WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC v. Liron Mizrahi
Case No. D2014-0358
1. The Parties
The Complainant is Vodafone Group PLC of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Olswang LLP, UK.
The Respondent is Liron Mizrahi of Israel.
2. The Domain Names and Registrar
The disputed domain names <bankofvodafone.com>, <bankvodafone.com> and <vodafonebank.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 10, 2014, 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 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 on March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Response was filed with the Center on March 15, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 14, 2014. 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 a mobile communications network operator with its headquarters in the UK.
The brand name "Vodafone" was first announced to the media in March 1984. In 1985, the Complainant commenced providing its cellular telephone service in the UK under that brand name. Since then, the Complainant's business has expanded rapidly. It is one of the world's largest mobile communications companies by revenue, operating across the globe, providing a wide range of communications services. The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the NASDAQ. As at February 10, 2014, the Complainant had a market capitalisation of approximately GBP 108.1 billion. For the financial year ended March 31, 2013, the Complainant generated revenue of GBP 44.4 billion. It has over 404 million mobile customers, equity interest in over 30 countries across six continents and more than 40 partner networks worldwide.
The 2014 BrandFinance Global 500 ranked "Vodafone" as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.
According to the Complaint, the currently holds 1418 registered and pending trademarks for and including the word "Vodafone", 9 of which are in the United States of America ("US") (where the Registrar has its headquarters), 7 are in Israel (where the Respondent is domiciled), 43 are in the UK (where the Complainant is domiciled), and 52 are Community Trade Mark ("CTM") registrations which have effect in the European Community. Evidence of the current registration of two US registered trademarks (in, respectively, International Class 9 and International Class 38), two Israeli registered trademarks (also registered in those two International Classes), four UK registered trademarks (registered in, respectively, International Classes 9, 38 and 42) and two Community Trademarks (registered in classes 9, 14, 16, 18, 21, 25, 28, 35, 36, 37, 38, 39, 41 and 42) has been submitted in support. Most of these trademarks were registered between 1990 and 2002. The two Israeli trademarks were registered on September 6, 2010. The second US trademark was registered on July 5, 2011.
The disputed domain names were registered by the Respondent on December 23, 2010. As at March 5, 2014, each of the disputed domain names resolved to a "parking" page advertising the services of the Registrar and including a number of "sponsored" listings. These sponsored listings include links to providers of broadband services, mobile or cellular services, bank accounts, money transfer services and others.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trade mark.
The Complainant has proven ownership of registered trademarks for VODAFONE in at least the UK, the European Community, the US and Israel.
The Respondent also admits that the Complainant's VODAFONE trademark is very well known.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Each of the disputed domain names differs from the Complainant's trademark only by the addition of the word "bank" as a prefix or suffix and, in the case of the third disputed domain name, "of" and the generic Top-Level Domain indicator, ".com".
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, amongst many others.
The words "bank" and "bank of" are ordinary and descriptive English words. The dominant part of each disputed domain name is "Vodafone". This element is a coined term and, as the Respondent admits, highly distinctive of the Complainant. If nothing else, the inclusion of the term with the additions of "bank" or "bank of" suggests that banking services are being offered by or with the endorsement of the Complainant.
Accordingly, the Panel finds that the Complainant has established that each of the disputed domain names is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant states that the Respondent has no connection or affiliation with the Complainant and has no licence or authorization from it to use its trademark. The Complainant also points out that the disputed domain names are not derived from the Respondent's own name. The Complainant has not identified any business that the Respondent is operating under the name. Nor, so far as the Complainant can establish, does the Respondent have any registered trademarks for VODAFONE or any of the disputed domain names. Finally, the Complainant points out that it acquired its trademark rights well before the Respondent registered the disputed domain names.
These matters, bearing in mind the distinctiveness and renown of the Complainant's trademark, are more than sufficient to establish a prima facie case under this head of the Policy.
The Respondent does not contest these matters. Rather, the Respondent contends that he (or she) registered the disputed domain names to provide a blog for people who have complaints about the Complainant. The use of the word "bank" in such a domain name appears to be supported on the basis that the complaints involve the Complainant having easy access to the customer's bank accounts or debiting money from their accounts in some disputed circumstances. The Respondent also contends that the Complainant does not operate as a bank and so can have no objection to the Respondent's use.
It remains the case that there are divergent views among Panels about the legitimacy of using a domain name confusingly similar to a business' trademark to criticize that business: WIPO Overview 2.0, paragraph 2.4. Nonetheless paragraph 4(c)(iii) plainly contemplates that some use of a confusingly similar domain name may be justified for the purposes and in the conditions there specified.
Typically, however, there must be use for the relevant purpose or some credible explanation why use has not commenced. See e.g. Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399 and more generally MLP Finanzdienstleistungen AG v. WhoisGuard Protected WIPO Case No. D2008-0987 and Pacific-10 Conference v. Kevin Lee WIPO Case No. D2011-0200.
The Respondent states that the blog he (or she) says ran, or runs, at the disputed domain names has in fact helped many people. The Respondent has not submitted, however, evidence of the website(s) in question. On the contrary, the Complaint includes the printouts showing the home page for each of the disputed domain name is the Registrar's "parking" page which includes what are no doubt pay-per-click links to, amongst other things, competing telecommunications providers and money transfer services. The Respondent has not sought to explain why the disputed domain names resolve to these "parking" pages rather than the asserted blog.
In these circumstances, the Respondent's claim to rights or legitimate interests cannot be accepted. Accordingly, the Respondent has not rebutted the prima facie case. The Panel finds therefore that the Complainant has established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
Paragraph 4(b) of the Policy provides that:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or the Respondent has 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 related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 your web site or location.
The instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v. Tropic Web WIPO Case No. D2000-0624.
The confusing similarity of the disputed domain names to the Complainant's trademark misrepresents, or is likely to misrepresent, an association between the Complainant and the holder of the disputed domain names.
The Respondent was plainly aware of the Complainant's trademark before he or she registered the disputed domain names. Moreover, the Respondent positively advanced a justification for registering the disputed domain name which, for the reasons set out in section 5B above, has been rejected on the record in this case. Those circumstances lead to the strong inference that the Respondent registered the disputed domain names to take advantage of their trademark significance. The use that is being made of the disputed domain names as "parking" pages with pay-per-click links takes further advantage of that trademark significance.
Accordingly, the Panel finds that each of the disputed domain names has been registered and is being used in bad faith.
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 names <bankofvodafone.com>, <bankvodafone.com> and <vodafonebank.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: April 26, 2014