WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cosmote Mobile Telecommunications S.A. v. Mr. Kavadias Alexander

Case No. D2004-0072

 

1. The Parties

The Complainant is Cosmote Mobile Telecommunications S.A., Athens, Greece, represented by Irini Nikolaidi and Pari Cornford, Greece.

The Respondent is Mr. Kavadias Alexander, Athens, Greece, represented by Mina Zoulovits, Greece.

 

2. The Domain Names and Registrars

The disputed domain names <cosmote.com> and <cosmote.net> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2004. On January 29, 2004, the Center transmitted by e-mail to Network Solutions, LLC, a request for registrar verification in connection with the domain names at issue. On January 30, 2004, Network Solutions, LLC, transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On February 5, 2004, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2004. The Response was filed with the Center on February 25, 2004.

The Center appointed Dimitris Oekonomidis as the Sole Panelist in this matter on March 4, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a Societe Anonyme duly organized and existing under Greek Law. The companyís trade name and logo is COSMOTE. The Complainant is a leading provider of mobile telecommunications services among the three major mobile operators in Greece (Vodafone, Stet Hellas) (Annex 5: Complainantís Annual Report for the year 2002).

It was incorporated under Greek Law 2190/1920 in October 1996, by OTE S.A. (the Hellenic Telecommunications Organization S.A.) a 99,99% shareholder and the Hellenic Advisory Telecommunications and Postal Organization S.A. (E.S.T.T.O.) a 0,01% shareholder. OTE S.A. had until January 1, 2001, when the telecommunication markets were liberalized, the national monopoly of providing fixed telecommunication services in Greece (more information can be found at "www.ote.gr") (Annex 6: a copy of the front page of the site "www.ote.gr").

The Complainantís principal business is the provision of a complete range of mobile telecommunications services including contract and prepaid services, international dialing and roaming, value added services, including voicemail (VMS), short message services, (SMS), call diversion, caller identification (CLI), as well as a variety of advanced value added services using WAP, SIM microbrowser and Voice Recognition Technologies. In addition, since March 2001 it offers to its contract and corporate customers, GPRS services, and in September 2002 the Complainant launched an integrated MMS (Multimedia Messaging Service) offering. In addition, in 2001 the Complainant was granted the so-called 3G or UMTS Special license for the provision of 3rd Generation Mobile Telecommunications Services. (Annex 5: Complainantís Annual Report for the year 2002: pages 13-16, 17-30).

The Complainant directly owns exclusive rights in the COSMOTE trade and service mark and derivatives thereof, in Greece and in Europe. Its various trade and service mark registrations and applications cover an extensive range of goods and services.

The Complainant has filed the following trade and service marks:

MARK

MARK No

COUNTRY

DECISION No

FIRST USE/DATE ISSUED

CLASSES

COSMOTE

136219

GREECE

3146/98

29/7/97

38

COSMOTE

143868

GREECE

8238/99

16/3/99

9,14,16,35,

36,37,39,41,

42.

COSMOTE

EASYPHONE

141107

GREECE

3685/99

3/8/98

9,14,16,35,

36,37,39,41,

42.

COSMOTE INVEST

146919

GREECE

 

26/10/99

9,14,35,36,38,41,42.

COSMOTE

ΚΑΘΗΜΕΡΙ-ΝΑ

149078

GREECE

9045/00

1/3/00

9,16,28,35,36,38,41,42.

COSMOTE

ΣΗΜΕΡΑ

149079

GREECE

9046/00

1/3/00

9,16,28,35,36,38,39,41,

42.

COSMOTE BUSSINESS AHEAD

152160

GREECE

 

4/8/00

9,16,35,36,

37,38,41,42.

COSMOTE BUSSINESS

LINE

152159

GREECE

 

4/8/00

9,16,35,36,

37,38,41,42.

COSMOTE BUSSINESS SOLUTIONS

152381

GREECE

8348/01

4/9/00

9,16,35,36,

37,38,41,42

COSMOTE ΕΝΗΜΕΡΩΣΗ

149080

GREECE

9047/00

1/3/00

9,16,28,35,36,38,39,41,

42.

ΕΧΟΥΜΕ ΠΟΛΛΑ ΝΑ ΠΟΥΜΕ

COSMOTE

ΑΣ ΜΙΛΗΣΟΥΜΕ

166326

GREECE

PENDING

7/2/03

9,14,16,35,36,37,38,39,41,42,43,44

COSMOTE

ΑΣ ΜΙΛΗΣΟΥΜΕ

166325

GREECE

PENDING

7/2/03

9,14,16,35,36,37,38,39,41,42.

