WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Wireless Services Inc v. Plamen Marinov and Dencho Hristev
Case No. D2003-0427
1. The Parties
The Complainant is AT&T Wireless Services Inc. of Redmond, Washington, United States of America. The Complainant is represented by Sidley Austin Brown & Wood LLP, United States of America.
The Respondents are Plamen Marinov and Dencho Hristev of Sofia, Bulgaria.
2. The Domain Names and Registrar
The five domain names in dispute are: <mmode.biz>, <mmode.org>, <m-mode.biz>, <m-mode.info>, <m-mode.org>.
The domain names <mmode.biz> <m-mode.biz> <mmode.org> and <m-mode.info> are registered through eName Co. in the name of the Respondent Plamen Marinov with the second Respondent Dencho Hristev as the administrative contact.
The domain name <m-mode.org> is registered with Go Daddy Software Inc. in the name of the second Respondent Dencho Hristev. According to the Complainant, it appears that the registrar of the domain name <mmode.org> may have been moved from Go Daddy Software, Inc. to eName Co.com during the final drafting of the Complaint.
Details of the registrars and registration of the domain names are set out in Annexes 3 to 8 of the Complaint.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on June 4, 2003, and in hard copy on June 6, 2003. On June 5, 2003, acknowledgement of receipt of the Complaint was given to the Complainant. On June 5, 2003, the Center requested registrar verification for the domain names in dispute. A response was received from godaddy.com on June 5, 2003, confirming that <mmode.org> was registered with Go Daddy Software. On June 6, 2003, the registrar eName Co.com responded confirming that the domain names <mmode.biz>, <mmode.org>, <m-mode.biz> and <m-mode.info> were registered with eName Co.com.
On June 12, 2003, notification of the Complaint was given to the Respondents. The Respondents filed a Response by email on July 1, 2003, and by hard copy on July 7, 2003. An Administrative Panel consisting of a sole panelist, Mr. Clive Duncan Thorne, was appointed on July 16, 2003.
On July 21, 2003, a "supplemental request for permission to submit additional clarifying information in response to the Respondents' response" was filed by the Complainant pursuant to Rule 12 of the UDRP Rules. The Panel has considered this request and is prepared to admit the additional clarifying information. It has reached this conclusion because the material submitted is in the nature of reply material in that it only clarifies points made in the Response. The Panel does not consider that the additional information raises any fresh issues which should be put to the Respondents.
The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules. The Panel have submitted the necessary Statement of Acceptance and Declaration of Impartiality as required under the Rules. The Panel understands that the necessary fees have been paid to the Center. The language of the administrative procedure is English.
4. Factual Background
The Complainant is a United States Corporation incorporated under the laws of the State of Delaware. It is the largest independently traded wireless carrier in the United States. It operates one of the largest digital wireless networks in North America with approximately 20 million subscribers and revenues exceeding US$13 billion annually. It is delivering the next generation of wireless products and services, including voice, data, Internet and text services. Until July 9, 2001, it was part of AT&T Corporation which has sold telecommunications goods and services for well over a century across the world.
The Complainant draws attention to the fact that it has invested tens of millions of dollars in a major media campaign including advertisements to generate interest in the newly-coined term "mLife". These culminated in a 2002 superbowl advertisement revealing that mLife was a new marketing theme from AT&T Wireless Services.
On December 28, 2001, the Complainant applied for trademark registration for the mark MMODE through a wholly owned subsidiary company which it had established called Alphie, Inc. Alphie, Inc. was subsequently "merged" entirely into the Complainant on June 20, 2002, and all of Alphie's rights in the MMODE marks were assigned to the Complainant. Evidence of this is set out at Annexes 13 and 14 to the Complaint. The Panel finds that all the trademark rights of Alphie Inc. were assigned to the Complainant as a result of this merger.
On April 2, 2002, the Complainant introduced " MMODE " in limited markets and subsequently on April 16, 2002, launched a major advertising campaign for the " MMODE " mark and services as a part of its overall "mLife" advertising theme. " MMODE " is a term currently coined by the Complainant to refer to its wireless GPRS Data Services delivered over cellular phones and similar devices. This was the subject of a press release which is exhibited at Annex 15. In practical terms mMode provides an array of data services that allow users to surf the Internet, play games, look up sport scores and find restaurants via their mobile phones and other devices. These services are advertised extensively by the Complainant using the mMode logo in various forms of media. The on-line promotion of the logo can be seen at Annexes 16 and 17 to the Complaint. The Complainant also publishes an electronic mMode magazine at "www.attwireless.com/mModemagazine". A printout of this is shown at Annex 18.
The Complainant asserts that it is the common law owner of the MMODE trademark. It has also applied to register MMODE marks in numerous countries throughout the world. At Annex 21, copies of trademark applications filed for the mark MMODE in the United States are exhibited. At Annex 22, there is a copy of an application for registration of the mark MMODE as a European community trademark (number 2756088) filed on July 12, 2002.
The Complainant asserts that it has common law rights in the design and colouration of the MMODE mark and that the distinctive and widespread use of this mark together with intense advertising and promotion has created strong common law rights in the MMODE mark.
The Panel also notes the decision of another panel in AT&T Wireless Services Inc v GMS Web Media (WIPO Case No.D2003-0119) in which the Panel found that the Complainant "has established its rights in the MMODE mark through the trademark application/registrations above and through the extensive use of the MMODE mark in its business, whether through advertising or by providing the MMODE service to its users". On the basis of the evidence adduced by the Complainant, this Panel reaches a similar conclusion and finds that the Complainant has achieved common law trademark rights in the mark MMODE.
