WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airtel Móvil, S.A. and Vodafone Group Public Ltd. Co. v. Manuel Hortas Doncel
Case No. D2002-0749
1. The Parties
The Complainants are Airtel Movil, S.A. ("Airtel"), a corporation organized and existing under the laws of Spain, with domicile in Avda. Europa 1, Parque Empresarial La Moraleja, 28100 Madrid (Spain); and Vodafone Group Public Limited Company ("Vodafone"), a corporation organized and existing under the laws of United Kingdom, with domicile in Courtyard, 2-4, London Road, Newbury, Berkshire RG14 1JX, United Kingdom. Both Complainants are represented in this proceeding by Mr. Miguel Angel Rodríguez Andrés, with domicile in Paseo de la Castellana 216, 28046 Madrid, Spain, [hereinafter both companies shall jointly be referred as to the "Complainants"].
Respondent in this proceeding is Manuel Hortas Doncel, an individual whose address is Plaza de la Gaiteira 4 A, 15006 La Coruña, Spain, [the "Respondent"]. The Respondent acts within this proceeding in his own name and behalf.
2. The Domain Name and Registrar
The Domain Name in dispute is <airtelvodafone.info>.
The registrar for the disputed Domain Name is Joker.com [Computer Service Langenbach GMBH (CSL)], Rathaysyfer 16, D-40213 Düsseldorf, Germany.
3. Procedural History
This case will be considered and resolved according to the procedures implemented under the Uniform Policy for Domain Name Dispute Resolution and Rules (hereinafter, and respectively, the "Policy" and the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (hereinafter, and respectively, the "Center" and the "Supplemental Rules").
Considering that two of the three parties involved in the proceeding are domiciled in Spain, and according to article 15 (a) of the Supplemental Rules, the present case will also be considered and resolved in accordance with Spanish laws.
The Complaint was filed on August 9, 2002, by e-mail, and on August 12, 2002, in hard copy. On August 12, 2002, the Center sent a Request for Registrar Verification to Joker.com, the registrar of the disputed Domain Name. The registrar responded the same day that the registrant of the disputed Domain Name was the Respondent in this proceeding and that this dispute should be subject to the Policy.
On August 13, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail.
On August 21, 2002, Respondent requested an extension to the deadline for filing a response, alleging that he had been on travel. The Center authorized the extension and on August 31, 2002, the Center received the final Response by e-mail.
On September 17, 2002, the Center notified the parties of the appointment of Prof. Soler Masota as Sole Panelist.
4. The Partiesí Contentions
- Complainants are involved in the telecommunication services industry. Airtel has operated under that name since 1995. Vodafone has operated under that name since the 80ís decade.
Vodafone acquired Airtel, after a long process started in 2001. The process of acquisition of Airtel by Vodafone and the joint activity that they were at that time about to undertake in Spain (consisting in the commercialization of mobile telephones and the provision of telecommunication services) was widely advertised in the Spanish media, as shown by the press release provided by the Complainants. In particular, Complainants have duly evidenced that in July 2001, AIRTEL and VODAFONE trademarks appeared jointly on the Spanish market and therefore identified with a joint offer of products and services.
- As for Airtel, it has been duly documented with a reliable trademark portfolio that Airtel has registered before the Spanish Patent and Trademark Office more than 100 trademarks with the word AIRTEL, being most of them denominative trademarks and prior to the disputed domain name. Furthermore, Airtel owns other AIRTEL trademarks (denominative and graphic trademarks) for several countries such as Austria, China or Morocco.
- As for Vodafone, it has also been duly documented with reliable documentation that VODAFONE has registered before the Spanish Patent and Trademark Office two trademarks with the word VODAFONE being both of them denominative trademarks and prior to the disputed domain name. Additionally, Vodafone owns other VODAFONE trademarks (denominative and design trademarks) before the Office for the Harmonization in the Internal Market-Trade Marks and Designs which, therewithstanding, have effects in Spain. Finally, Vodafone has duly supported with documentation that Vodafone owns an international denominative trademark ("VODAFONE-IM") with extension to Spain.
