WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vodafone Group Plc v. Orcun Ozyurt

Case No. D2015-1424

1. The Parties

The Complainant is Vodafone Group Plc of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, United Kingdom.

The Respondent is Orcun Ozyurt of Istanbul, Turkey self-represented.

2. The Domain Name and Registrar

The disputed domain name <vodafone.red> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2015. On August 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details

The Center sent an email communication to the Complainant on August 20, 2015 requesting the clarification of the Remedy section of the Complaint. The Complainant sent to the Center an Amended Complaint amending the remedies section of the Complaint on August 21, 2015.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2015. The Response was filed with the Center on September 14, 2015.

The Center appointed Luca Barbero as the sole panelist in this matter on October 9, 2015. 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.

The Complainant submitted a Supplemental Filing on October 12, 2015.

According to the consensus view of the UDRP panelists as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, it is in the panel's discretion whether to accept supplemental filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances.

In the case at hand, the Panel has reviewed the Complainant's Supplemental Filing and decided not to accept it as it solely reiterates information already included in the Amended Complaint without adding any new elements or circumstances relevant for the case.

4. Factual Background

The Complainant is a mobile communications network operator headquartered in Berkshire, United Kingdom.

The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the NASDAQ. As of January 28, 2015, the Complainant has a market capitalization of approximately GBP 62.79 billion. For the financial year ended March 31, 2014, the Complainant generated revenue of GBP 43.6 billion. The Complainant has over 404 million mobile customers, equity interest in over 30 countries across six continents and more than 40 partner networks worldwide.

The brand name VODAFONE, created to encompass "voice", "data" and "phone", was first announced to the media by the Complainant on March 22, 1984. In 1985, the Complainant launched one of the first cellular telephone networks in the United Kingdom under the same name.

The 2014 BrandFinance Global 500, the world's brand value league chart, ranked VODAFONE as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.

The Complainant is the owner of over one thousand trademark registrations and applications for, or including, the term VODAFONE, including the following registrations for the word mark VODAFONE: United Kingdom trademark registration Nos. 1215879, registered on October 14, 1998, in class 9, 2109387 of January 2, 1998, in class 42, 1291652 of November 8, 1991, in class 38, and 1223053 of January 17, 1990, in class 9; Community Trademark Nos. 134890, registered on April 1, 1996 in classes 9, 36, 37 and 38, and 2966018, registered on December 9, 2002, in classes 9, 14, 16, 18, 21, 25, 28, 35, 36, 38, 39, 41 and 42.

The Complainant is also proprietor of trademark registrations in Turkey, where the Respondent is domiciled, including the Turkish trademark No. 200119998 for the word mark VODAFONE, registered on January 14, 2003, in classes 9, 16, 38 and 42.

Furthermore, the Complainant is the owner of trademark registrations for VODAFONE RED, such as the Community Trademark No. 11138451, registered on January 2, 2013, in classes 9 and 38, and the Turkish Trademark No. 2012/74069, registered on October 24, 2013, in classes 9 and 38.

The Complainant also owns over 200 domain names consisting exclusively of the mark VODAFONE as well as more than 400 domain names in which VODAFONE is used in combination with other words and/or numbers. Amongst others, the Complainant owns and operates the domain names <vodafone.co.uk>, registered before August 1996, and <vodafone.com>, registered on December 4, 1997.

In addition to the above, the well-known character of the trademark VODAFONE has been recognized in several prior UDRP decisions.

The disputed domain name <vodafone.red> was registered on May 6, 2015, and is pointed to a "coming soon" web page.

5. Parties' Contentions

A. Complainant

The Complainant states that the trademark VODAFONE is inherently distinctive, being an invented word, and that, through its extensive sales, advertising and marketing around the world, the Complainant has acquired a very substantial reputation in the trademark VODAFONE.

The Complainant contends that the disputed domain name is identical to the trademark VODAFONE since it encompasses the trademark in its entirety with the mere addition of the top-level suffix ".red", which is generally disregarded in the assessment of identity or confusing similarity.

The Complainant also states that, should the top-level suffix ".red" be taken into account in this assessment, the disputed domain name would be identical to the Complainant's trademark VODAFONE RED.

