WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OnePhone Holding AB v. IndiGO Networks
Case No. D2007-1576
1. The Parties
The Complainant is OnePhone Holding AB of Stockholm, Sweden, represented by Bergenstrahle & Lindvall AB, Sweden.
The Respondent is IndiGO Networks of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <onephone.com> (the “Domain Name”), is registered with Wild West Domains, Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on October 24, 2007, and in hard copy on October 31, 2007. The Center transmitted its request for registrar verification to the Registrar on October 24, 2007. The Registrar replied the same day, confirming that the Domain Name was registered with it, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction of the courts at the location of its principal office. The Registrar provided the contact details in respect of the Domain Name on its Whois database and stated that it had not received a copy of the Complaint.
The Center notified the Complainant by email on November 2, 2007, that the Complaint was formally deficient in that it incorrectly identified the registrar. The Complainant submitted an amendment to the Complaint, correctly identifying the Registrar, by fax on November 5, 2007.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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”). The Center formally notified the Respondent of the Complaint in accordance with paragraphs 2(a) and 4(a) of the Rules, and the proceedings commenced on November 6, 2007. In accordance with paragraph 5(a) of the Rules, the due date for the Response was November 26, 2007. The Response was filed with the Center on November 19, 2007.
The Respondent elected in the Response to have the dispute submitted to a three-member Panel in accordance with paragraph 5(b)(iv) of the Rules. On December 4, 2007, the Center notified the parties of the appointment of Diane Cabell and Warwick A. Rothnie as Panelists. On December 8, 2007, the Center appointed Jonathan Turner as Presiding Panelist. Each member of the Panel has submitted a signed Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a Swedish investment company in the telecommunications sector. The Complainant owns a European Community registration in respect of the mark “ONEPHONE” and registrations or pending applications of the same mark in various other countries (not including the Bahamas) pursuant to an international application. These registrations were originally made in the name of Swefour AB, but were assigned to the Complainant before February 9, 2007.
The Domain Name was originally registered on March 3, 1999, by a Patrick Low. A representative of Swefour AB contacted Mr. Low on August 11, 2005, informing him that Swefour AB was preparing to launch a business under the mark “ONEPHONE”, noting that he had expressed a desire to lease the Domain Name but this was not within Swefour AB’s corporate plans, and offering to acquire it from him for US$1800. Mr. Low did not accept this offer.
Mr. Low subsequently sold the Domain Name to the Respondent for US$10,000 in February 2007. Prior to the sale, he told the Respondent that someone in Europe had offered him “10g”, someone else in New Jersey had expressed an interest, and a party from Sweden had offered “way below the 10g” and so would not be considered. The transfer to the Respondent was completed on February 9, 2007.
The Respondent is based in The Bahamas and has directed the Domain Name to its website at “www.indigonetworks.com” which markets telecommunications services including voice over internet (“VoIP”) services under the name “onephone” to residents of New Providence and Grand Bahama.
The Complainant sent a cease and desist letters to the Respondent on June 25, 2007 and August 13, 2007. The Respondent did not reply.
5. Parties’ Contentions
Identical or confusingly similar to a mark in which the Complainant has Rights
The Complainant relies on the registrations of the mark “ONEPHONE” in its name in the European Community and other countries and points out that the Domain Name is identical to this mark apart from the “.com” suffix. The Complainant submits that a finding that the Domain Name is identical or confusingly similar to its mark is not precluded by the fact that it has not yet registered its mark in the Bahamas. The Complainant notes that the internet is an international medium and refers to a number of cases where it has been held that a complainant can rely on trademark rights in countries other than those of the respondent or registrar.
Respondent’s Rights or Legitimate Interests
The Complainant states that the Respondent has no rights or legitimate interests in the name “Onephone” known to the Complainant and that it has not authorized the Respondent to use this name or to register domain names containing it. The Complainant asserts that the Respondent was not commonly known by, and did not do business under, the name “Onephone” prior to registration of the Domain Name, and any rights of the Respondent were preceded by the Complainant’s rights and established in bad faith. The Complainant also contends that even if the Respondent has a right to use “ONEPHONE” as a mark in the Bahamas, this does not include the right to use it in a “.com” domain name which implies an international company.
Registered and Used in Bad Faith
The Complainant states that in the hands of the Respondent, the Domain Name is blocked from being used by the Complainant who has prior rights. The Complainant contends that the Domain Name is being used by a competitor in a way which creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products or services offered on it. Furthermore, according to the Complainant, the Respondent is aware of this, having received the Complainant’s cease and desist letters.
