WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phones4U Limited and Mobileserv Limited v. Marchex Sales Inc.
Case No. D2011-1656
1. The Parties
The Complainants are Phones4U Limited and Mobileserv Limited of Staffordshire, the United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Eversheds, LLP, UK.
The Respondent is Marchex Sales Inc. of Las Vegas, Nevada, United States of America, represented by John Berryhill, Ph.d., Esq., United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <phones4u.com> (the "Disputed Domain Name") is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2011. On September 30, 2011, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On September 30, 2011, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response October 24, 2011. The Response was filed with the Center October 25, 2011.
The Center appointed Gabriela Kennedy, M. Scott Donahey and Tony Willoughby as panelists in this matter on November 16, 2011. The Panel finds that it was properly constituted. Each member of 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.
Following the Panel’s review of the Response, the Panel issued Administrative Procedural Order No. 1 on November 25, 2011, requesting supplemental submissions from the Respondent to clarify which of the three entities referred to in the Response was the proper Respondent entity. The Panel invited the Respondent to make its submissions on or before December 2, 2011, and invited supplemental submission in response from the Complainants on or before December 9, 2011. The Center received supplemental submissions in response to Administrative Procedural Order No. 1 from the Respondent and the Complainants on their respective due dates, confirming the proper Respondent to this proceeding as Marchex Sales Inc.
4. Factual Background
Each of the Complainants is an English company within the Phones4U group of companies ("Group"), trading in the UK under the "Phones4U" name since May 1995, whereby Mobileserv Limited is the immediate parent company ("Parent") of Phones4U Limited, which is the primary trading entity within the Group, being a retailer of mobile phones and mobile phone services in the UK. Through the Parent, the Complainants own and/or have rights in various registrations for the PHONES4U trade mark in Europe and the UK, including a Community Trade Mark for a PHONES4U device mark registered on February 11, 2000, and two registrations in the UK for a word mark registered on November 10, 2006, and a device mark registered on October 22, 2010. Phones4U Limited has also held various domain name registrations incorporating PHONES4U, since May 30, 1997, including <phones4u.co.uk>, <phone4u.co.uk>, <phones4ufinance.com> and <phones4udirect.com>.
The Respondent is a US company and a wholly-owned subsidiary of Marchex Inc., which is a publicly traded company, engaged in the business of registering and operating (a portfolio of) domain names. The Disputed Domain Name was registered on December 21, 2003, by a registrant identified by the Respondent as Ultimate Search Inc. and, according to the submissions made by the Respondent, in the Response, the Disputed Domain Name was acquired by the Respondent from Ultimate Search Inc., in January 2005. As at the date of this decision, the Disputed Domain Name resolves to a website (the "Website") displaying numerous links to pages which feature sponsored links that largely relate to mobile phones or mobile phone services.
5. Parties’ Contentions
The Complainants' contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainants’ PHONES4U mark, in which the Complainants have rights:
(i) the Complainants have been trading in the UK under the name PHONES4U since May 1995, and currently carry on trade from over 550 stores in the UK as well as through an extensive e-commerce business operation;
(ii) the Complainants registered the domain name <phones4u.co.uk> in 1997. The domain name has resolved to a website as of October 18, 2000, and that website was e-commerce enabled by about Easter 2001;
(iii) as a result of their extensive promotional and trading activities, the Complainants have built up significant goodwill and reputation in the name and trademark PHONES4U, primarily in the UK;
(iv) the Complainants' group turnover in year 2009-2010 was GBP 880 million and the Complainants spend considerable sums each year on advertising and promoting the PHONES4U brand. The name and mark PHONES4U is consequently very well-known and is widely recognised among consumers as well as traders and businesses in the mobile phone industry;
(v) the Complainants are registrants of numerous internet domain names incorporating the PHONES4U mark and are proprietors of numerous PHONES4U-related trade marks registered in and since 19971. .These marks are used extensively, including on the Complainants' website “www.phones4u.co.uk”, which on average, receives 24 million unique visitors each year;
(vi) by December 2003, when the Disputed Domain Name was registered, the Complainants had already built up significant goodwill and reputation in the name "Phones4U". At that time, they had 337 shops trading under the name "Phones4U", their turnover was GBP 485 million, their website “www.phones4u.co.uk” had been live for over three years and they had registered about 40 trade marks, including PHONES4U, PHONES4U INSURANCE, PHONES4U DIRECT, PHONES4U CORPORATE and 4U device marks;
(vii) in the English Court of Appeal decision Phone4U Limited v Phone4u.co.uk Internet Ltd  EWCA Civ 244, the Complainants were successful in obtaining the domain name <phone4u.co.uk> from the respondent to that appeal on the basis that it was found by the court that by the end of 1999 they "not only had a substantial high street presence with Phones4U shops, but had advertised extensively in the national press". The Complainants therefore had substantial goodwill and reputation for years before the Disputed Domain Name was registered; and
(viii) the Disputed Domain Name is identical to the trade mark PHONES4U.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Respondent is not and has never been connected to, affiliated with or authorised by the Complainants in any way and has no legitimate interest whatsoever in using the trading name "Phones4U";