The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has no connection with or affiliation to the Complainant, has not received any express or implied licence or authorisation to use the Complainant's trademarks in a domain name or in any other manner, and does not hold any trademark registrations for the word mark VODAFONE or VODAFONE RED anywhere in the world. The Complainant also submits that the Respondent, who is pointing the disputed domain name to a holding page entitled "website coming soon!", is not known by the name Vodafone or by the disputed domain name.

The Complainant further states that, given the extremely well-known status of the Complainant's trademark, VODAFONE cannot be a mark that the Respondent would legitimately choose unless seeking to create an impression of an association with the Complainant.

With reference to bad faith at the time of registration, the Complainant alleges that, due to the fame of the Complainant's marks, it is inconceivable that the Respondent was not aware of the Complainant or its activities when the disputed domain name was registered.

The Complainant further claims that preventing the Complainant from reflecting its mark in a corresponding domain name, and redirecting users intending to locate the Complainant to unrelated or competing websites serve to disrupt the Complainant's business, and that, owing to the fame of the Complainant, any use or lack of use of the disputed domain name by the Respondent would have this effect.

As to the use of the disputed domain name, the Complainant states that the Respondent's website currently do not display any content, but, given the fame of the Complainant's VODAFONE trademark, it is clear that the Respondent, in setting up the disputed domain name, intends to make use of the Complainant's famous mark VODAFONE to attract Internet users by creating a likelihood of confusion regarding source, sponsorship, affiliation, or endorsement of the corresponding website.

With specific reference to the Respondent's current passive holding of the disputed domain name, the Complainant asserts that the Complainant's mark has a strong reputation and that there was no evidence of any actual or contemplated good faith use.

The Complainant further underlines that even a minimal amount of searching on the Internet for VODAFONE prior to registering the domain would have revealed pages of results only relating to the Complainant and that the Respondent's bad faith intent is highlighted by the selection of the top-level suffix ".red" which corresponds to one of the Complainant's established trademarks.

The Complainant concludes that the Respondent is attempting to capitalize on the reputation of the Complainant and that the Respondent is holding the disputed domain name for some future use in a way which would be competitive with or otherwise detrimental to the Complainant.

B. Respondent

The Respondent accepts that VODAFONE is a well-known trademark, however disagrees that VODAFONE RED is a reputable or well-known trademark and states that it was not aware of the latter trademark at the time of the registration of the disputed domain name.

The Respondent questions the validity of the Complainant's Community Trademark No. 11138451 for VODAFONE RED and alleges that the Complainant does not hold a registered trademark for VODAFONE RED in Turkey.

The Respondent asserts that it is not using the disputed domain name for a commercial purpose and that it has never gained any material value or profit from the website to which the disputed domain name resolves.

The Respondent claims that the content of the website being built by the Respondent was solely aimed at criticizing the VODAFONE products and operations in Turkey due to a bad experience of the Respondent, and informs the Panel that the term "red" means "rejecting-refusing" in Turkish.

The Respondent also contends that it is making a legitimate noncommercial use of the disputed domain name, without intent for commercial gain to divert consumers or to tarnish the Complainant's trademarks.

With reference to the possible circumstances which could demonstrate the Respondent' bad faith, the Respondent states that it did not register the disputed domain for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant, or to a competitor of the Complainant in any way. The Complainant further asserts that it never gathered any material gain from owning the disputed domain name and the disputed domain name was never redirected to an active website.

The Respondent denies to be a competitor of the Complainant and claims that the disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website.

The Respondent also states that it has not registered any other domain name that was subject of a complaint related to the Complainant's or any other company's trademark, that it has not hidden its personal contact data, has not offered the disputed domain name for sale and has not registered additional domain names.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for VODAFONE in several countries, including United Kingdom, European Union as well as Turkey, where the Respondent is located.

According to a review of the trademark certificates submitted by the Complainant and the trademark details published on the online databases of the competent trademark offices, the Panel is satisfied that the trademark registrations on which the Complainant relies are valid and in force. Therefore, the Panel finds that the Complainant has established rights in the trademark VODAFONE.

Moreover, the Panel also finds that the Complainant has proven its ownership of the trademark VODAFONE RED, based on the Community Trademark No. 11138451 and the Turkish Trademark No. 2012/74069 whose details are mentioned above.