COSMOTE

001866060

COMMUNI-TY

TRADE

MARK

6553/2000

15/9/00

9,14,16,35,36,37,38,41,

42.

COSMOTE

ΑΞΙΩΝ

146918

GREECE

6553/00

26/10/99

9,16,35,36,38,41,42

ΣΥΜΜΕΤΟΧΗ

ΑΥΞΗΜΕΝΗ ΚΟΙΝΩΝΙΚΗ ΕΥΘΥΝΗ

COSMOTE

170212

GREECE

PENDING

13/10/03

9,16,35,36,

38,41,42

COSMOTE Extranet!

171192

GREECE

PENDING

2/12/03

9,14,16,35,

36,37,38,39,41,42,43,44

COSMOTE

Fleet Management

171193

GREECE

PENDING

2/12/03

9,14,16,35,

36,37,38,39,41,42,43,

(Annexes: 12, 12.1, 12.2, 12.3, 12.4, 12.5, 12.6, 12.7, 12.8, 12.9, 12.10, 12.11, 12.12, 12.13, 12.14, 12.15 and 12.16: copies and certified translations of the aforementioned service and trademark applications).

The Complainantís COSMOTE service mark, registered since 1997, became widely recognizable and enjoys a strong reputation. (During the years 1997 to 1999 it became so famous that the Complainantís mobile telecommunications services were identified by the service and trademark COSMOTE. For this reason in 1999 the Complainant was renamed COSMOTE Mobile Telecommunications S.A. with the trade name and logo COSMOTE. Annex 1: Complainantís Codified Statutes).

In 1997 the Complainant started communicating with the Greek public by the advertising campaign of its registered service mark COSMOTE. Since 1997 it has invested the amount of 130.043.769,17 Ä in advertising for its mobile telecommunications services. Specifically, in 1997 the Complainant invested in advertising the total amount of 2.429.963,72 Ä, in 1998 the total amount of 3.842.770,83 Ä, in 1999 the total amount of 11.045.772,32 Ä, in 2000 12.541.176,79 Ä, in 2001 23.605.289,18 Ä, in 2002 34.455.171,54 Ä, in 2003 the total amount of 42.123.624,79 Ä (not yet finalised) (Annex 7: certificate issued by Complainantís Financial Department, dated January 14, 2004, confirming the above), (Annexes 7.1, 7.2, 7.3, 7.4, 7.5, 7.6, 7.7: copies of the Complainantís advertisements in Greek Newspapers in 1997, 1998, 1999, 2001, 2003) (Annex 7.8: commercials of the Complainantís telecommunication services presented in Greek television during the years 1997 to 2003).

According to the Complainantís offering circular of October 3, 2000 (Annex 8), the Complainantís impact in the market was so substantial, that from April 1998, when it commenced its commercial operations, until June 2000, it had approximately a total of 1.52 million customers which represented 31,4% of the total customer base for mobile telecommunications in Greece.

The Complainant operates in Greece twelve COSMOTE branded stores. Also it distributes its services and products through a wide network of approximately 2000 COSMOTE branded points of sale throughout Greece. (Annex 5: page 38 and 40 of Complainantís Annual Report for the year 2002, at the time the Complainant had ten COSMOTE shops) (Annex 9: photograph of one of Complainantís branded stores and Annexes 9.1, 9.2 and 9.3: photographs of Complainantís distributors).

The Complainantís shares are also listed on the Athens and London Stock Exchanges. (Annexes 10 and 10.1: Complainantís press releases of November 28, 2000, and October 3, 2000).

In February 2001, the Complainant through a consortium between COSMOTE Ė OTE and OTEnet, was declared as Grand National Sponsor of the Olympic Games "ATHENS 2004" in the telecommunications sector (Annex 5: page 92 of the Complainantís Annual Report for the year 2002 and Annex 11: copy of the first page of the site "www.athens2004.com" describing all the grand sponsors of the Olympic Games "Athens 2004").

The Complainant is also the registrant of the domain name <cosmote.gr> containing the word COSMOTE. (Annex 13: copy and translation of Complainantís domain name <cosmote.gr> contract and registration by the Institute of Computer Science (ICS) of the Foundation for Research and Technology Hellas (FORTH) known as " the Registry ICS-FORTH" Commission and Annex 13.1: copy of the first English page of Complainantís site in "http://www.cosmote.gr").

