WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group Plc v. Desiree Mendoza
Case No. D2001-1037
1. The Parties
1.1 The Complainant is Vodafone Group Plc of The Courtyard, 2-4 London Road, Newbury, Berkshire RG14 1JX United Kingdom.
1.2 The Respondent is Desiree Mendoza of 1415 Dubuque Street, Oceanside, CA 92054 USA.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <vodaphone.com> (the "Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is BulkRegister.com Inc ("BulkRegister").
3. Procedural History
3.1 The Disputed Domain was registered on June 26, 1998. The Panel queried whether the Uniform Domain Name Dispute Resolution Policy applied. BulkRegister advised the Center that the Policy applied to the Disputed Domain. The Panel assumes this is on the basis that the registration agreement between the Respondent and BulkRegister includes a provision that BulkRegister may modify that agreement at any time, and that it has done so to incorporate the Policy since the date of registration of the Disputed Domain. The Panel has not seen a copy of the Respondentís registration agreement and has therefore proceeded on the basis of BulkRegisterís report that the Policy applies. Were it not for that fact, the Complaint would have been dismissed as incompetent.
3.2 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.3 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on August 16, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant.
3.4 On August 19, 2001, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.
3.5 The Center sent a Request for Registrar Verification to BulkRegister on August 22, 2001, by email. BulkRegister responded to the Centerís request by email on August 24, 2001, by email, stating:
(a) that BulkRegister had received a copy of the Complaint from the Complainant;
(b) that BulkRegister was the registrar for the Disputed Domain;
(c) that the Respondent was the current registrant of the Disputed Domain;
(d) that the Disputed Domain <vodaphone.com> was active;
(e) the Respondentsí contact details; and
(f) that the Uniform Domain Name Dispute Resolution Policy applies to the Disputed Domain.
3.6 On September 20, 2001, the Complainant sent an addition to the Complaint to the Center with the explanation that it dealt with material evidence that had come to light since the filing of the Complaint on August 16, 2001. The Respondent objected to the addition to the Complaint and requested that it not be included as part of the Complaint. The Panel asked for a copy of the proposed addition, but decided not to admit it on the basis that it disclosed no material that could not have been included in the original Complaint.
3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on August 27, 2001, to the Respondent by post/courier (with enclosures) and by email (without attachments), and to the Complainant by email (without attachments).
3.8 The Center received a Response from the Respondent by email on September 13, 2001 and in hard copy on October 9, 2001. The Respondent requested a three member panel. The additional fees prescribed under the Supplemental Rules have been paid by the Respondent.
3.9 The Center sent a Transmission of Case File to Administrative Panel by email on November 14, 2001. The documentation was received in hard copy by the Presiding Panelist on November 21, 2001, in Sydney, Australia.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint.
The Complainant is a company incorporated in England and Wales. It is the largest wireless telecommunications operator in the world by subscribers (83 million proportionate subscribers and approximately 188 registered customers in ventures in which it either has control or invests) and it has a presence in 26 countries across 5 continents. The Complainant has annexed a copy of its Annual Review & Summary Financial Statement for the year ended March 31, 2001 which attests to this. Each year the Complainant spends a substantial amount on advertising and promoting the ĎVodafoneí brand. It has also entered into a number of high profile sponsorship arrangements with third parties such as the Manchester United soccer club, the England cricket team, the Ferrari Formula 1 Grand Prix team, the Australian rugby team and the New Zealand rugby team. The Complainantís name and mark is well known throughout the world.
4.2 The Complainantís trade marks
The following information is asserted as fact in the Complaint.
The Complainant states that it is the owner of registrations for the trade mark "VODAFONE" throughout the world including:
(a) as a word mark in the United States from 13 May 1996 in respect of "telecommunication services, namely, telephone communication services; cellular telephone services, radio communication services; radio paging services; electronic store-and-forwarding messaging services; radio broadcasting and cable radio transmission services; electronic transmission of messages and data; and rental of telephones, radios, radio telephones and radio facsimile machines and equipment";
(b) as a stylised word mark in the United States from 22 December 1997 in classes 9, 16, 35, 36, 37, 38 and 42;
(c) in the United Kingdom in classes 9, 38 and 42;
(d) in Europe in classes 9, 36, 37 and 38; and
(e) in Australia, Austria, Benelux, China, Denmark, Finland, France, Germany, Greece, Hong Kong, Ireland, Italy, Malta, Norway, Portugal, South Africa, Spain, Sweden, and Switzerland.