The Complainant points out that for the purpose of this requirement of the Policy, registration includes registration on acquisition. It submits that a finding of bad faith should be based on what the registrant knew or should have known at the time of the registration. It then alleges that the Respondent knew or should have known of the Complainant’s rights, for several reasons: First, “ONEPHONE” is a combination which functions as a mark and it must have been apparent to the Respondent that there was a very high risk that someone else had secured trademark rights in this name. Secondly, the previous registrant was well aware of the Complainant’s rights and it is standard practice when acquiring intellectual property rights to perform due diligence. Thirdly, considering the investments made by the Complainant, the Respondent must have realized that the Domain Name was very valuable to it, and that this value could be exploited by the Respondent either by selling the Domain Name to the Complainant or by benefiting commercially from confusion. Fourthly, since the parties are active in the same field of business, it is likely that the Respondent knew about the Complainant from sources other than the previous owner of the Domain Name.
The Complainant requests a decision that the Domain Name be transferred to it.
Identical or confusingly similar to a mark in which the Complainant has rights
The Respondent submits that the Complainant’s claim to trademarks in various countries has no greater validity than its own claim to the same trademark in the Bahamas. The Respondent accepts and avers that the Domain Name is identical to this trademark.
Respondent’s Rights or Legitimate Interests
The Respondent states that it is a highly respected company in the Bahamas, whose subsidiaries have traded successfully in the information technology and telecommunications sectors since 1989. In 2002, the Respondent was granted a licence to compete with the telecommunications monopoly in fixed voice telephony services with effect from January 2004. The Respondent launched voice services to the business sector in 2004 under the trading name “IndiGO Networks”. In October 2006, it launched a VoIP service to the residential and small office / home office market under the trading name “onephone”.
The Respondent states that it created its “onephone” brand in August 2006 and provides evidence that it instructed an advertising agency to develop a logo for this brand in early September 2006. It also exhibits a rate table bearing the brand dated October 23, 2006; an email to a website developer on January 9, 2007, with references to the marketing of the brand on its website; and undated product literature and office branding visuals. The Respondent claims that it has spent substantial sums of money on marketing and promotion of its “onephone” brand and that it now has thousands of subscribers to its “onephone” service.
The Respondent contends that, by contrast, the Complainant has not in fact used the mark “ONEPHONE”. It points out that the Complaint does not actually say that the Complainant has used the mark, but merely that it “is part of the OnePhone Global Project, with the purpose to roll out the proven technical solution and business model from the Swedish enterprise operator Spring Mobil”.
The Respondent notes that as of May 1, 2007, the Complainant has had a web page at “www.onephone.se” which states “Welcome to OnePhoneŽ - our website is under construction and will be up shortly”, and that it appears from the web archive that there was no web page at this address prior to that date. A Google search on the string “onephone” on November 6, 2007, produced no reference to the Complainant, but did show up the Respondent’s website and uses of the same name by Ericsson and British Telecom.
The Complainant’s cease and desist letters of June 25 and August 13, 2007, state that the Complainant “is currently preparing to launch under the trademark ‘Onephone’ within the telecommunications sector in Europe and in the United States …”
The Respondent adds that although it is now reasonable to assume that Mr. Low’s reference to a party from Sweden who had offered “way below the 10g” in his email to the Respondent of February 3, 2007, referred to the Complainant, the Respondent did not know this at the time.
Registered and Used in Bad Faith
The Respondent reiterates that the Complainant has not launched any goods or services under the “ONEPHONE” mark and asserts that it did not know and cannot reasonably have been expected to know of the Complainant’s rights in various other countries when it acquired the Domain Name. It points out that the name “onephone” is not a coined word and is in use by a number of other telecommunications companies around the world. It stresses that it offers its services solely to residents of the Bahamas and that it is not in competition with the Complainant. It disputes the Complainant’s contention that there is a likelihood confusion or that it has any prospect of commercial gain from association with the Complainant.
Reverse Domain Name Hijacking
The Respondent submits that the Complaint constitutes reverse domain name hijacking, citing four grounds: first, that the Complainant has made wild allegations of bad faith; secondly, that the Complainant made no attempt to establish whether the Respondent had used the name “onephone” in connection with a bona fide offering of goods or services before bringing the Complaint; thirdly, that the Complaint contains selective disclosure of material facts relating to its use of the mark relied upon; and fourthly that the Complainant has pursued the Complaint recklessly with no regard to the disruption of the Respondent’s legitimate business.