The Respondent is the main shareholder and the administrator of a limited liability company called Thalassomania EPE that was set up in 2003. Its main occupation is, as provided in the Articles (Annex 1), the sale of leisure boats and maritime equipment and the organization of high quality excursions in Greek resorts and famous tourist destinations both for domestic and international tourists.

On January 18, 2000, the Respondent registered the domain names <cosmote.com> and <cosmote.net>.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the Respondentís domain names <cosmote.com> and <cosmote.net> are identical to its registered national service and trademark COSMOTE and its long used corporate and trade name.

The Complainant asserts that there is no relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trade and service marks nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those service and trademarks. Furthermore, the Complainant has not authorized the Respondent in any way to represent it or to act on behalf of it. The Respondent has no legitimate reason to register or maintain the domain names <cosmote.com> and <cosmote.net>.

The Complainant contends that the Respondent is not actually using the domain names at issue, but he is holding them in an inactive manner, although the said domain names are unrelated to him and he does not use them in his business or as his corporate name (Annex 15 and 15.1: copies of the two inactive websites "www.cosmote.com" and "www.cosmote.net"). Moreover, there is no evidence, prior to the notice of the dispute to the Respondent, that he is using or he is making demonstrable preparations to use the domain name <cosmote.com> or <cosmote.net> or any other name corresponding to these domain names, in connection with a bona fide offering of goods or services.

Further, the Complainant maintains that no other company or person in Greece has registered a service mark or a trademark identical to the COSMOTE trademark in any classes (Annex 16: copy and a certified translation of the search result in the Greek Trademark Office, found in "www.gge.gr/4/search.asp" and "gge.gr/4/result.asp") and this is because this service and trademark has such a strong reputation that it is impossible for any consumer on site or hearing of the word COSMOTE, to refer to any other company in Greece than Cosmote Mobile Telecommunications S.A.

According to the Complainant there is no doubt that when registering the domain names in dispute, the Respondent was fully aware of the Complainantís extensive goodwill and reputation in its service and trademark COSMOTE. Besides the Complainant points out that at that time (January 2000) it had already begun its preparations to list its shares in the Athens and London Stock Market, by communicating to the public that the listing would take place in October 2000 (Annex 8).

The Complainant contends that the Respondent by registering as a domain name the famous service and trademark COSMOTE, which is also the Complainantís corporate and trade name, is attempting to create an association with the Complainantís existing or potential customers, who on seeing this domain name, will believe it is related to the Complainant. Its existing or potential customers would rightly expect to find the company on either <cosmote.gr> or <cosmote.com> or <cosmote.net>.

Further, the Complainant asserts that the word COSMOTE is an invented word composed of the word COSMO that means in the Greek language "world" and the word OTE which is the corporate name of the Hellenic Telecommunications Organisation S.A. In the COSMOTE service and trademark, the letters COSM are green and the letters OTE are blue, and this was done in order to show the relationship existing between the two companies COSMOTE and OTE. The Complainant also notes that the word OTE, included in the COSMOTE mark, is a registered service and trademark (Annex 17: copy of OTEís service and trademark registration issued by the Greek Trademark Office and its certified translation into English).

For all the above mentioned reasons, the Complainant contends that it is impossible that the Respondent has been commonly known by the word COSMOTE and has been making a legitimate non-commercial or fair use of the domain names in dispute.

According to the Complainant, the domain name <cosmote.com> and <cosmote.net> were registered exclusively with the intention to impede the Complainant Ďs ownership of them.

Regarding the Respondentís bad faith, the Complainant contends that it is established by the following elements: the Complainantís company and its service and trademarks are very well known in Greece and have a very strong reputation since 1997. The Respondent, who is a Greek citizen (living in a suburb of Athens), could not have ignored when registering the domain names at issue, the existence of the COSMOTE service and trademark, the COSMOTE corporate name, trade name and logo. The COSMOTE corporation is a very well known company in Greece, as the mobile telecommunications company which was founded by OTE S.A., until December 31, 2000, the only national provider of fixed telecommunication services in Greece. The Complainant is the leading company out of the three major mobile telecommunication companies which operate in the Greek market and is one of the National Sponsors of the Olympic Games "Athens 2004" which will be taking place in Athens during August 2004.

