting up a business in the United States however the Complainant submits that the Respondent is domiciled in Ireland and no details of the proposed business have been given. The Complainant is not aware of any business run by the Respondent which is commonly known by the domain name in dispute. The domain name in dispute is not the legal name of the Respondent or to the knowledge of the Complainant, of any entity with which the Respondent is lawfully associated. The Respondent is not, nor ever has been, licensed by the Complainant to use the <DIGIFONE> mark whether in connection with a domain name or otherwise. The Respondent has no registered trade mark rights in the <DIGIFONE> mark. The Respondent has no legitimate interest in the mark under Irish law.
The Complainant further submits that on the basis of the well-known nature of the Complainantís mark in Ireland, the absence of any legal right of the Respondent to the domain name or the said Complainant's trademark <DIGIFONE>, the absence of any evidence of any use of, or preparations to use the domain names in dispute, the Respondent can not successfully put forward a claim to be using or preparing to use the domain name in connection with a bona fide offering of goods or services. In a letter of 26 April 2000, the Respondentís solicitors concede that the Complainant "may have a proprietary interest in the name ĎDigifoneí".
According to the Complainant, the timing of the registration of the said domain name on February 8, 2000, just over two months after the well-publicised launch of the Complainantís new WAP enabled services, points to the fact that the Respondentís registration of the name was prompted by the Complainantís new services.
It is submitted by the Complainant that the Respondent, as an Irish resident must have been aware of the Complainantís <DIGIFONE> mark, given the particularly strong reputation of that mark in Ireland. This view of the Respondentís state of knowledge at the time of the registration is supported by the concession by the Respondent's solicitors that the Complainant "may" have a proprietary interest in the mark.
The Respondent in the letter sent by his solicitor to the solicitor for the Complainant in the course of the above mentioned correspondence, claims to be planning a business venture in the USA. The Complainant submits that this claim lacks credibility, given that the Respondent is resident in Ireland. In any event, the Complainant submits that if the Respondent is intending to establish an e-commerce venture over the Internet, with a possibility of this venture being in the same field of activity as the Complainantís (as is indicated in the Respondent's solicitorís letter of 26 April), that business will inevitably be accessible from Ireland.
According to the Complainant, if the Respondentís intentions were bona fide and the Respondent was genuinely intent on launching and developing a new business venture which will be accessible in Ireland, it seems extraordinary that, as a business operating out of Ireland, the Respondent chose a domain name which by the Respondent's own admission would invite, at the very least, a passing off action.
It is submitted that in all the circumstances the Respondent has no rights or legitimate interest to the domain name.
(ii) The Complainant further submits that the <digifonewap.com> domain name has been registered and is being used in bad faith
In support of this submission the Complainant states that the Complainant launched its WAP enabled mobile telephone service on 1 December. The Respondent registered the disputed domain name on 8 February 2000. It is the Complainantís belief that this has been done, either in the hope of disrupting the Complainantís business or attempting to profit from an association with the mark, or in the hope of extracting some payment for the domain name in excess of the Respondentís out-of-pocket expenses from the Complainant or from a competitor and the Complainant asks the Panel to infer such a finding in the matter. The Complainant points out that in their letter of 26 April 2000 the Respondentís solicitors do not rule out that the Respondent may seek to trade in a field of activity in which the Complainant engages.
The Complainant further submits that the Respondent also admits to making efforts to sell the business, presumably with the domain name. It is submitted that, in circumstances where there was no bona fide registration of the domain name, those facts demonstrate the Respondentís clear intention to profit from the registration of the domain name, by disputing the business of the Complainant or by seeking to sell the domain name for profit to the Complainant or a competitor of the Complainant at the Complainantís expense.
It is submitted by the Complainant that the very well-known nature of the Complainantís mark precludes the possibility that the registration and use by the Respondent of the disputed domain names is in some way honest, mistaken or non-exploitative.
As yet, there are no reported decisions of the Irish superior courts on the issue of "bad faith" registration of domain names. The Complainant submits that it is likely that an Irish court would follow the principles laid down by the English Court of Appeal in the case of British Telecommunications plc v. One in a Million  4 All ER 476 in determining a dispute on the facts of this case (although the Complainant states that it should be emphasised that this English decision would not be binding on an Irish court).