In addition, the Complainant states that it has pending applications in Tanganyika and Zanzibar.
The Complainant has annexed print-outs from the US Patent and Trademark Office database, the UK Patent Office database, and the Community Trade Mark Office database attesting to various of these trademark registrations.
4.3 Activities of the Respondent
The Respondent states as fact that she is the mother of an eight month old daughter (and annexes photographic proof).
No other information as to the activities of the Respondent are asserted in either the Complaint or the Response, although the Panel infers that the Respondent claims to be operating a public service in the form of a website that redirects viewers to the Complainantís website or to other sites, depending on what they were looking for.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Disputed Domain, which the Respondent has registered, is confusingly similar to the Complainantís "VODAFONE" trade mark as the two are phonetically identical and visually similar. Further, the Complaint asserts that the Disputed Domain differs from the Complainantís name and trademarks only in that it substitutes the colloquial Ďfoneí with its actual meaning which is Ďphoneí.
5.3 The alleged confusion between the word VODAPHONE which appears in the Disputed Domain and the Complainantís name and mark VODAFONE is evidenced in annexures to the Complaint, namely:
(a) a print out of an internet search for VODAFONE which resulted in a combination of sites including sites with the words Ďvodaphoneí and Ďvodafoneí; and
(b) copies of various articles and correspondence which mistakenly address the Complainant as Vodaphone.
5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no legitimate interest in respect of the Disputed Domain because as at the date of the Complaint:
(a) the Respondent is not and has never been associated with the Complainantís business and was not and has never been authorised by the Complainant to use its name;
(b) the Respondent is not and has never been known by the name VODAPHONE or the name VODAFONE. The Complainant further states that it is not aware of any company in the world other than those within the Complainantís corporate group that has a legitimate interest in the name VODAFONE or in any domain name including the word VODAFONE or any deliberate misspelling of that word;
(c) the Respondent has made no demonstrable preparations to use the Disputed Domain in connection with a bona fide offering of goods or services;
(d) the Respondent claims that she uses the Disputed Domain to assist internet users to learn the correct spelling of the Complainantís name and to locate the Complainantís website but there is no indication that this is the purpose of the website;
(e) the Respondent made a thinly veiled request that the Complainant pay her a substantial sum of money in order to obtain control of the Disputed Domain when she said in an email to the Complainant on August 13, 2001:
"I should think that rather than attacking me, your client would want to acknowledge the immense benefit that I have been providing, inasmuch as the otherwise lost revenues and goodwill that my actions have salvaged for you, are incalculable.";
(f) the Respondent is not making a legitimate non-commercial use of the Disputed Domain; and
(g) the mere registration of the Disputed Domain does not give rise to any right or legitimate interest in the Disputed Domain.
5.5 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the Disputed Domain in bad faith because the Respondent has acquired the Disputed Domain for the primary purpose of selling it to the owner of an identical or similar trademark or personal or company name for valuable consideration in excess of the out-of-pocket costs directly related to the Disputed Domain.
In support of this assertion, the Complaint states the following:
(a) The Respondent knew of the Complainantís mark. Indeed, the Complainantís mark is inherently distinctive and so it is unlikely that the Respondent conceived of the Disputed Domain independently of this knowledge.
(b) In registering the Disputed Domain, the Respondent has registered a deliberate misspelling of the Complainantís inherently distinctive name and marks.
(c) The Respondent has registered the Disputed Domain in order to prevent the Complainant from reflecting a common misspelling of its name and mark (the Complainant states that it has registered <vodaphone.co.uk> and <vodaphone-retail.co.uk> in order to redirect internet users attempting to access its website and that it attempted to register the Disputed Domain.
(d) The Respondent has intentionally attempted to attract internet users to the Disputed Domain by creating the likelihood of confusion with the Complainantís name and mark.