According to the Complainant, the Respondent registered the COSMOTE domain name (which he has not used for over three years) in order to prevent the Complainant from reflecting its own service and trademark in a corresponding domain name.

The Complainant mentions that the Respondent, on January 20, 2000, two days after registering the domain names at issue, registered fifteen domain names, all identical to the names of Greek islands, cities and mountains. Specifically the Respondent has registered the following domain names, all of which are names of very well known Greek islands: <kithira.net>, <limnos.net>, <kythnos.net>, <kythnos.com>, <kalimnos.net>, <folegandros.net>, <skyros.net>, <tzia.net>, <milos.org> and <thira.net>. The Respondent has also registered the following domain names, which belong to a Greek mountain and town: <parnassos.com> and <parnassos.net>. Further, he has registered the domain name <kolonaki.net>, which is a very well-known area in the center of Athens, the domain name, <arachova.net>, which is a very well-known Greek town, and the domain name <rafina.net> which is also a very well-known town in Greece. (Annexes 19, 19.1, 19.2, 19.3, 19.4, 19.5, 19.6, 19.7, 19.8, 19.9, 19.10, 19.11, 19.12, 19.13, 19.14: printouts of the "www.register.com" search results which show that the Respondent is the holder of the above domain names). According to the Complainant it is more likely that the Respondent has registered the above domain names primarily for the purpose of selling them.

The Complainant maintains that the Respondentís bad faith registration and use of the domain names at issue is also evidenced by the fact that they were registered three years after the Complainant had registered, used, communicated and advertised to the public the COSMOTE service and trademark and one year before it was publicly declared that the Complainant has become a Grand National Sponsor of the Olympic Games "Athens 2004" in the telecommunications sector, since rumours about such a sponsorship were being spread by the press long before.

Moreover, the Complainant contends that any active use of the domain names at issue by the Respondent would be illegitimate under fair competition (article 1 and 13 of the Greek Unfair Competition Law No 146/1914 - the registration only, without active use of the domain name which is identical or confusingly similar with a famous trademark, trade name and logo of a company may be considered as being against Unfair Competition law), trademark law principles (articles 4 paragraph 1(c) and 26 paragraph 1 of the Greek Trademark Law No 2239/1994 - any registration of a domain name that is identical or confusingly similar to a well-known registered service or trademark is against the Trademark Law and is regarded as unfair exploitation of the said trademark) and Civil Law (provisions regarding Unfair Acts).

Finally, the Complainant asserts that the Respondent registered the domain names at issue and is maintaining the said domain names, hoping that such behaviour will encourage the Complainant to make a payment to the Respondent in order to acquire the domain names. The Complainant contends, that its Information Technology (I.T.) Director, Mr. Christopoulos telephoned the second time to the Respondent requesting the Respondent to proceed to the transfer of the domain names at issue to the Complainant, the Respondent suggested that the Complainant make a financial offer to him as a condition to the transfer of the domain names (Annex 22: first letter e-mailed to the Respondent on December 29, 2003 by the I.T. Director). The Complainant mentions, that after the said e-mail was sent to the Respondent, Mr. Christopoulos again telephoned the Respondent on January 12, 2004, and the Respondent told him that he had not received the e-mail and he asked Mr. Christopoulos to forward the e-mail to another e-mail address (Annex 22: a certified translation of the second letter e-mailed to the Respondent on January 12, 2004).

The Complainant notes that the Respondent did not answer the aforementioned letters confirming by such a behaviour his bad faith in registering and using (in an inactive manner) the domain names in dispute (Annex 22.1: Mr. Christopoulosí e-mail sent to the Head of the Competition, Legal and Regulatory Affairs department of the Complainant and to two Attorneys at Law of the Competition, Legal and Regulatory Affairs department of the Complainant, on January 19, 2004, confirming that the Respondent did not reply to the company, and informing the aforementioned attorneys that although he tried to call the Respondent on a few occasions, the Respondent did not answer, and suggesting that COSMOTE should proceed with other legal options).