- In October 29, 2001, Respondent registered the Domain Name <airtelvodafone.info>. The said domain has been used to redirect to the web page "www.airtelvodafone.com".
- Respondent has registered other domain names (<muxia.org>, <concellodemuxia> and <muxianet>) without being legitimate to do so as they identify a village in Spain and considering that only the "Comunidades Autónomas" and the State are invested with legitimation to register a villageís name.
- The disputed Domain Name is identical to the trademarks AIRTEL and VODAFONE. The disputed Domain Name is identical to Complainantsí trademarks because the disputed Domain Name is interchangeable with the trademarks without being possible that consumers appreciate any difference.
- Respondent has no rights or legitimate interest in respect of the disputed Domain Name:
(i) Respondent did not ask for nor received permission to use Complainantsí trademarks. Therewithstanding, the controverted registration does prevent Complainants from registering/using the disputed Domain Name. Moreover, Respondent should be aware about the transaction between Airtel and Vodafone when he registered the disputed Domain Name.
(ii) Respondent has not yet undertaken any business of his own under the disputed Domain Name. Moreover, Respondent has redirected the disputed Domain Name to <airtelvodafone.com>, being that Domain Name registered by Vodafone. The Panel wants to point out that, in the moment of drafting the present decision, it is not possible to access to the disputed Domain Name.
Finally, Complainants further state that Respondent is not commonly known under the disputed Domain Name.
(i) Respondent has never been licensed or authorized by Airtel or Vodafone to either use Complainantsí trademarks or register the referred names as Domain Name.
- Respondent has registered the disputed Domain Name in bad faith. In order to sustain Respondentís bad faith in the registration of the disputed Domain Name, Complainants allege the following circumstances:
(i) Respondent registered the disputed Domain Name in order to prevent Complainants from registering it because Respondent did not have any interest or right in AIRTEL and VODAFONE trademarks. Complainants also contend that Respondent offered them the disputed Domain for sale on an e-mail dated November 1, 2001.
(ii) Complainants further claim that Respondent intentionally used the disputed Domain Name to attract Internet users to its web site by misleading those users as to the source of the web site in order to obtain commercial gain since the activity of the Respondent is supposedly coincident with the activity of the Complainants.
(iii) Complainants claim that due to the wide publicity of the acquisition of Airtel by Vodafone, Respondent knew Complainants and Complainantsí trademarks.
- Respondent has used the disputed Domain Name in bad faith. In order to sustain Respondentís bad faith in the use of the disputed Domain Name:
(i) Respondent has registered a strategic Domain Name lessening the legitimate interest of Complainants.
(ii) Respondent has prevented and prevents Complainants from using the disputed Domain Name on the Internet within the normal development of their online activities.
(iii) The main purpose underlying the Respondentís strategy was to sell (to Complainants) the disputed Domain Name for valuable consideration in excess of the Domain Name registrantís out-of-pocket costs directly related to the Domain Name.
(iv) Complainantsí trademarks are well known.
(v) Respondent knew Complainantsí trademarks.
(vi) Respondentís intention was to take advantage of the disputed Domain Name, either by attracting prospective users (to its own website) or by selling it to Complainants.
- Respondent argues that he does not remember the e-mail dated November 1, 2001, within which he would have proposed to Complainants the sale of the disputed Domain Name. Additionally, Respondent contends that he uses public computers to check his e-mail account, further suggesting that a third person might have sent such controverted mail. Finally, Respondent argues that on the referred date an error on the Internet server occurred.
- Respondent alleges that when redirecting the disputed Domain Name he wanted to inform users that Complainantsí Domain Name was "www.airtelvodafone.com" and not "www.airtelvodafone.info".
- Respondent contends that he is "still doing a general virtual shop application on PHP with MySQ, in order to sell phone of that company (AIRTEL)".
- Respondent contends that AIRTELVODAFONE is not a registered trademark,or at least not in Spain.
- The "Muxia" domain names were registered following a request of the major of that Council.
- The rest of Respondentís allegations are not of legal nature and, thus, they have not been taken into consideration within this administrative proceeding.
5. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) the disputed Domain Name has been registered and is being used in bad faith.
Identity and confusingly similarity
There is no dispute between the parties that the disputed Domain Name is identical to the aggregation of the terms "AIRTEL" and "VODAFONE", and the Panel so finds.
Notwithstanding the above, the Respondent alleges that Complainants have not registered the trademark "AIRTELVODAFONE" and, therefore, he implies that Complainants have no rights nor interest over the disputed Domain Name <airtelvodafone.info>.
The Respondentís argumentation is not convincing. Complainants have duly registered both AIRTEL and VODAFONE trademarks. Both trademarks have acquired through the years a well-known status within the market (to be more precise, within the Spanish market where Respondent has his domicile). This status has been duly supported by the documentation provided by Complainants. Moreover, Complainants have duly evidenced that AIRTEL and VODAFONEís trademarks have long appeared on the market to distinguish a joint offer of products and services, so that consumers clearly associate both trademarks and companies. Therefore, a Domain Name containing both trademarks may easily confuse consumers as from the source or origin of the web site. Conversely, Respondent cannot allege that he was not aware of the well-known condition of Complainantsí trademarks. As said above, because of his domicile he cannot convincingly appear to ignore either the joint promotion and advertising nor the activities long held within the Spanish market under the trademarks of Complainants.
As prior ICANN Panels have recognized, the incorporation of alien trademarks within a Domain Name clearly generates confusion with the said trademarks. Very illustrative is in this sense is the recent decision Société Air France v. Van Wijk & Mesker Holding BV, WIPO Case No. D2002-0028, where the Panel found that the Domain Names <airfrance-delta.com> and <airfrance-delta.net> were identical to Complainantsí trademark AIRFRANCE and that the addition of the trademark DELTA "does not eliminate any risk of confusion with the trademark of Complainant, but on the contrary suggest that this domain name refers to the French airline company. This risk of confusion is enhanced by the combination with the name "DELTA", which undoubtedly refers to the airline Company Delta Airlines with which Complainant has a partnership".
This decision is to be aligned along with other earlier WIPO decisions where the Panel has also discouraged "opportunistic combinations of two famous trade marks" (see most in particular case WIPO Case No. D2000-0717, Vivendi SA/Seagram Company Ltd./Universal Studio Inc. v. Yu Fu Zhao, in relation with the Domain Names <vivendiseagram.com> and <vivendiuniversal.com>, where the disputed Domain name was shortly registered after the announcement of a merger between the companies owning the trademarks affected).
The Panel is bound to reach a similar conclusion to that expressed within the above-mentioned cases. The overall impression generated by the disputed Domain Name is likely to cause confusion to a potential consumer with the trademarks in which the Complainants have rights. Accordingly, the Panel finds that the disputed Domain Name is confusingly similar to the AIRTEL and VODAFONE trademarks pursuant paragraph 4(a)(i) of the Policy.
No rights and legitimate interests
Complainants contend that Respondent has no rights or legitimate interests in the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes prima facie showing that none of the three circumstances proving legitimate interests or rights apply, the burden of proof on this factor shifts to the Respondent, and it is in him to rebut the showing. The burden of proof, however, remains in first place with Complainant to prove each of the three elements of Paragraph 4(a) of the Policy. (See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, June 6, 2000).
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:(i) before any notice to you [Respondent] of the dispute, you [Respondent] have been using, or there are 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 (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial 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 Panel finds that the Complainants have duly complied with its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name.
Respondent is not currently developing any activity under the web site, neither Respondent has presented any documentation giving evidence of any preparations directed towards the launching on the market of any professional or commercial activity under the web site. Even, and as previously stated, the web site is not currently accessible. Additionally, Respondent is not known or identified by users under the disputed Domain Name. Finally, the Domain at issue may confuse consumers as from the source or origin of the web site. As a matter of fact, the Respondent expressly admits in his Response that he registered the disputed Domain Name because it was an "easy domain and my clients (Respondentís clients) will buy my phones (Respondentís phones) on internet".