B. The Respondent
In their Response the Respondents say nothing with regard to their trading status. They assert though that they have applications for the registration of the trademark "mMode" and "M-Mode" in the Bulgarian patent office. These applications are exhibited as Annexes 1 and 2 to the Response. The exhibits are both written in Bulgarian so the panel is not in a position to review these. It does, however, accept, for the purpose of the decision that these applications have been made as stated by the Respondents.
5. Parties' Contentions
The Complainant seeks the transfer of the domain names in dispute from the Respondents in accordance with the Policy.
The Complainant contends that the domain names are confusingly similar to the Complainant's trademark MMODE, that the Respondents have no rights or legitimate interests in the domain names and that they are being registered and used in bad faith.
The Respondents resist the transfer of the domain names on the basis that the Complainant has no legal rights in the trademarks MMODE and M-MODE. They deny that the registration of the domain names is a violation of the Complainant's rights because as of the date of registration of the Bulgarian registrations referred to above on April 30, 2003, the Complainant did not have registered rights. The Respondents deny that they have registered or used the domain names in bad faith.
6. Discussion and findings
In order to succeed in its Complaint, the Complainant has to show:
(a) that the domain names are identical or confusingly similar to trademarks and service marks in which the Complainant has rights;
(b) that the Respondents have no rights or legitimate interests in respect of the domain names; and
(c) that the domain names have been registered and are being used in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the five domain names in dispute are "identical or confusingly similar to a trademark or service mark in which the Complainant has rights".
The Panel has already found on the evidence adduced by the Complainant that it has established trademark rights in the MMODE mark through the trademark applications referred to above and also through the extensive use of the MMODE mark in its business. The Panel's findings in this respect are consistent with the earlier Panel decision (WIPO Case No. D2003-0119) referred to above and on which reliance is placed by the Complainant.
The Panel also notes the contention advanced by the Respondents that the Complainant submitted US applications for registration of the mark on August 22, 2002. This appears to be a misunderstanding of the fact that the Complainant's marks were originally applied for by Alphie Inc. (a wholly owned subsidiary of the Complainant) and that there was a merger/assignment of rights to the Complainant on July 10, 2002. The Panel finds that the Respondents' arguments to the effect that they have rights pre-dating the Complainant's rights is unjustified by the evidence. For the reasons set out above, the Panel finds that the Complainant has rights based upon wide use which pre-date the Respondents' applications in Bulgaria on April 30, 2003. It follows that the Panel does not accept the Respondents' assertion that the Complainant has no trademark rights in MMODE.
All five of the domain names in dispute incorporate the letter "m" with the word "Mode". The Panel finds that there is confusing similarity to the mark " MMODE " in which the Complainant has trademark rights.
B. Rights or legitimate interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondents have no rights or legitimate interests in the "domain names".
Paragraph 4(c) of the Policy set out three examples of how, inter alia, the Respondents may show their rights or legitimate interests in the domain names:-
(i) before any notice to you of the dispute, your use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual business or other organisation) have been known by the domain name, even if you have been known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark issue.
The Complainant draws attention to the fact that the mark " MMODE " is "entirely arbitrary and fanciful". The term has only been used as a result of the very large investment in the mark by the Complainant. The Complainant points out that there is no evidence of a legitimate interest in the mark " MMODE " or the domain names by the Respondents. They are not the Complainant's licensee nor are the Respondents authorised or sponsored to use the marks. There is no evidence that the Respondents have been commonly known by the domain names.
The Respondents rely upon alleged rights and priority for the trademark " MMODE " and priority for the trademark MMODE arising under the Paris convention as a result of the Bulgarian trademark applications. They also assert that they have bona fide use through developing and housing an " MMODE " portal.
In the Panel's view the arguments of the Respondents are based upon a misunderstanding of the priority provisions of the Paris convention. This point is dealt with in the additional clarifying information filed by the Complainant. The purpose of Article 4 of the Paris Convention is to provide a 6 month period of filing priority in any other signatory country. It does not mean that the Respondents could then file in any other convention country and claim prior use.
It follows that the Panel finds that the Respondents have no rights or legitimate interests in the domain names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the Respondents registered and used the domain names in bad faith.
There are set out at paragraph 4(b) of the Policy examples of how, inter alia, a Complainant may demonstrate bad faith on the part of a Respondent. Of particular relevance is paragraph 4(b)(i) which provides:-
"(i) Circumstances indicating that you have registered or you have 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 that Complainant, for valuable consideration in excess of your documented out of pocket costs directly relating to the domain name;"
The Complainant submits that the Respondents' bad faith "is most obviously demonstrated by their express offers to sell the mMode domain names to AT&T Wireless for a staggering sum". The Panel has looked at the exchange of correspondence and emails surrounding the offers by the Respondents and in particular the email of March 7, 2003, from the two Respondents. The sums sought e.g. US$1,200,000 for <mmode.biz> are way in excess of "out of pocket costs". The Panel finds that the conduct of the Respondents falls fairly and squarely within the concept of bad faith envisaged by paragraph 4(b)(i) of the Policy. Accordingly, it finds for the Complainant in respect of this element. The Panel finds that the Respondents have registered and used the domain names in bad faith under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the five domain names:
be transferred to the Complainant.
Clive Duncan Thorne
Dated: July 30, 2003