B. Respondent

The Respondent contends that the motto of his company "Thalassomania EPE" is an ancient Greek phrase that came up to him at the time he was preparing the start up of his tourism venture: "Κόσμο τέ καί θάλατταν κατακτήσωμεν..." This phrase means: "And the world and the sea shall we conquerÖ" The Respondent mentions that the word "κόσμο" is an ancient Greek word, used colloquially and the word means in modern English "the world." Though it is of Greek origin, this word has however a ubiquitous meaning, known in most languages and it is very frequently used all over the planet with its original sense, thus as a word relevant to "the world." There are many examples of varied applications of the word "κόσμο," (in Latin alphabet is "cosmo"- emphasis on the letter "o") (Annex 2: the heading of the print out of the first page of a google search for "cosmo" indicating that there are over 1,600,000 instances where the word "cosmo" is used, in different locations and for diverse purposes). Further, the Respondent mentions that the word "τέ" is another ancient Greek word, used as a conjunction, equivalent to the Latin word "que" and the modern English word "and." Moreover, the above syntax of the phrase is very common to ancient grammar, since both in Latin and in ancient Greek the words that precede the conjunctions "τέ" and "que" (i.e. filioque) govern the accusative. The Greek word "τέ" becomes "te" in the Latin alphabet (Annex 3: one google search indicated more than 73,200,000 occasions where the word "te" was utilized for several different purposes and with many different meanings). According to the Respondent, the term "te" or "τε" has a well-understood Greek meaning and when used in combination with "cosmo" or "κόσμο" it means in Greek "and the world." Moreover, international users easily memorize both words since they are generic and they are commonly used in all languages. The Respondent asserts that he chose to use the generic words "cosmo" and "te" because they are strongly related to tourism and travelling in general and in any case they are subject to substantial third party use unaffiliated with the Complainant.

Further, the Respondent maintains that the Complainantís mark COSMOTÉ (emphasis on the letter "e") is, as stated in the Complaint, an inventive word composed of the words COSM(O) and OTE, whereas the domain names at issue are formulated by putting together one generic word, "cósmo" and a conjunction, very well known in ancient Greek grammar, "te." The disputed domain names give emphasis to the generic word "cósmo," followed by the commonly used conjunction "te," whereas the Complainantís mark stresses the word "oté" (the major Hellenic telecommunications provider) in combination with the word "cosm(o)." Thus, according to the Respondent, it is clear that the marks have different sound, totally different meaning, they appeal to different consumer categories and they have diverse market positioning. In reality the domain names are a mere similar variation of the Complainantís trademark, dictated by the Domain Name System that does not allow Greek letters to be used nor emphasis to be added on the words. The Respondent notes that the Complainantís trademarks and the signs portrayed in its advertisement have a specific colored combination, where the word COSM is green and the word OTE is blue (in order to underline the Complainantís special relationship with OTE), and they include the picture of an elliptic globe. That way the Complainant wishes to differentiate its trademark from the generic words it incorporates, in order to be able to create a distinctive and denominative mark related to the goods and services it provides. Both words are generic in Greek as well as in many other languages and they are commonly used in many different ways either commercially or privately.

The Respondent contends that in traditional trademark protection the focus is in protecting consumers against a likelihood of confusion. The basis of trademarks is that they distinguish goods and services from those of other undertakings and there is clearly no danger of confusion if the same mark is used by different undertakings for quite different goods and services. According to EU Law, confusion is related to the consumerís inability to make a distinction between two related signs that promote similar goods or services.

The Respondent maintains that he is not a competitor of the Complainant, he has a totally unrelated clientele and he targets in different client groups. In addition, although the similarity between the trademark and the domain names exists, this factor is offset by the domain namesí sound differences and diverse market orientation. Therefore, as the Respondent asserts, even exact identity would not be adequate in order to establish infringement.

Further, the Respondent contends that he is not related to telecommunication services and he does not need to use the Complainantís mark to mislead consumers nor to divert traffic since he is not a competing enterprise. According to the Respondent the Complainant is a Greek enterprise with a trademark registered in Greece and its Greek ccTLD domain name <cosmote.gr> is targeted exclusively to the Greek market and the Complainantís clients and users of the Complainantís domain name <cosmote.gr> are solely people living and working within the Greek territory. The Respondent mentions that the Complainant does not have any European or other trademark and it has never tried to obtain a gTLD domain name, that is, seven years after the first launch of its services. On the other hand the Respondent notes that he plans to offer on-line tourism services under the domain names at issue, with the aim to acquire users from all over the world who want to travel to Greece, most of whom have never even heard of the Complainantís company and services. The Respondent maintains that no confusion for Internet users exists, since the context of the relevant websites will be dedicated to tourism and to strictly related services that in no way overlap with the telecommunication services provided by the Complainant. He states that he has no intention to mislead consumers for commercial gain or to tarnish the trademark at issue, and that no evidence has been brought to prove the danger of likelihood of confusion.