(ii) it is clear from the correspondence provided, in which the Complainants sought to purchase the Disputed Domain Name, that the Respondent's only interest in the name is as an asset, which produces income because it is a name which customers of the Complainants would naturally seek to access when looking for the Complainants' website;
(iii) the Respondent is not using the Disputed Domain Name in the course of any legitimate trade or bona fide offering of goods or services. The Website only contains links to third-party websites related to UK mobile phone suppliers, and to some other related services such as payphone suppliers, from which the Respondent is likely to have been receiving significant pay-per-click ("PPC") revenue. The Respondent is not itself offering any goods or services from the Website;
(iv) the Disputed Domain Name is being used with a view to exploit and confuse consumers looking for the Complainants' website who mistakenly type “www.phones4u.com” instead of “www.phones4u.co.uk” by redirecting them to the Respondent's Website;
(v) by deliberately using a domain name that is easily confused with the Complainant’s website “www.phones4u.co.uk” and the Complainants' marks, by creating the false impression that the Website is connected with the Complainants, and by placing numerous PPC advertisements on the Website, the Respondent is seeking to take advantage of the reputation of the PHONES4U brand and to deliberately mislead the Complainants' customers or potential customers, for commercial gain; and
(vi) there is no evidence that the Respondent has ever used or been known by the name "Phonese4U". The Complainants have exclusively used this name as its company and trading name for approximately 16 years.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) The Respondent registered the Disputed Domain Name over six years after the Complainants had registered their first trade mark, and over seven years after the Complainants had been trading under the name “Phones4U”. The Complainants and their business were by that time extremely well known. It can be inferred from that, and from the present use of the Disputed Domain Name, that the Respondent must have been aware of the Complainants when it registered the Disputed Domain Name;
(ii) it can further be inferred that the purpose of the registration was to take advantage of the Complainants' brand and reputation because PPC links on the Website relate largely to the Complainants' competitors in the UK, even though the Respondent is a US corporation. This suggests that the Respondent has deliberately targeted the Complainants in registering the Disputed Domain Name;
(iii) the above inference is stronger in light of the Respondent's use of robot.txt to prevent the Website content being accessed in an online archive form;
(iv) even if, which is highly unlikely, it were the case that the Disputed Domain Name was registered without actual knowledge on the part of the Respondent, the registration could only have been effected in a condition of willful blindness;
(v) in certain circumstances, it is not necessary for the Complainants to prove that the Disputed Domain Name was registered in bad faith as subsequent use in bad faith can be sufficient for the Complainants to succeed under the Policy;
(vi) the Website appears to be aimed at existing and prospective customers of the Complainants;
(vii) given the particularly strong recognition within the industry of the name "Phones4U" as denoting the Complainants and their brands, the Respondent is taking advantage of the Complainants' reputation in the name "Phones4U" to falsely imply a connection with the Complainants and thereby attract internet users to the PPC links displayed on the Website, and has been doing so in full knowledge of the Complainants' rights;
(viii) the Respondent has received letters and emails from the Complainants' solicitors. It has not responded to those letters and emails and continues to use the Disputed Domain Name, which clearly demonstrates that the intentions of the Respondent in using the Disputed Domain Name amount to bad faith; and
(ix) as the suppliers of goods promoted on the Website include the Complainants' competitors, the Website is diverting sales away from the Complainants and causing damage to their business, whilst at the same time benefiting the Respondent.
The Respondent's contentions can be summarised as follows:
(a) The Complainants do not have adequate rights in the PHONES4U mark and the "Phones4U" name:
(i) the Complainants' two UK trade mark registrations (registered in December 2006 and October 2010), were both registered well after acquisition of the Disputed Domain Name by the Respondent and the Complainants’ Community Trade Mark registration is premised on a now expired UK filing;
(ii) the trade mark registrations presented by the Complainants involve graphical depictions of the word "phones" and the words "for you" abbreviated to "4u", in what is a common form of Internet and text message slang. The Complainants have shown no presumptive right in the textual component of the mark divorced from the graphical presentation shown in the registrations;
(iii) a likely reason why the Complainants have avoided making a claim to the textual component (of the PHONES4U device mark) per se is suggested in the annotation to the Complainants' UK Trade Mark Registration no. 2355122, issued in 2007, and stating "proceeding because of distinctiveness acquired through use". This notation is apparently equivalent to what would be deemed in US practice a "2(f)" claim relating to a term which has been deemed descriptive, yet has acquired distinctiveness through claimed longstanding use;
(iv) the scope of the Complainants' rights as demonstrated by the proffered trade mark registrations are limited to a graphical presentation;
(v) in a US trade mark application filed just before the Complainants began corresponding with the Respondent, the Complainants claimed convention priority to a UK filing dated October 22, 2010. Hence the Complainants’ claimed priority in the US application long post-dates the Respondent's acquisition of the Disputed Domain Name; and
(vi) the Complainants' US trade mark application has been refused on a variety of grounds, chief amongst which is the prior US trade mark registrations for 4U2PHONE and PHONES-4-U.