(e) The Respondent indicated in an email to the Complainant of April 23, 2001 that the Disputed Domain was worth at least $150,000 and may be worth $500,000 in the next few years due to the fact that it receives 50,000 hits per month. The Complainant asserts that the Disputed Domain receives hits due only to confusion with the Complainantís name and mark and that this statement evidences the fact that the Respondent registered the Disputed Domain for the purpose of selling it to the Complainant. The Complainant states that this is further evidenced in the same email where:
(i) the Respondent asserts that $150,000 is a small sum to a $2 billion company;
(ii) the Respondent likens her registration of the Disputed Domain to the acquisition of a real property investment by a speculator;
(iii) the Respondent asserts that "when [the Domain Nameís] value is fully recognized, it will make all the difference to the future opportunities that I as a mother will be able to provide for Kerilynn, my three month old daughter"; and
(iv) the Respondent asserts that it is outrageous that a foreign company should seek to obtain the Disputed Domain from her "without any honest offer whatsoever of compensation therefor".
(f) The Respondent has indicated that the Disputed Domain may be of interest to a third party and has indicated that if valuable consideration is not received from the Complainant, the Respondent will transfer the Disputed Domain to a third party. The Complainant asserts that this allusion to a third party interest does nothing to establish that the Respondent herself has a legitimate interest in the Disputed Domain or that she has registered it in good faith.
(g) Registration of the Disputed Domain amounts to equipping the Respondent with an instrument of fraud.
6. The Respondentís Contentions in Response
6.1 In relation to paragraph 4(a)(i) of the Policy, the Respondent does not contest that the Disputed Domain is confusingly similar to the name and mark of the Complainant. She even asserts that the Disputed Domain is "more" confusingly similar to VOTERPHONE which is a Ďvote by phoneí service being established in the United States to assist in the electoral process. (There is no evidence that such a service was even in contemplation at the time the Disputed Domain was registered).
6.2 In relation to paragraph 4(a)(ii) of the Policy, the Respondent argues that she has a right and a legitimate interest in respect of the Disputed Domain on the basis that:
(a) she registered and legally paid for the Disputed Domain and has been operating the domain for over 3 years;
(b) she uses the Disputed Domain in connection with the bona fide offering of a service. This service is a Ďcourtesy siteí which aims to eliminate confusion that may arise as the result of Internet users making a spelling or typographical error and thereby accessing the Disputed Domain. This service takes the form of offering visitors to the Disputed Domain a "GoTo" search option. This search option prioritises the home website of the Complainant and is accompanied by a paragraph explaining to users how they can use the GoTo search option to access the website(s) of the Complainant. In more recent times, a second GoTo Search option prioritising the website of Votaphone has been added. The Respondent states that she receives no revenue for the provision of this service; and
(c) she is making a fair use of the Disputed Domain without intent to misleadingly divert consumers or to tarnish the trademark at issue on the grounds that, over the last 3 years, the Respondent has used the Disputed Domain to redirect close to 2 million internet users to "their intended destinations by clearing up spelling and/or typographical confusions". Rather than resulting in the diversion of consumers or the tarnishing of the Complainantís mark, the Respondent claims that her use of the Disputed Domain has assisted the Complainant in directing large numbers of internet users to its website(s). In addition, the Respondent states that she has a genuine patriotic interest in holding the Disputed Domain as she believes there is a possibility that it may be used in the future by VOTERPHONE to assist in the American electoral process.
(d) The Respondent does not argue that she has been commonly known by the Disputed Domain.
6.3 In relation to paragraph 4(a)(iii) of the Policy, the Respondent argues that she did not acquire the Disputed Domain primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. In support of this submission, the Response states that:
(a) it has taken the Complainant over 3 years to lodge a complaint in relation to the Disputed Domain which is evidence that they have not regarded the Respondentís registration or operation of the Disputed Domain as objectionable or detrimental, let alone vital to their business;
(b) the Respondent has used the Disputed Domain to clear confusion rather than to create it by redirecting internet users who access the site to their intended destination. Indeed, the Respondent uses the Disputed Domain to provide a "refreshingly useful non-commercial service" to internet users who are trying to access the Complainantís home website, who are trying to access general information about the Complainant or who are trying to access information about Voterphone which owns the domain votaphone.com. The Respondent redirects internet users to the Complainantís main site which is exactly what the Complainant would seek to use the Disputed Domain for except that she also offers internet users the opportunity to access the Voterphone site. As such, the Respondentís use of the Disputed Domain is more generally useful than that of the Complainant would be;
(c) the Respondent states that her use of the Disputed Domain has delivered enormous tangible benefit to the Complainant and has created real value for the worldwide internet community at large;
(d) the Respondent states that she does not want to sell and has no intention of selling the Disputed Domain to the Complainant or a competitor of the Complainant. The Respondent notes that she may sell the Disputed Domain to Voterphone but states that they are not a competitor of the Complainant;
(e) the Respondent states that she has not indicated to the Complainant that she will transfer the Disputed Domain to a third party if valuable consideration is not received from the Complainant in exchange for control of the domain. She contests that she told them simply that she does not want the Disputed Domain to fall into their hands as it may be required by Voterphone and that she has a right to transfer her property to whomever she chooses;
(f) the Respondent states that she did not register the Disputed Domain for the purpose of preventing the Complainant from reflecting a common misspelling of its name and marks. The Respondent further notes that this issue is not relevant as the Respondent has never registered any other domain name so it cannot be said that she displays a pattern of acquiring domain names for the purpose of reselling, renting or transferring them; and
(g) the Respondent states that she receives no commercial gain from the service she provides using the Disputed Domain.