Further, the Respondent mentions that since the beginning of year 2000, he has been meaning to create his own enterprise and to take up a business related to tourism services and general leisure activities. He then started formulating the business plan of "Thalassomania EPE" and he was contacting all his major financiers, trying to persuade them to invest on his business venture. He registered the domain names at issue because he contemplated expansion of his business into travel and tourism enterprises. However, as the Respondent contends, because of increasing expenses in the cost of creating and developing his company "Thalassomania EPE" and establishing a large and reputable off line business, he ceased all development of the websites connected to the domain names in dispute. His enterprise, although growing rapidly, is still in its early stages, trying to develop the correct know-how and the proper marketing strategy. The Respondent asserts that he needs to make careful steps in every field he decides to invest in order to make profit and to keep his financiers satisfied. His intention is to create a well-organized tourism website before summer and begin his venture, by virtue that Greece hosts the Olympic Games and it will be on the spotlight and many people would like to visit it.

The Respondent mentions that taking into consideration the motto of his enterprise, the words "cosmo" or "cosmos" were the logical choice for a domain name leading to a website with a context related to tourism services with a global audience. However, at that time (January 2000) a search of the domain name availability search, demonstrated that both names were already engaged by other parties under the domain names <cosmo.com> (Annex 7) and <cosmos.com> (Annex 8), and thus he couldnít possibly register any of them. Nevertheless, he found out that both domain names <cosmote.com> and <cosmote.net>, that were, according to the Respondent, the second logical choice for him, since both words were relevant to the above mentioned motto of his tourist business, and were available. Thus, he decided to register the above-mentioned domain names.

Further, the Respondent considers that the Complainant has waited for an unusually long time before taking action against him since he has been the domain name owner for over four years. In the Respondentís view it is dubious how the Complainant, one of the largest mobile telecommunications providers in Greece since 1997, with hundred employees, with a total amount of advertising of 130,043,769.17 Ä (1997-2003), innumerable advertisements in the television and the press, 2000 branded stores throughout Greece, whose shares are listed on the Athens and London Stock Exchanges since 2000 and a Grand National Sponsor of the 2004 Olympic Games since 2001, had never tried to obtain the domain names <cosmote.com> and <cosmote.net> for more than seven years, although in the last seven years it has filled for more than 40 Greek trademarks and has also acquired the Greek ccTLD <cosmote.gr> in 1997. The Respondent maintains that the Complainant failed to act properly on time and by realizing this omission, it is now trying to acquire the domain names at issue from the Respondent, their lawful owner since the beginning of 2000 and deprive the Respondent without any reason from the right to use them in his future growth in a business field totally and fully unrelated with the Complainantís occupation.

The Respondent contends that the inactivity from the Complainantís part led him to believe that the Complainant was not interested in using the above-mentioned domain names, as well as, that the Respondent was without any doubt the rightful owner of the domain names. The Respondent refers to Article 281 of the Greek Civil Code concerning the "abuse of rights" doctrine (Annex 11), as well as, to the parallel doctrine of "deactivation of rights" (Annex 12) that the Greek Courts have developed, based on article 281 and the general principle of good faith (article 288) that resembles the common law doctrine of latches or equitable estoppel.

Further, the Respondent denies that he registered the domain names at issue in bad faith. He contends that he never approached the Complainant or any other enterprise in order to sell the names nor did he attempt to have any illegal financial gain from the said domain names. On the contrary, it was the Complainant that first got in touch with him, four years after he first registered the domain names, on December 23, 2003, making an offer to buy the domain names.

In addition, the Respondent contends that the Complainantís allegations that the Respondent orally asked the IT Director of the Complainant to make him a financial offer in order to transfer the domain name are totally untrue, and they fully demonstrate the Complainantís bad faith, since it has failed to prove any such deed from the Respondentís part. Instead it is evident, according to the Respondent, that he has never tried to contact the Complainant for an illegal purpose or to make any offer to sell the domain names to the Complainant or to any of its competitors.

Besides, in relation to the other domain names the Respondent registered on January 20, 2000, he mentions that no one has ever raised any objections to their registration, he has never tried to sell them to any party and he intends to fully develop them and use them in the course of his trade.