(b) The Respondent does have legitimate rights or interests in the Disputed Domain Name:
(i) the Respondent operates thousands of web pages for the purpose of monetization of common generic terms and short phrases, which is extremely well documented in a number of prior UDRP cases;
(ii) the Respondent acquired the Disputed Domain Name upon its acquisition of Ultimate Search Inc., and has been using the Disputed Domain Name to provide sponsored links relating to telephones and related services, as suggested by the textual content of the phonetic term "phones for you";
(iii) the Respondent has a legitimate right to use the Disputed Domain Name because it is a US public company engaged in the registration and use of domain names in the US, in which jurisdiction (which is also the ultimate mutual jurisdiction), the Complainants' claim has been expressly refused by the United States Patent and Trademark Office ("USPTO");
(iv) the Respondent's rights and legitimate interests to use the Disputed Domain Name is manifest in the refusal of the Complainants' own trade mark claim in the mutual jurisdiction (the US) by the USPTO; and
(v) the Complainants’ priority claim in the US is several years junior to the Respondent's acquisition and continued use of the Disputed Domain Name.
(c) The Disputed Domain Name has not been registered and is not being used in bad faith:
(i) regarding the Complainants' suggestion that the Respondent obtained the Disputed Domain Name primarily for the purpose of selling it to the Complainants or a competitor for valuable consideration, the fact that the Complainants approached the Respondent anonymously with an offer as high as USD 20,000 did nothing to apprise the Respondent of the Complainants' trade mark claim. Rather, it reinforced the Respondent's impression that the Disputed Domain Name embodied a valuable descriptive term;
(ii) regarding the "robots.txt doctrine" that bad faith may be found if access to the archive of the historical contents of a website is blocked by a respondent after initiation of a domain name dispute, screenshots of the relevant pages of the Website, stored as graphic images and not HTML code, are readily available from <domaintools.com>. The historical record is thus readily available and is not being concealed by the Respondent; and
(iii) regarding the Complainants' apparent issue that the third party advertising provider has begun to "geolocate" advertising results viewed on the Website, the Respondent has no way of knowing what any of its pages look like as viewed from a location other than the US and the issue of geolocated content as it may appear in various jurisdictions is one which the Respondent is willing to resolve with the Complainants and with the advertising content provider.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainants to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in respect of the PHONES4U trade mark on the basis of their various registrations for such mark in Europe and the UK dating from 2000 and their UK unregistered rights acquired by use in the UK.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the PHONES4U trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainants' trade mark. The Panel notes that the identity or similarity of the Disputed Domain Name to the Complainants' PHONES4U is not contested by the Respondent.
The Panel accordingly finds that the Disputed Domain Name is identical to the PHONES4U mark in which the Complainants have rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainants contend that the Respondent is not connected or associated with either of the Complainants' businesses and is not on any other basis licensed or authorised to use its PHONES4U mark. Further, the Complainants submit that the Respondent is not known by the “Phones4U” name. Accordingly, the Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of proving that it does possess such rights or legitimate interests.
The Panel accepts that the Complainants have not licensed or otherwise authorised the Respondent to use the PHONES4U trade mark. The Panel also notes that there is no evidence, whether put forward by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name, and finds that the use of the Website as a "link farm" to host numerous sponsored links (for which the Respondent receives revenue, on a PPC or other basis) precludes any argument that the Disputed Domain Name is being used on a noncommercial basis. As such, the Respondent (at least if it wishes to bring itself within the express circumstances described in paragraph 4(c)(i) of the Policy) needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Panel accepts that use of a website to host PPC sponsored links is capable of conferring rights or legitimate interests in the relevant domain name on the registrant and/or website operator, particularly where the domain name in question consists of a dictionary or generic word or phrase, and the domain name is reasonably related to the content of the links hosted (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; U.S. Nutraceuticals, LLC v. Telepathy, Inc. c/o Development Services, NAF Claim No. FA365884; Canned Foods, Inc. v. Ult. Search Inc., NAF Claim No. FA96320; and Landmark Group v. DigiMedia.com, L.P., NAF Claim No. FA 285459). On the facts of the present case, the Disputed Domain Name arguably consists of a generic phrase ("phones for you"), whereby the phonetic abbreviation of the words "for you" to "4u" (which itself, is a generic or common abbreviation) does little if anything to distinguish the original phrase. The sponsored links displayed on the Website also largely relate to this phrase, the majority being links to websites concerning mobile phones or mobile phone services. Although the Panel notes the Complainants' contentions (as contained in the Complaint and supported with printed screenshots of the Website as viewed from the UK on August 2, 2011, and September 21, 2011) that the majority of the links on the Website relate to sites or businesses operated in the UK and thus the Website targets the Complainants, the Panel finds that the situation is different when the Website is viewed elsewhere, for example in Hong Kong, where a significant proportion of the links relate to sites or businesses operated locally or in mainland China. This finding suggests that the Website content is, as the Respondent contends, geolocated, or adapted to the geographical location of the Website viewer, as opposed to being fixed or predetermined. As such, absent any apparent evidence that the Respondent is targeting the Complainants in any way through use of the Disputed Domain Name, and absent any apparent evidence that the Disputed Domain Name is being used in any sense beyond a descriptive sense (to describe the general subject matter of the Website content, namely phones), the Panel is prepared to find that the Respondent's use of the Disputed Domain Name and the Website constitutes legitimate use under the Policy.