7. Discussion and Panel Findings
7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
7.2 Domain Name identical or confusingly similar to Complainantís trade mark
The Disputed Domain is <vodaphone.com>. The Complainant owns registrations for the trademark "VODAFONE" in the United Kingdom, the United States, Austria, France, Germany, Greece, Hong Kong, Ireland, Malta, Italy, Spain, Norway, Portugal, South Africa, Sweden the Benelux countries, and Switzerland. The Complainant has provided statements to support the supposition that the Disputed Domain and the name and marks of the Complainant are confusingly similar. The Respondent does not contest this supposition, indeed, she has acknowledged it by prioritising the Complainantís website(s) as a destination to which she redirects visitors who use the Disputed Domain.
The Complainant has also provided evidence and statements that confusion between the Disputed Domain and the name and marks of the Complainant actually exists in the context of the Internet and in other environments. Again, the Respondent does not contest this supposition and, in correspondence with the Complainant and in the Response, she has indicated that large numbers of Internet users who visit the site to which the Disputed Domain resolves are attempting to access the site of the Complainant.
In this case, the fact that the Disputed Domain may also be similar to another third partyís names or marks (such as Voterphone in America) or that the Respondent uses the Disputed Domain to clear confusion does not detract from the confusing similarity between the Disputed Domain and the Complainantís name and marks. This is particularly the case since the Complainant is an extremely widely recognised and established brand across the world. No evidence has been provided to indicate that the American voting service provider Voterphone has a similar level of recognition.
The Panel is quite satisfied that the Disputed Domain is confusingly similar to numerous trademarks in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in the Domain Name
The Complainant asserts that the Respondent has no legitimate rights or interest in the Disputed Domain.
The Panel has seen no evidence to support an inference that the Respondent has any legitimate right or interest in the Disputed Domain. However, paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. These are if the Respondent can show that:
(a) before any notice to the Respondent of the dispute, their use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or
(c) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
We consider each of these below.
(a) Bona fide offering of services
The Respondent asserts that she uses the Disputed Domain in connection with the bona fide offer of a service, being the redirection of internet users to their intended destination. This was the website(s) of the Complainant and, more recently, has included the website of "Voterphone".
For the reasons set out in section 7.4 below, the Respondent has not persuaded the Panel of her bona fides in this regard.
(b) Commonly known by the domain name
The Respondent has provided no evidence that she is or ever has been known by the Disputed Domain.
(c) Use of the domain name
The Respondent has stated that she derives no revenue from the Disputed Domain and that she maintains it in order to alleviate confusion on the internet by redirecting consumers either to the Complainantís website(s) or to the Voterphone site.
If the Respondentís true aim were to alleviate confusion between the Disputed Domain and the Complainantís name and marks she would not include the Complainantís trademark as a metatag on her site to attract even more internet users to the site. Based on the evidence and discussion set out in section 7.4 below, it seems abundantly clear that, from the beginning, the Disputed Domain was intended to misleadingly attract consumers looking for the Complainantís website.
The Respondent has said that her other interest in maintaining the Disputed Domain is so that it may be utilised in the future by Voterphone in connection with the American electoral process. As discussed in part 7.4 below, the Respondentís interest in Voterphone appears to be relatively recent. The Panel sees no reason for this recent graft onto the siteís already implausible basis to be accorded any credit whatsoever.