Finally, the Respondent contends that in any case lack of use of the domain names does not constitute per se bad faith use of the domain names.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for implication of evidence of bad faith in a number of circumstances:

(i) circumstances which indicate 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) registration of 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) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These circumstances are illustrative and do not represent the only circumstances that indicate bad faith.

A. Identical or Confusingly Similar

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(i))

The domain names at issue are identical or confusingly similar to the COSMOTE service and trademark, in which the Complainant has rights.

The Respondentís contention that the domain names at issue and the Complainantís trademark have a different sound and a different meaning is not sufficient, taking into consideration the visual similarity of the words which is of primary importance. The word COSMOTE, either deriving from the words COSM and OTE or COSMO and TE, is shown on the Internet in the same way, without any differentiation in color or stress. As for the contention concerning the difference between the goods and services that the Complainantís trademark distinguish and the market orientation of the domain names at issue, this circumstance does not have an effect when examining the similarity of the domain names and trademarks. Besides, and even if it was assumed that the word COSMOTE derives from two generic words, that is, "cosmo" and "te," the fact that these words are used as one gives to their combination a distinctive capacity.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent contends that he was occupied for more than seven years in the tourist business as a tourist agent in DRAKE S.A. (a large tourist office established in Piraeus-Greece). Since the beginning of 2000, he has been meaning to create his own enterprise and to take up a business related to tourism services and general leisure activities. The Respondent asserts that he then started formulating the business plan of "Thalassomania EPE" and that he was contacting all his major financiers, trying to persuade them to invest on his business venture. He registered the domain names at issue because he contemplated expansion of his business into travel and tourism enterprises. However, the Respondent contends, that because of increasing expenses in the cost of creating and developing his company "Thalassomania EPE" (which was set up in 2003) and establishing a large and reputable off line business, he ceased all development of the websites connected to the domain names in dispute. His enterprise, although growing rapidly, is still in its early stages, trying to develop the correct know-how and the proper marketing strategy.

Although the Respondent contends the above, he has not managed to bring before the Panel sufficient supportive material. Thus, the issues concerning his activities for the formulation of a business plan, the operation of his venture, the respective investments, the commencement of the developments of the websites connected to the domain names in dispute, have not been proved. The Panel is not convinced that the Respondent was making demonstrable preparations to use the domain names at issue in connection with a bona fide offering of goods or services.

As for the Respondentís contention concerning the "abuse of rights" doctrine and the parallel doctrine of "deactivation of rights," the Panel, taking into consideration the facts and the specific circumstances of the case, finds, firstly, that the prerequisites of the doctrine of abuse of rights are not met, and, secondly, as to the doctrine of "deactivation of rights," that the Respondent has not set forth sufficient evidence of circumstances relating to deactivation of rights.

Further, the Respondent has neither been authorized by the Complainant nor has independent rights to use the COSMOTE name or to register the domain names at issue. The Respondent does not own any registered or common law marks containing the term COSMOTE. The Respondent has not conducted any prior business under the name COSMOTE in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain names either as an individual or a business. The Respondent is not making any legitimate non-commercial or fair use of the contested domain names. The objective of the registration appears to have been to prevent the Complainant from reflecting its own service and trademark in the corresponding domain names and to attempt to create an association to the Complainantís existing or potential customers, who on seeing these domain names, will believe they are related to the Complainant.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

(Policy, paragraphs 4(a)(iii), 4(b), Rules, paragraphs 3(b)(ix)(3))

To support bad faith, the Complainant relies essentially on the same facts upon which it relies to establish the other elements of its case.

A finding that a respondent does not have rights or legitimate interests in a domain name which is confusingly similar to a trademark of a complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.

The context of the registration, the non-use, or the undemonstrated preparations to use the disputed domain names by the Respondent, taking into consideration the extensive goodwill and reputation and the wide-spread use of the Complainantís trademark, the business activities the Complainant has carried on, the fact that the Respondent is a Greek citizen (living in a suburb of Athens), and the failure of the Respondent to respond to the Complainantís attempt to make contact, are all facts indicating bad faith. The Respondent has not been able to rebut this evidence of bad faith.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.

The Complainant requests that the contested domain names <cosmote.com> and <cosmote.net> be transferred to it. The Administrative Panel so orders.

 


 

Dimitris Oekonomidis
Sole Panelist

Dated: March 23, 2004