WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The World Phone Company (Pty) Ltd v. Telaccount Inc.

Case No. D2000-1163

 

1. The Parties

The complainant is The World Phone Company (Pty) Ltd. of 12 Fredman Drive, Sandton, Gauteng, South Africa. The respondent is Telaccount Inc. of 230 Windsor Road, Suite 215, Narbeth, PA 19072, United States of America.

 

2. The Domain Names and Registrar

The disputed domain name is worldphone.com and the registrar is Network Solutions Inc., of Herndon, Virginia, USA.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The complaint was received by the Center by email on September 19, 2000 and in hard copy on September 1, 2000. On September 4, 2000, registration details were sought by the Center from the registrar and these were confirmed by the registrar on September 12, 2000. Those details included that the registrarís 5.0 Service Agreement (which incorporates the Policy) is in effect and that Nicholas Marino of Nickís Sites LLC is the Administrative, Technical, Zone and Billing contact.

On September 12, 2000, the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee.

The complainant, in compliance with Rule 3(b)(xii) and Supplemental Rule 4(a), had sent a copy of the complaint by courier to the respondent on August 29, 2000. The complaint contained a copy of the Policy and the Rules. The complaint transmittal coversheet gave the URLs at which the Policy, Rules and Supplemental Rules could be found and stated, among other things:-

"the Policy is incorporated by reference into your Registration Agreement with the Registrar(s) of your domain name(s), in accordance with which you are required to submit to and participate in a mandatory administrative proceeding in the event that a third party (a complainant) submits a complaint to a dispute resolution provider, such as the Center, concerning a domain name that you have registered".

That coversheet also stated that the Center would forward an official copy of the complaint to the respondent and that the respondent would then have 20 calendar days within which to submit a response in accordance with the Rules and Supplemental Rules.

Before receiving from the Center the formal notification of the commencement of the administrative proceeding and the official copy of the complaint, the respondent filed an online response with the Center on September 12, 2000, nominating Nicholas Marino as its contact for the purpose of the proceeding.

On September 15, 2000 the Center formally notified the respondent by post/courier, fax and email of the complaint and of the date of commencement of this administrative proceeding, stating that September 15, 2000 was the formal date of commencement of the proceeding. The notification also stated that a response should be submitted within 20 calendar days from the day of receipt of the notification and specified October 4, 2000 as the last day for the response. In a separate paragraph, the notification set out the consequences that would follow if the response was not sent by that date, including the consequence that the administrative panel will not be required to consider a late-filed response, but will have a discretion to decide whether to do so. The Center sent copies of the notification to the complainant, the registrar and ICANN.

The notification specified the last day for a response as October 4, 2000.

On the day the respondent received the formal notification of commencement of the proceeding, September 15, 2000, Mr Marino referred in an email to having received a complaint about his domain name a couple of weeks earlier. In another email that day he complained to ICANN and the Center about the process and asked the Center to discard and ignore the very brief response he had filed several days before, stating that he would be seeking legal help to prepare a more adequate response.

In another email that day he sought information from the Center and next day emailed the Center saying he had been researching ICANN/WIPOís activities for Domain Disputes. On September 17 he acknowledged receipt of the Notification of Complaint and Commencement of the Administrative Proceeding and asked for the original complaint by email as soon as possible.

No response was filed within the required time. On October 6, 2000 the Center notified the respondent that it was in default and stated, among other things, "the administrative panel will decide in its sole discretion whether to consider your response (if submitted later) in deciding the case".

On October 6, 2000 the respondent informed the Center that it needed at least 30 more days to respond. The Center forwarded that request to the complainant and on October 7, 2000 the complainant declined to agree to an extension of time. The Center explained to the respondent on more than one occasion that the Center is not in a position to decide whether information submitted, or that will be submitted, will be deemed to be a formal response, and that under the Rules, it is entirely up to the administrative panel whether to consider the information in reaching its decision. The Center also informed the respondent that any communications it sent would form part of the case file and be forwarded to the administrative panel, which has the discretion to determine whether to consider them in reaching its decision.