The Panel considers its finding supported by other relevant factors, such as the Respondent's record of registering domain names containing generic words or phrases rather than deliberately targeting brands or trade marks (as recognised by panelists in various domain name decisions referred to in the Response, including: Modern Beauty Supplies Inc. v. MDNH, Inc. c/o Jay Bean, NAF Claim No. FA0975334; Multicast Media Networks, LLC v. MDNH, Inc., NAF Claim No. FA0434268; Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), NAF Claim No. FA0567039; and Sociedad Administradora de Fondos de Pensiones y Cesantias PORVENIR S.A. v. Brendhan Hight, WIPO Case No. D2009-1240). Another relevant factor that has been taken into account by the Panel is the lack of evidence of the Complainants' status and fame outside of the UK (to the extent that "phonese4u" had more likely than not acquired a secondary meaning in other countries, including the US) such as to indicate that the use of the Disputed Domain Name by the Respondent could not on balance be said to be merely descriptive.
In coming to this finding on the Respondent's rights and legitimate interests, the Panel has made no reliance on the Respondent's contention that its rights and legitimate interests to use Disputed Domain Name are manifest in the refusal of the Complainants' application to register the PHONES4U mark in the mutual jurisdiction (the US) by USPTO, which contention the Panel rejects as groundless given that there is no basis for maintaining that one party's lack of rights in a specific jurisdiction has the effect of conferring rights on the other. Further, no reliance is made by the Panel on the Respondent's related observation that "(as) 'rights' under the first prong of the Policy arise under the national law of the Complainants, it would not be consistent to declare that relevant national law cannot be a basis for 'rights' under the second prong of the policy", which observation the Panel rejects as inaccurate, given that the first element of the Policy can be satisfied upon a complainant evidencing trade mark rights irrespective of the location of the relevant trade mark registration, as is explicitly recognised under paragraph 1.1 of WIPO Overview 2.0.
The Panel accordingly finds that the Complainants have not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. However, as the Panel accepts, as mentioned above, that it is at least arguable that the phrase "phones4u" is not purely generic or descriptive, it will proceed to discuss its findings under the third element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainants to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
For the Complainants to make good on this claim, they must satisfy the Panel that the Respondent knew or was likely to have known of the Complainants’ trade mark at time of registration of the Disputed Domain Name. Although the Complainants contend that both the PHONES4U trade mark and "Phones4U" trade name were very well-known at the time that the Disputed Domain Name was registered, the Panel notes that no evidence has been adduced by the Complainants in support of such contentions, insofar as they extend beyond the UK. Absent such evidence, and in light of the Respondent's assertion of good faith registration as supported by a record of bona fide registration of domain names consisting of generic or descriptive words or phrases (as recognised by various panelists in numerous UDRP decisions), the Panel is unable to find that the fame of the PHONES4U mark was such that the Respondent (a US-based entity) was more likely than not aware, or had knowledge, of the Complainants' mark at the time of registering the Disputed Domain Name. Further, the Panel rejects the Complainants' suggestion that proof of bad faith use obviates the need to prove bad faith registration, which in the Panel's view, is a requisite element that the Complainants must prove independent of bad faith use.
The Panel accordingly finds that the Complainants have failed to discharge the burden of proving that the Respondent registered the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.
As the Panel finds that the Complainants have failed to discharge their burden of proof under paragraph 4(a)(iii) of the Policy in respect of bad faith registration, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith use.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Date: December 23, 2011
I respectfully dissent.
M. Scott Donahey
Dated: December 23, 2011
1 The Panel notes that the earliest trade mark registration provided by the Complainant dates from the year 2000.