WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ESAT Digifone Limited v. Michael Fitzgerald Trading as TELCO-Resources

Case No. D 2000 0602

 

1. The Parties

The Complainant in this administrative proceeding is ESAT Digifone Limited, a company incorporated in Ireland, having its registered office at 76 Lower Baggot Street in the City of Dublin.

 

2. The Domain Name(s) and Registrar(s)

The domain name in issue is <digifone.net>. The Registrar with which the domain name is Network Solutions, Inc.

The Respondent is Michael Fitzgerald trading as Telco-resources of Poststrasse 5, Unteruhldingen, 88690, Germany and Laytown, Co Meath, Ireland.

 

3. Procedural History

On June 15, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy 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. Copies of the said Acknowledgment were sent at the same time to the Respondent by e-mail.

On June 22, 2000 the Center sent a Request for Registrar Verification to Network Solutions Inc., the Registrar of the said domain name. On June 30, 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 <digifone.net> domain name, provided the details of the registrant, the administrative contact, the billing contact and the technical contact, confirmed that the Network Solutions 5.0 Service Agreement is in effect, 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 July 2, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the <digifone.net> 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 July 3, 2000 and that the Respondent was required to submit a Response to the Center on or before July 22, 2000.

The Respondent failed to submit a Response and on July 25, 2000 the Center sent a Notification of Respondent Default to the Respondent 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 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 telephony 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 investments in the marketing and promotion of its mobile telephony services, with particular emphasis on the development of the <DIGIFONE> 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 mainstay service of providing mobile telephony services the Complainant offers the following value-added 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

There has been no Response submitted by the Respondent. 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).

 

5. Partiesí Contentions

A. Complainant

The Complainant requests this Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant. The Complainant asserts that each of the three conditions in paragraph 4(a) of the Policy is satisfied:

(i) The Complainant submits that the <digifone.net> domain name is identical or confusingly similar to a trade mark in which the Complainant has rights

It is submitted that the name <digifone.net> domain name is identical to the Complainants <DIGIFONE> trade mark and service mark, the addition of the <.net> element should be disregarded.

The Complainant 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.

In addition, the Complainant has registered the Irish device mark <DIGIFONE BUSINESS ADVANTAGE>, registration number 207421, registered on 6th October 1997. Furthermore, the Complainant submits that the Complainant also has a number of pending applications for registration of Irish trade marks which consist of, or incorporate, the mark <DIGIFONE>.

It is submitted that the Complainant possesses intellectual property rights in the <DIGIFONE> mark based on its use in the Irish market for mobile telephone services and that such rights are sufficient to establish the rights requirement in condition (i) of para 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.

(ii) The Complainant submits that the Respondent should be considered as having no rights or legitimate interests in respect of the <digifone.net> domain name.

 

The Complainant submits that the Respondent is a former employee of the Complainant who left the employ of the Complainant on 19 February 1998. The Respondent was fully aware of the existence of the <DIGIFONE> mark and its extensive use by the Complainant. The Respondent (as an individual business or other organisation) has not been commonly known by the domain name. The domain name 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 or service mark rights in the <DIGIFONE> mark. The Respondent has no legitimate interest in the mark under Irish law, nor does the Respondent's use of the mark constitute an honest concurrent use or a fair use such as to confer any intellectual property rights under Irish law.

The Complainant states that it wrote to the Respondent in February 2000 in relation to the Respondentís registration of the domain name at issue. At that time, the said domain name <digifone.net> domain name defaulted to a www site which announced "information about digital telephony coming soon". There was no evidence at that time that the Respondent was actively engaged in supplying such services. At the time of initiation of this dispute procedure, said domain name <digifone.net> resolves to a www site on which the public post articles, information and questions relating to issues of Internet telecommunications and national security, encryption, international espionage etc. A section of this www site currently contains articles relating to GSM technology. According to the Complainant there is no apparent monitoring authority as regards the contents of this site.

The Complainant submits that the Respondent can not maintain that he was using the domain name in connection with a bona fide offering of goods or services in circumstances such as these where he has registered the name of his former employer. Furthermore the Respondent has arranged for the said domain name to default first to a site with a holding message which by its content suggested that the owner of the www site was soon to offer services identical or similar to those of the Complainant and subsequently to a site dealing with issues relating among other things to the security of GSM technology which is used by the Complainant in the provision of its services.

The Complainant submits that in the circumstances the only reasonable inference is that the registration of the domain name and the connection of the domain name to the sites referred to above constitute deliberate attempts to misleadingly divert consumers or to tarnish the Complainantís mark in the hope of making some money out of the situation.

In February 2000, as soon as the Complainant became aware of the registration and use by the Respondent of the said domain name <digifone.net>, the Complainant wrote to the Respondent at the address which was at that time listed in Network Solutions Incís Whois database as the address of the owner of the domain name <digifone.net>, asking the Respondent to transfer ownership of the domain name to the Complainant. The Respondent did not reply to this letter.