The English Court of Appeal in that case held that a domain name which was inherently similar to the name of a well-known mark could amount to an "instrument of fraud" sufficient to justify an injunction against the registrant of the domain name, if, when viewed in the light of the intentions of the registrant, the similarity of the names and all the surrounding circumstances, a court concluded that the name was produced to enable passing off, was adapted to be used for passing off and, if used, was likely to be fraudulently used. Aldous LJ (for the Court of Appeal) expressed the test (at p.493) that "a name which will, by reason of its similarity to another, inherently lead to passing off is an instrument of fraud". It is submitted that the <digifonewap.com> registration amounts to an instrument of fraud within that test.
In all the circumstances, the Complainant submits that the Respondent has registered and used the <digifonewap.com> domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
There was no Response or other submissions received from the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-
(i) the domain name in dispute 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 said domain name; and(iii) the said domain name has been registered and is being used in bad faith.
Complainants Trademark Rights
The Complainant has satisfied this Administrative Panel that it has common law rights in the trademark and service mark <DIGIFONE> and further common law and statutory rights certain other trademarks service marks and pending applications for registration of trademarks and service marks incorporating the word <DIGIFONE>.
The word <DIGIFONE> is the first and more distinctive element in the said domain name <digifonewap.com> as the <wap> element is acknowledged by the Complainant to be descriptive of WAP technology and not distinctive with respect to any rights of the Complainant.
As both Parties to these proceedings are based in Ireland, it would appear to this Administrative Panel to be appropriate to call in aid the rules of comparison developed in Irish law when courts have been faced with the problem of deciding how to approach the question of similarity of trademarks.
In Coca-Cola v. F. Cade & Sons Limited  I.R. 196, the Irish Supreme Court adopted and applied the test which had been formulated by Parker J. in Pianotist Co's Application (1906) 23 R.P.C. 774 at 777 viz. : "You must take the two words. You must judge them, both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for goods of the respective owners of the marks."
In applying this test, this Administrative Panel is conscious that this test was adopted and applied in the context of legislation which pre-dates the statutory provisions regulating trade mark rights in Ireland and also that this is a test for comparison of trademarks whereas this Administrative Panel is required by the Policy to compare a domain name with a trademark. Nonetheless this Administrative Panel is satisfied that this is the appropriate test to be applied in these Administrative Proceedings and concludes that the Complainant has established that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Rights and Legitimate Interest of the Respondent
The Policy sets out how the Respondent can demonstrate rights to and legitimate interests in the domain name in responding to a Complaint. Paragraph 4(c) of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) :(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name in issue or a name corresponding to the said domain name in connection with a bona fide offering of goods or services; or(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the said domain name, even if the Respondent has acquired no trademark or service mark rights; or(iii) 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.
The Complainant has established a prima facie case that the Respondent has not used or made any demonstrable preparations to use the said domain name in connection with a bona fide offering of goods or services. Furthermore the Complainant has established a prima facie case that the Respondent has not been commonly known by the said domain name and if the Complainant were to use said domain name in relation to any business venture in Ireland, in any field of activity related to the Complainant's business, it is likely that such use would become the subject of proceedings for passing off. Furthermore the Complainant has established that there is no evidence of the Respondent making any legitimate non-commercial or fair use of the said domain name.
In the absence of any submissions from the Respondent, this Administrative Panel is obliged to accept the Complainant's submissions and hold that the Complainant has no rights or legitimate interest in the said domain name.
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Administrative Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
In the absence of any submissions by the Respondent, and given the evidence submitted by the Complainant to establish that it has a significant reputation in Ireland and that the said domain name was registered shortly after the Respondent launched services based on WAP technology, this Administrative Panel accepts the Complainant's submissions that in the circumstances of the present dispute, the very well-known nature of the Complainantís mark precludes the possibility that the Respondent registered the said domain name in good faith.
This Administrative Panel is satisfied that on balance, the Complainant has established that the said domain name was registered and is being used in bad faith.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name <digifonewap.com> identical or confusingly similar to the Complainant's service mark, that the Respondent has no rights or legitimate interest in respect of that domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <digifonewap.com> should be transferred to the Complainant.
Dated: August 1, 2000