As stated in paragraph 1.1 of WIPO Overview 2.0, ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.

In addition, as stated in paragraph 1.2 of the WIPO Overview 2.0, the top-level suffix in the domain name would usually be disregarded under the confusing similarity test, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.

In the case at hand, the Panel is satisfied that the Complainant has proven the identity of the disputed domain name with its trademark VODAFONE, considering the top-level suffix ".red" as a mere technical requirement of registration. On the other hand, the Panel finds that the suffix "red" becomes relevant when comparing the disputed domain name and the Complainant's trademark VODAFONE RED, as the combination of the second level domain with the top-level suffix exactly correspond to this trademark.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

With respect to this requirement, the complainant is required to make a prima facie case that the respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to submit convincing elements to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

According to the documents and statements submitted by the parties, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name.

In addition, there is also no indication before the Panel that the Respondent, whose name is Orcun Ozyurt and has not used the disputed domain name in connection with an active website so far, might be commonly known by the disputed domain name.

The Panel also finds that the Respondent has not made any bona fide or fair use of the disputed domain name in connection with any products or services, since the Respondent has redirected the disputed domain name to a generic parked page advising that a website would be coming soon.

The Respondent claimed that it registered the disputed domain name for a website aimed at criticizing the VODAFONE products and operations in Turkey, relying on the meaning of the term "red" in Turkish, standing for "rejection-refusal".

The Panel finds such assertion to be unsatisfactory to demonstrate the Respondent's asserted legitimate noncommercial use, since it is unnecessary to use the Complainant's trademarks in the disputed domain name to achieve such objective and, furthermore, the Respondent has failed to provide any evidence constituting demonstrable preparation to use the Disputed Domain Name for such purposes. See, along these lines, HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Hashem Khatib, WIPO Case No. D2015-1338.

Moreover, this Panel cannot conceive any legitimate use of the disputed domain name, identical to the Complainant's trademark, by entities not authorized by the Complainant, and finds that the combination of the well-known trademark VODAFONE with the top-level suffix ".red" would likely induce users to believe that the disputed domain name and corresponding website be related to the Complainant and its trademarks.

See also WIPO Overview 2.0, paragraph 2.4: "The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner."

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided evidence of several trademark registrations for VODAFONE and VODAFONE RED, including in Turkey, where the Respondent is based. All of those registrations predate the registration date of the disputed domain name.

Moreover, VODAFONE is a coined word and, in light of the Complainant's extensive promotion, is a well-known trademark worldwide. As highlighted above, the 2014 BrandFinance Global 500 ranked VODAFONE as the 16th most valuable brand in the world. Furthermore, several prior UDRP decisions recognized the notoriety of the trademark (see, amongst others, Vodafone Group Plc v. Brendan Conlon, WIPO Case No. D2002-0822; Vodafone Group Public Limited Company v. Akio Nagata, WIPO Case No. D2005-0077; and in Vodafone Group, Plc v. Domain Privacy, WIPO Case No. D2007-1684.

In view of the above, the Panel finds that the Respondent was or should have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.

In addition, in the case at hand, the Respondent expressly stated that he was aware of the trademark VODAFONE when it registered the disputed domain name.

The Panel shares the view of a number of panel findings of "opportunistic bad faith" in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103; and DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868.

As to the use of the disputed domain name, the Panel notes that the Respondent has redirected it to a "coming soon" page and has failed to demonstrate any preparation to use the disputed domain name in connection with a legitimate purpose. Moreover, as stated above, and in accordance with the evidence provided by the parties in the present proceeding, the Panel does not envisage any use of the domain name, identical to the Complainant's well-known trademark, that would not be illegitimate, as Internet users could likely believe that the disputed domain name and correspondent website be operated by, or affiliated with, the Complainant. As stated, amongst others, in Missoni S.p.A. v. William Song, WIPO Case No. D2012-0208 (where the domain name at issue resolved to a landing page), "the passive holding of a domain name which has no other legitimate use and clearly references the Complainant's trademark may constitute registration and use in bad faith" (see also the leading case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

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

Luca Barbero
Sole Panelist
Date: October 26, 2015