On October 9, 2000 Mr Marino stated he had understood from his verbal communications with the WIPO case officer that the due date was October 20, 2000. He suggested then and on subsequent occasions that WIPO has an obligation to inform respondents when the deadline is approaching, which it had failed to observe in this case.

The case officer repeated then and on subsequent occasions that, although the respondent could not file an official response as the complainant had not consented to an extension of time, the Center would keep filing all communications it received and forward them to the administrative panel, which has the discretion whether to consider them.

Thereafter the respondent did submit some information as to its use of the disputed domain name, while continuing frequently and in the strongest terms to criticize the process and its handling by the Center. The complainant also submitted information about changes to the respondentís web site after the complaint had come to the respondentís attention and the complainant also made comments in response to one of the emails from the respondent.

On October18, 2000 the Center invited Alan L Limbury to serve as panelist. That day Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On October 19, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of November 1, 2000.

The language of the proceeding was English.

The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no formal response was filed within time and the informal online response of September 12, 2000 was withdrawn. The administrative panel was properly constituted.

All communications between a party and the Center were transmitted to the panel as part of the case file, including the very large number of emails from the respondent complaining at its treatment. The panel has decided, pursuant to Rule 10(b), to have regard to all the communications received by the Center from the parties, including the additional information provided by the complainant and the unofficial online response which the respondent asked the Center to disregard, in anticipation of a later, more complete response, which was never provided. Insofar as the respondentís numerous communications of protest (often in abusive terms) at what it sees as the injustices of the procedures contain material of any relevance to the issues in dispute, they have been taken into account.

 

4. Factual Background (uncontested facts)

The complainant, which was incorporated in South Africa in 1992, has since that date marketed international voice telephony services under the name WORLDPHONE, which it registered as a trademark in South Africa in class 38 (telecommunication services), with effect from 31 July 1996. The application to register that trademark was made on 30 June 1996.

In the United States and other countries, MCI-Worldcom holds the trademark for the word WORLDPHONE. Like many other corporations, MCI-Worldcom was prohibited from doing any business with South Africa during the apartheid era. Following the establishment of a democratically elected government in that country, MCI-Worldcom attempted to register the WORLDPHONE trademark in South Africa. This was opposed by the complainant. MCI abandoned its claim to the mark and allowed the complainant to proceed with registration of the mark in its name.

The respondent is a software company that has produced voice telephony, internet telephony, voice chat and internet chat software and systems for 12 years. The respondent registered the domain name worldphone.com on January 26, 1996.

For over a year from August 10, 1999 the respondentís website carried the words:

"The WORLDPHONE.COM domain name is currently for sale. Please contact Nicholas Marino mail to nickm@nickssites.com".

On February 14, 2000 an enquiry was made on behalf of the complainant to Mr Marino:

"We understand that the worldphone.com domain is for sale. Please can you tell me how much it is".

On February 17, 2000, Mr Marino replied:

"Thank you for your interest in the worldphone.com domain. If you are still interested in purchasing it, please make an offer, and please let me know what company or organization you represent".

The "for sale" sign was removed by Mr Marino immediately the complaint was filed.

 

5. Partiesí Contentions

A. Complainant

The name "WorldPhone" is identical to the complainantís trademark, trading style and confusingly similar to the complainantís company name.

The complainant believes that in view of the stated fact that the domain is for sale, it is apparent that the respondent has no rights to or legitimate interest in the domain name, and the domain name should be considered as having been registered in bad faith

A member of the complainantís staff emailed the registrantís representative during February 2000 in order to obtain more information about the asking price. It is clear from the reply received, requesting an offer and details of the offerorís identity, that it is the registrantís intention to base a price on the name and business of the interested party. The complainant contends that this approach by the registrant is not in compliance with the rules set out by WIPO and / or ICANN.