The Respondent requests dismissal of the Complaint and a finding of reverse domain name hijacking.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similar
It is clear that the Complainant has registered rights in the mark “ONEPHONE” in the European Community and a number of other territories. The fact that these territories do not include the Bahamas, where the Respondent is based, does not affect this requirement of the Policy. There is no express condition in this requirement that the Complainant’s rights must be in a territory where the Respondent is based or operating, and there is no reason to imply such a condition, given that the Internet is an international medium. To the contrary, the Policy could readily be frustrated if there were such a condition.
Numerous decisions under the Policy have held that the Complainant’s rights need not be in the Respondent’s territory: see, for example, Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796. The fact that the Complainant does not have rights in the territory where the Respondent is operating may be relevant to the second and third requirements of the Policy but does not affect the application of the first.
The Respondent accepts that the Domain Name is effectively identical to the Complainant’s mark. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c)(i) of the Policy, “the following circumstances … if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii): … before any notice to [the Respondent] of the dispute, [the Respondent’s] 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”.
The Panel is satisfied by the evidence that the Respondent had used the name “onephone” in connection with an offering of telephone services prior to notice of the Complainant’s claim by its cease and desist letter of June 25, 2007.
It remains to consider the Complainant’s contention that the Respondent’s use of this name was not bona fide on the basis that it knew or should have known that the Complainant had conflicting rights.
The Panel is not satisfied on the evidence that the Respondent knew or should have known that the Complainant had any rights in the mark “ONEPHONE” when it commenced its use of the same name, still less that its use of this name would conflict with the Complainant’s rights. Indeed, there is no evidence before the Panel that the Complainant has established the substantial global reputation which would be required for local use of this relatively descriptive name in the Bahamas to present any conflict with the Complainant’s rights.
The Respondent commenced its use of the name “onephone” before it was told by Mr. Low that a person in Sweden had offered to purchase the Domain Name for a modest price. In any event this information did not give the Respondent any reason to suppose that this person had rights which would conflict with the Respondent’s use of the name in the Bahamas.
The Panel rejects the Complainant’s argument that the Respondent’s use of the name “onephone” in the Bahamas does not entitle it to use the Domain Name on the basis that the “.com” suffix implies an international business. Any person anywhere in the world can apply for a “.com” domain name; such domain names are in practice used by many businesses which operate in a limited territory; and Internet users are accustomed to this state of affairs.
Furthermore, paragraph 4(c)(i) of the Policy allows a business to register a domain name in any top level domain corresponding to a business name which it has used in connection with a bona fide offering of goods or services. This provision contains no requirement that the offering of the goods or services be international and no restriction of its application to particular top level domains.
The Panel concludes on the evidence that the Respondent has rights or legitimate interests in a name corresponding to the Domain Name. The Complainant has not established the second requirement of the Policy.
C. Registered and Used in Bad Faith
The Panel also considers that the Complainant has not shown that the Domain Name was registered or is being used in bad faith.
For the reasons stated above, the Panel is not satisfied that the Respondent’s use of the Domain Name conflicts with the Complainant’s rights, still less that the Respondent knew of such conflict or recklessly closed its eyes to it, such that it proceeded in bad faith.
The Panel concludes that the third requirement of the Policy is not satisfied.
D. Reverse Domain Name Hijacking
In accordance with paragraph 15(e) of the Rules, “if … the Panel finds that the Complaint was brought in bad faith, for an example in an attempt at Reverse Domain Name Hijacking …, the Panel shall declare in its decision that complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
“Reverse Domain Name Hijacking” is defined in paragraph 1(1) of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
For this purpose, bad faith encompasses both malicious intent and recklessness or knowing disregard of the likelihood that the Respondent possessed rights or legitimate interests in the Domain Name or a corresponding name: see Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741, and cases cited there.
In this case, the Panel is satisfied that the Complainant proceeded with at least a reckless disregard of the likelihood that the Respondent had rights or legitimate interests in the name “onephone”. Indeed the Complainant’s cease and desist letter acknowledged that the Respondent “under the domain name <onephone.com>, has launched an instant telephony service which uses VoiP to route calls over the Internet to consumers in Europe, United States and in Canada under the sign Onephone”. In the Panel’s view, it was reckless for the Complainant to consider, if it did, that this was not a bona offering of services. The Panel finds that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: December 22, 2007