WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Vodafone Group, PIc v. Domain Privacy

Case No. D2007-1684

 

1. The Parties

The Complainant is Vodafone Group, PIc, of Newbury, England, represented by Vodafone Group Plc, of Newbury, England.

The Respondent is Domain Privacy, of Massachusetts, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <vodafoneracing.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 16, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November 19, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 20, 2007. The Center verified that the Complaint together with the amendment to 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 November 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2007.

The Center appointed Knud Wallberg as the sole panelist in this matter on December 21, 2007. 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 one of the world’s largest mobile telecommunication network operators. Vodafone Group operates more than 50 countries. The turnover of the Vodafone Group in 2007 amounted to more 31 billion.

The Complainant has used the trademark and service mark VODAFONE to promote its services and products since 1985. Presently, the Complainant owns numerous registered and unregistered trademarks and service marks in connection to a variety of goods and services, including services in mobile telecommunications.

The Complainant’s trademarks, and in particular the mark VODAFONE are widely known worldwide, with the Complainant continuously undertaking intense global commercial action in order to promote its services and trademarks.

The Complainant also owns hundreds of domain names which incorporates the VODAFONE trademark.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The domain name in dispute is confusingly similar to the trademarks and service marks in which the Complainant has rights

The domain name <vodafoneracing.com> is identical or confusingly similar to the Complainant’s trademark VODAFONE since it contains the Complainants trademark as its core identifying element. The addition of the “.com” gTLD denomination as well as the fact that the domain name is registered and used in the lower case is insufficient to avoid confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the domain names in dispute

The Complainant states that the Respondent is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use its trademark to sell any Vodafone products or services.

Further, the Complainant contends that the Respondent has no rights in respect of the contested domain name and has not been using the domain name in connection with a bona fide offering of goods and services.

The Complainant also contends that the Respondent has not been commonly known by the domain name nor is the Respondent making legitimate non-commercial or fair use of the domain name.

On the contrary the domain name is used to capture Internet traffic seeking the Complainant’s Vodafone products and services and to divert it to other products and services. Consumers can thus be deceived into believing that there is a connection between the Complainant and the domain names. In the consumer’s mind, the quality of the Complainant’s products is associated with this particular company.

(iii) The domain name in dispute was registered and used in bad faith

In support of this position, the Complainant provides that by registering the domain name in dispute, the Respondent intended to cause damage to the Complainant’ s fame and reputation. The Complainant submits that it is impossible for the Respondent to have registered the domain name without being aware of the trademarks of the Complainant and its activity in the telecommunications sector.

The Complainant further contends that the way the contested domain name is use clearly shows that Respondent’s purpose is to obtain commercial gains by diverting Internet traffic from the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(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(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The contested domain name contains the Complainant’s distinctive and widely known trademark VODAFONE in its entirety. Neither the addition of the descriptive term “racing” as suffix nor the inclusion of the gTLD denomination “.com” alters the fact that the domain name is confusingly similar to the Complainant’s trademark.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.

The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case it is unlikely that any such rights or interests exist.

In this context the Panel notes that “Vodafone” is an invented word that has no specific meaning. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any purpose unrelated to the Complainant or its products.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.

Given the notoriety of the Complainant’s trademark, the coined nature of the word “Vodafone”, and the extensive promotion of the trademark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.

The contested domain name resolves to a website that contains links including “sponsored links” that offers products and services that are in competition with the products and services offered by the Complainant. This indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion to the Complainant’s trademark, cf. the Rules paragraph 4(b)(iv).

The Panel concludes that the Complainant has shown that the third condition under the Policy is fulfilled.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <vodafoneracing.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: January 4, 2008