There is nothing to indicate any intention to use the domain in connection with a bona fide offering of goods or services.

There is nothing to indicate that the domain name registrant has ever been known by the domain name.

It is clear that the domain name registrant has set up their site to attract Internet users for financial gain. It is difficult to draw any other conclusion from a visit to the site.

The complainant submits that by virtue of having placed a for sale sign on the domain name, the registrant has declared that it does not plan any bona fide use of the domain name in connection with any offering of goods or services.

It is apparent that the registrantís use of the domain name is solely for illegitimate commercial gain.

The complainant submits that the registrant is not eligible for the relief associated with legitimate non commercial use or fair use of the domain.

Upon receipt of the complaint the respondent found the time to remove the "for sale" wording from the site. It is apparent that as a result of receiving the complaint, the respondent appreciated its importance and urgency and acted accordingly.

The respondentís assertion that he was not aware that a "for sale" was on the site is inconsistent with his response to the complainantís enquiry of February 14, 2000. Likewise, its statements about its research and development activities are inconsistent with the "for sale" notice which formed the content of its website for more than one year from August 10, 1999.

When the complainant was incorporated in 1992, its founders had no knowledge of any interest in the trademark held by MCI or any other carrier. MCI appear to have launched their WorldPhone brand in 1994. As the respondent does not appear to have any link to MCI-WorldCom, it is necessary to ask why the respondent believes that its claim to the domain in the USA or any country other than South Africa is legitimate?

 

B. Respondent

Mr Marino stated he was not aware that a "for sale" page was on the worldphone site and when he learned of it via the complaint he immediately took it down. He also stated there were several offers per week to buy the disputed domain name and for this reason the respondent decided to direct these emails to a single mailbox, so a small HTML file was placed at the index page of the worldphone.com http server in an endeavour to respond to an unending stream of unsolicited requests. The respondent never seriously entertained any sales offers and did not put a price tag on the name.

The respondent plans to use the worldphone.com domain name to support its voice-over-IP technology in the near future. It is actively engaged in research and development of voice-over-IP-technology. Examples of its work in speech technology include "TalkToMe" voice chat software; live audio/video conferencing; internet dating and "SayMail" (sending voice messages by email).

The disputed domain has been used since it was registered and will be used for its intended purpose. The TalkToMe voice-over-IP program is programmed to use the worldphone.com domain as a directory server. It is also used for program registration and server management, via cgi programs which are not immediately visible to a casual visitor.

MCI-Worldcom has consented to the use of the WORLDPHONE name by the respondent.

The respondent is not in any way confusing its use of the disputed domain name with the complainantís business in South Africa, which, so far as the respondent can tell, has never been promoted outside South Africa.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

  1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. the respondent has no rights or legitimate interests in respect of the domain name; and
  3. the disputed domain name has been registered and is being used in bad faith.

Identity or confusing similarity

The domain name worldphone.com is virtually or essentially identical to the complainantís registered trade mark WORLDPHONE. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [Ďepix.comí] is the same mark as [ĎEPIXí]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), affíd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainant has established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, based on all the evidence presented, establish the registrantís rights or legitimate interests to the disputed domain name. Sub-paragraph 4(c)(i) provides that one circumstance demonstrating legitimacy is:

"before any notice to you of the dispute, your 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;"

Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada v. Xross, AF-0133.

The panel is not satisfied that the domain name was in use before notice to the respondent of the dispute, otherwise than to display a "for sale" sign from August 10, 1999 until after the complaint was filed, nor that the respondent has demonstrated preparations, before notice of the dispute, to use the domain name in connection with a bona fide offering of goods or services. It follows that the respondentís statement of its plans for and its current use of the site worldphone.com may be treated as having been devised after notice of this dispute in an endeavour to resist the complaint.

There is nothing to suggest that the respondent has been commonly known by the domain name, a circumstance which, if proved, would constitute legitimacy under Rule 4(c)(ii).