It is further submitted by the Complainant that the Respondent is not making a legitimate non-commercial or fair use of the domain name. The Respondent is fully aware of the Complainantís rights in the mark but has not sought to contact the Complainant to explain, justify or seek permission for his behaviour.

It is submitted that in all the circumstances the Respondent has no rights or legitimate interest to the domain name.

(iii) The Complainant further submits that the said <digifone.net> domain name has been registered and is being used in bad faith

The Complainant submits that it has had no connection whatsoever with the Respondent since he left its employ on 19 February 1998. The Complainant has retained no relationship whatsoever with the Respondent. The Complainant has not entered into any licensing arrangement or joint venture with the Respondent in relation to any aspect of the Complainant's business, including the registration of internet domain names.

The Complainant refers to the Administrative Panel decision in the ICANN UDRP Administrative Panel Decision DeC AF-0096 Tourplan wherein the setting up of a domain name by a former employee which incorporated the company name of his former employer was held to be sufficient evidence of bad faith under the Policy even where no offer of sale of the site had been made by the Respondent. It is submitted that the reasoning in that decision is of equal application here.

Given the content of the sites to which the Respondent has arranged for the said domain name to resolve, it is submitted by the Complainant that there is a strong likelihood that consumers will assume that the site is controlled or endorsed by the Complainant in circumstances where the Complainant has no control over the content or presentation of such www sites. The Complainant argues that consumers are very likely to be confused when this domain name instead takes them to a www site other than a www site owned and controlled by the Complainant.

The Complainant submits that if the Respondent genuinely intends to engage in the supply of services similar to that of the Complainant, which the Complainant submits is a most unlikely scenario given the structure of the telephone market in Ireland, and the Respondent sees himself as a competitor to the Complainant, it is submitted that the registration of the domain name and the setting up of a www site offering such services under the domain name would constitute a deliberate attempt to disrupt the business of a competitor.

The Complainant further submits that the Respondent registered the said domain name with a view to preventing the Complainant from operating a www site incorporating its most significant mark. 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 from the Complainant for the domain name.

The Complainant argues that the fact that the Complainant is a former employer of the Respondent erases any possibility that the use is in some way honest, mistaken or non-exploitative. It is submitted that the only reasonable inference to be drawn from the registration of the mark by a recently departed employee in these circumstances is that the registration is in bad faith.

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 Telecom & Others v. One in a Million [1998] 4 All ER 476 in determining a dispute on the facts of this case (although the Complainant accepts 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". The Complainant submits that the <digifone.net> registration amounts to an instrument of fraud within that test.

It is submitted by the Complainant that the lack of a bona fide explanation for the registration of a domain name by a former employee incorporating his former employerís most important mark would be sufficient evidence of an intention to fraudulently use the mark to engage in passing off, within the meaning of the One in a Million case, and the Complainant urges the Panel to have regard to this decision when deciding this dispute.

The Complainant points out that a number of Administrative Panel decisions to date have also considered the meaning of the phrase "registered and used in bad faith", in the context of a Respondent registering a domain name but not obviously using it such as Musicwww (WIPO Case D00-0001) and Telstra (WIPO Case D2000-003).

It was accepted by implication in Musicwww (WIPO Case D00-0001) that the establishment of a www site corresponding to the registered domain name would satisfy the "use" requirement in the Policy and in Telstra (WIPO Case D2000-003) it was decided that in certain circumstances the mere registration of a domain name in bad faith involves use of the domain name in bad faith. In this case, the Respondent has used the domain name as an address leading to www sites and it is submitted that these actions constitute sufficient use of the domain name to satisfy the "registration and use" test.

In all the circumstances, the Complainant submits that the Respondent has registered and used the <digifone.net> domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

B. Respondent

There was no Response filed or submissions made by 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 <DIGIFONE> and further common law and statutory rights certain other trademarks incorporating the word <DIGIFONE>.

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 [1957] 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. This Administrative Panel is confirmed in this view by the fact that the Complainant has established that the Respondent was formerly an employee of the Complainant and there is no question but that the Respondent would have been aware of the Complainant's reputation and the use by the Complainant of the word <DIGIFONE> as part of its corporate name and as a distinctive element in the Complainants trademarks.

    Bad Faith
    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 that the Respondent is a former employee of the Respondent with no rights or legitimate interest in the said domain name, this Administrative Panel concludes that the Complainant is correct in asserting there is sufficient evidence to raise an inference that the Respondent registered and is using the said 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.

In the absence of any rebuttal by the Respondent, 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. However this Administrative Panel makes no determination as to the Complainant's allegation that the <digifone.net> registration amounts to an instrument of fraud.

     

 

7. Decision

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 <digifone.net> 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 <digifone.net> should be transferred to the Complainant.

 


 

James Bridgeman
Presiding Panelist

Dated: August 2, 2000