The Respondent has not demonstrated that paragraph 4(c) applies; the Complainant has discharged its onus in proving on the balance of probabilities that the Respondent has no rights or legitimate interests in the Disputed Domain. Accordingly, the Complainant has made out paragraph 4(a)(ii) of the Policy.
7.4 Domain Name has been registered and is being used in bad faith
In order to show bad faith registration by the Respondent, the Complainant asserts that the Disputed Domain was registered for the primary purpose of selling it to the Complainant who is the owner of the registered trademark "VODAFONE" or a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The "waybackmachine" at <web.archive.org> (the "Archive") reveals that, in 1998, the Respondent was indeed using the Disputed Domain solely to redirect Internet users that visited her site to the Complainantís United Kingdom website. According to the Archive, as at November 11, 1998, the site displayed the following text:
"We know that many people will be trying to reach you by typing "xxxxxxx.vodaphone.com" After all. they may never have seen the name in print with an "F". So they will naturally attempt to spell it in what they believe to be the most likely way, the way they learned back in the second grade, and the way they have spelled it all of their lives. Even those who know differently will still make this mistake out of force of habit that is very deeply ingrained in English speaking people. The proof of this is that from day one, when this site went up over half a year ago, it has been averaging around 150 hits per day!"
The Archive also reveals that, from when the Respondent commenced use of the Disputed Domain up until at least July 21, 2001, the Respondent used some or all of the following meta tags to draw Internet searchers to the site:
"vodafone vodaphone phone cellphone cellphones cellular pager pagers satelite sattelite handheld communications globalstar".
At the time of writing this decision, the Respondentís site still included the following metatags:
"vodafone, vodaphone, mobile, phone, cell, cellphone".
According to the Archive, as recently as July 21, 2001, the Respondent included no reference to Voterphone on her site and only offered visitors a link to the Complainantís website. Indeed her site did not include redirection to Voterphone until about the time of notice to the Respondent of this dispute on September 16, 2001. It seems to the Panel that the connection between Voterphone and the Disputed Domain has only been treated by the Respondent as important since notice of the Complainantís desire to gain control of the Disputed Domain.
The inescapable conclusion drawn by the Panel, assisted by the Respondentís use of the Ďvodafoneí metatag, as well as metatags corresponding to common misspellings or trademarks such as "satelite" and Ďglobalstarí, is that the Respondent was well aware of the Complainantís name and marks and that, prior to any notice of this dispute, the purpose for registering the Disputed Domain and its intended and actual use was to create a site to take advantage of the confusion between the Disputed Domain and the name and marks of the Complainant. Although the Respondent then redirects users to their intended destination (usually the Complainantís website), the Panel is not convinced that this use of the Disputed Domain can be described as bona fide, nor that it demonstrates a bona fide registration or use of the Disputed Domain. The Panel notes that, although the Complainant did not mention the Respondentís use of its trademark as a metatag as evidence of bad faith, the evidence is publicly available and the Panel is entitled to pay due regard to it in forming its view of the Respondentís bona fides.
The Response includes a copy of a letter dated September 14, 2001 purporting to have been sent to US President George W Bush, in which the Respondent claims:
"Unfortunately a large cell-phone company based in England, which also owns a name similar to my own, namely vodafone.com, has elected to try and take my property away from me by force for no compensation whatsoever, with devastatingly ruinous implications for my own future and that of my eight month old daughter".
This statement indicates to the Panel that the Respondent registered and has been maintaining the Disputed Domain for the purpose of selling it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the registration costs.
The possibility that the Respondent may sell the Disputed Domain to Voterphone does not preclude this finding (and in any event, Voterphone was not known to the Respondent at the time of registering the Disputed Domain).
The Panel finds that the Disputed Domain name was registered for the reason outlined in sub-paragraph 4 (b)(i) of the Policy. The Complainant has accordingly made out paragraph 4(a)(iii) of the Policy.
The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been persuasively made out. Accordingly, and for the purposes of paragraph 3(c) of the
Policy, the Panel orders that the domain name <vodaphone.com> be transferred by BulkRegister to the Complainant, Vodafone Group Plc.
R. Cornish Richard W. Page
Dated: December 4, 2001