The absence of evidence of any use of the domain name prior to the complaint, other than in displaying a "for sale" sign, precludes a finding of legitimacy under Rule 4(c)(iii).

Despite the failure of the respondent to produce evidence demonstrating its rights or legitimate interests to the disputed domain name, the complainant has the onus of proof on this, as on all issues.

The complainant has not asserted and there is no evidence that the respondent was aware of the complainant or its trademark before the respondent registered the disputed domain name. There is no evidence the "For Sale" sign appeared at the worldphone.com site between January 26, 1996, when the disputed domain name was registered, and August 10, 1999.

In reply to the complainantís comment that the respondent does not appear to have any interest in the trademark held by MCI, the respondent asserted that MCI-Worldcom has consented to the use of the WORLDPHONE name by the respondent. One of the respondentís emails complaining about the ICANN procedures was copied to vcerf@mci.net but this email did not claim any permission in the respondent to use the MCI trademark and Mr Cerfís email address is readily available from the MCI website. One could speculate that if the respondent had MCIís permission, it would have been a simple matter to demonstrate this, thus ensuring the failure of this complaint. On the other hand one could speculate that, if the respondent did not have such permission, MCI-Worldcom would have brought its own administrative proceeding under the Policy against the respondent.

There is nothing to indicate that the respondentís activities have attracted the attention of MCI-Worldcom one way or the other and it would not be appropriate to decide this case on speculation.

The complainantís case on this issue is based on:-

Against these are the facts that:-

With the material before the panel thus balanced, the panel finds the complainant has not discharged the onus of satisfying the panel that the respondent has no rights or legitimate interests in respect of the domain name.

Bad faith

The mere offering of a domain name for sale for more than the out-of pocket costs directly related to the domain name does not constitute evidence of bad faith registration and use within Rule 4(b)(i). That sub-paragraph of the Rule requires a showing that the respondent registered or acquired the disputed domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant for a price exceeding those costs.

Here, on the evidence, there was a period of over 3 years after registration before the "For Sale" sign went up, hardly evidence that the name was registered primarily for the purpose of sale. There is no evidence the respondent was aware of the existence of the complainant at the time it registered the domain name. No doubt the respondent was aware of MCI-Worldcom, which had started using the WORLDPHONE brand 2 years beforehand. But, assuming that the complainant and MCI-Worldcom are competitors, there is nothing to indicate the respondent registered the domain name primarily to sell it to MCI-Worldcom.

As to Rule 4(b)(ii), there is no evidence the respondent was aware of the complainant or its trademark when the domain name was registered and no evidence the respondent has engaged in a pattern of registering as domain names the trademarks of others.

As to Rule 4(b)(iii), there is no evidence the respondent was aware of the complainant when the domain name was registered nor that the respondent competes with the complainant or MCI-Worldcom.

As to Rule 4(b)(iv), having regard to:-

the conclusion cannot be drawn that the respondent is attempting to attract Internet users to its worldphone.com website for commercial gain by creating a likelihood of confusion with the complainantís trademark as to the source, sponsorship, affiliation or endorsement of the respondentís website or location or of a product or service on that website or location.

There is thus no evidence to support a finding of bad faith under Rule 4(b).

The circumstances described in Rule 4(b) are illustrative only and it is open to the panel to find bad faith registration and use in other proven circumstances. In considering this aspect, the panel has had regard to:-

The panel finds that the respondentís inconsistent statements, hasty removal of the "For Sale" sign and abusive conduct towards the Center and the case officer do not justify the conclusion that the domain name was registered and is being used in bad faith because they do not overcome the lack of evidence as to events between registration of the domain name and the appearance, over 3 years later, of the "For Sale" sign.

In the result the complainant has been unable to show that:-

The complainant has failed to establish this element.

 

7. Decision

For the reasons stated, the complaint is dismissed.

 


 

Alan L. Limbury
Presiding Panelist

Dated: October 29, 2000