Moreover, the Panel wants to point out that other facts must be taken into consideration:
- the registration of the disputed Domain Name shortly after the acquisition of Airtel by Vodafone leads to conclude that Respondentís behavior cannot be held casual.
- Respondent neither asked for nor obtained permission for the registration of the disputed Domain Name by the legitimate holders of the AIRTEL and VODAFONE trademarks (a relevant circumstance in the Panel decisions D2001-0024 and D2001-0905, among many others).
In conclusion, Respondent has not provided any evidence that the use of the disputed Domain Name meets the elements for any of the nonexclusive methods provided for in paragraph 4(c) of the Policy. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Complainants contend that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
The paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to sustain bad faith registration and use of Domain Name:(i) circumstances indicating that you [the Respondent] have registered or you [the Respondent] have 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 your documented out-of-pocket costs directly related to the Domain Name; or, (ii) you [the Respondent] have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the trademark in a corresponding Domain Name, provided that you [the Respondent] have engaged in a pattern of such conduct; or, (iii) you [the Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or, (iv) by using the Domain Name, you [the Respondent] have 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 trademark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
As for the first element, Complainants assert that Respondent offered to sell the Domain Name to Complainants. Complainants enclosed to the complaint as Annex 22 an e-mail received by AIRTEL from "firstname.lastname@example.org" with the following message (apparently) addressed and signed by the Respondent:
"Muy señor mío,
por el presente le comunico que el dominio airtelvodafone.info es de mi propiedad. La intención con que lo he registrado ha sido para venderlo. Espero tengan a bien contactar conmigo en el teléfono 639 85 78 85. Un saludo. Manuel Hortas."
Herein I inform you that the Domain <airtelvodafone.info> is of my property. The purpose with which I have registered it is to sell it. Hope you contact me on the telephone 639 85 78 85. Regards. Manuel Hortas).
Respondent contends that he does not remember to have sent the referred e-mail. Additionally, Respondent contends that he uses public computers to check his mail account and Respondent suggests that a third person might have sent the e-mail dated November 1, 2001. Finally, Respondent argues that the referred day an error on the Internet server occurred.
The Panel is not convinced by Respondentís argumentation. Respondent has neither supported with documents the alleged error on the Internet, nor how an error would have provoked the above-mentioned e-mail. Even if the mail address "email@example.com" was checked on a public computer located in a cyber café, the Panel does not understand how anyone would have known about the disputed Domain Name registration by the Respondent and written the e-mail dated November 1, 2001.
Although not concludent by itself, the controverted e-mail might be al least taken into consideration for its indiciary value, which becomes increasingly reliable when analyzing it in alignment with the other concurrent circumstances:
- with the registration of the disputed Domain Name, Respondent is disturbing the normal activity of Complainants at the Internet stage, impeding Complainants to obtain an "info" domain name with their trademarks. According to article 34 of the Spanish Trademark Act, dated December 7, 2001, the trademark holder can prevent others from using the trademark as domain name. Therefore, Complainants are the only entities legitimated to register a domain name with their trademarks and undertake their activities on the Internet under such domain name. With Respondentís registration, Respondent has prevented Complainants from appearing before consumers on the World Wide Web with their well-known trademarks under an info. Domain Name.
- according to previous decisions of the Panel (see D2000-0239, D2000-1354, D2001-0397, among others), it can be implied that the one that registers in bad faith will use the domain name in bad faith, especially when he has not developed any activity within the web site. The Respondent has not presented any evidence so as to allow the Panel to conclude that Respondent has used or is going to use the disputed Domain Name without jeopardizing the legitimate interests of Airtel and Vodafone over their trademarks.
Therefore, the Panel finds that Complainants have shown the necessary elements of bad faith under paragraph 4(b)(i) of the Policy and that Respondent registered and used the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
The Panel concludes (a) that the Domain Name <airtelvodafone.info> is confusingly similar to Complainantsí registered AIRTEL and VODAFONEís trademarks, (b) that Respondent has no rights or legitimate interest in the disputed Domain Name, and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Airtel Móvil, S.A.
Paz Soler Masota
Dated: September 30, 2002