WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC, Vodacom (Pty) Limited, Vodacom Group Limited v. Vodacom Ltd. / David Howell
Case No. D2014-0710
1. The Parties
The Complainants are Vodafone Group PLC of Newbury, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Vodacom (Pty) Limited of Midrand, South Africa and Vodacom Group Limited of Midrand, South Africa, represented by Olswang LLP, United Kingdom.
The Respondent is Vodacom Ltd. of Burgas, Bulgaria / David Howell of Poulton le Flyde, Lancaster, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <vodacom-europe.com> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2014. On May 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 9, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 9, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2014. Between May 13 and June 4, 2014, the Respondent sent several email communications to the Center, but the Respondent did not submit a formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on June 10, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on June 23, 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. Due to exceptional circumstances, it has been necessary for the Panel to extend the decision due date.
4. Factual Background
The Complainant Vodafone Group PLC (“Vodafone”) is one of the world’s largest mobile communications companies. Vodafone and its subsidiaries have more than 400 million mobile customers spread through six continents. The Complainants Vodacom (Pty) Limited and Vodacom Group Limited are Vodafone subsidiaries. Vodacom Group Limited is one of the largest cellular provider sub-Saharan Africa, serving more than 50 million customers.
The Complainants own trademark registrations for VODAFONE in the United Kingdom, and Community Trade Mark (CTM) registrations for VODAFONE, which includes Bulgaria. The Complainants own trademark registrations for VODACOM in the United Kingdom and in various countries in Africa. The Complainant’s first United Kingdom registrations for VODAFONE and VODACOM were issued in 1990. Prior UDRP decisions panels have found the Complainants’ VODAFONE mark to be a widely recognized, well-known and distinctive mark. See VodafoneGroup Public Limited Company v. Domain Privacy; WIPO Case No. D2007-1684; Vodafone Group Public Limited Company v. Akio Nagata, WIPO Case No. D2005-0077; Vodafone Group PLC v. Brendan Conlon, WIPO Case No. D2002-0822.
The Complaint names four (4) Respondents: Vodacom Ltd.; David Howell (“Howell”); Privacy Protection Service INC d/b/a Privacy Protect.org (“Privacy Protect.org”); and A. Lifrico (“Lifrico”). Vodacom Ltd. is the current registrant of the disputed domain name according to the Registrar’s WhoIs database. Howell is the apparent sole owner of Vodacom Ltd., and Privacy Protect.org is a privacy protection service. Lifrico is currently the technical contact for the disputed domain name, and was briefly identified as the WhoIs registrant for the disputed domain name after the privacy shield was lifted. Lifrico maintains he registered the domain name in his capacity as an agent for Vodacom Ltd.
The disputed domain name was registered on October 14, 2013. The disputed domain name resolves to a commercial website operated by the Vodacom Ltd., offering voice over IP (“VoIP”) services. In communications taking place following the filing of the Complaint, Howell proposed to transfer the disputed domain name to the Complainants for the sum of GBP 20,000. The Complainants rejected this offer. The Complainants request that the disputed domain name be transferred to the Complainant Vodafone Group PLC.
5. Parties’ Contentions
The Complainants maintain that the disputed domain name is confusingly similar to both their VODAFONE and VODACOM marks, and argue that the inclusion of the geographic term “Europe” in the disputed domain name does not overcome the confusing similarity, given that “VODA” is the dominant element. The Complainants explain that VODAFONE is an entirely coined word created to encompass “voice”, “data”, and “phone”, and that the brand has expanded rapidly across the globe since the Complainants launched their first cellular telephone networks in the United Kingdom in 1985. The Complainants further assert that the VODAFONE mark and related brands, including VODACOM, enjoy a substantial reputation globally. The Complainants submit that the 2014 BrandFinance Global 500 ranked VODAFONE as the 16th most valuable global brand and the 5th most valuable global telecommunications brand. According to the Complainant’s, the coined nature of the VODACOM mark and extensive use place it on equal footing.
The Complainants submit that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has no connection or affiliation with the Complainants, has not been authorized to use the Complainants’ marks, and does not own trademark registrations for the word marks VODAFONE or VODACOM in Bulgaria or anywhere else in the world. The Complainants maintain that the Respondent’s use of the disputed domain name to attract Internet users to a website offering VoIP services under the “Vodacom” sign does not constitute a bona fide offering of goods or services under the Policy. The Complainants assert that they are well known for enabling and offering identical services under their VODAFONE and VODACOM marks, and that the disputed domain name is not one the Respondent legitimately would have chosen for such goods and services unless seeking to create a false impression of association with the Complainants.
In view of the foregoing, the Complainants contend that the Respondent registered and is using the disputed domain name in bad faith to exploit and profit from the Complainants’ well-known VODAFONE and VODACOM marks. The Complainants assert that it is inconceivable that the Respondent was unaware of the Complainants and their famous marks when registering the disputed domain name. The Complainants submit the Respondent is using the disputed domain name to create a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, or affiliation of the Respondent’s website. The Complainant’s further contend that the Respondent registered the disputed domain name to disrupt the Complainants’ business.
The Respondent did not provide a formal reply to the Complaint, but the record does reflect electronic communications between Howell and the Complainant’s attorneys, and from Lifrico, who maintains that he merely acted as an agent for the Respondent in registering the disputed domain name. Howell apparently is the sole owner of Vodacom Ltd. (referring to it as “my company” in email exchanges). Howell corroborated Lifrico’s claim not to be the owner of the disputed domain name. Howell also made an offer to the Complainant to transfer the disputed domain name in consideration of payment of GBP 20,000, representing that the Respondent had rights in “Vodacom” under Bulgarian law, and that the Complainant could not preclude the Respondent from using the disputed domain name with VoIP services. Howell further commented that he intends to launch further VoIP services in other European countries under the “Vodacom” name.
6. Preliminary Issues
A. Multiple Complainants
Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985. A number of UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against a respondent, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 and panel decisions cited therein.
The Complainants are affiliated companies, and the Complaint clearly sets forth a common grievance against the Respondent affecting the Complainants’ rights and interests in a similar fashion. In such circumstances the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single Complaint.
B. Respondent Identity
Multiple domain name registrants controlled by a single person or entity have been treated as a single respondent for purposes of the Policy and Rules. Although this situation has most often arisen in cases involving consolidation of multiple domain names, see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, the Panel sees no reason why this analysis may not be appropriate where multiple respondents have been identified in a complaint relating to a single domain name.
Based on the uncontroverted facts and circumstances in the record before this Panel, the disputed domain name at all material times has been used with Vodacom Ltd.’s commercial website. It is further evident from the record that Howell has exercised substantial control over Vodacom Ltd., and is likely the sole owner of this entity. The facts and circumstances of this case thus support the treatment of Vodacom Ltd. and Howell as a single respondent for purposes of this proceeding. The record provides little reason for the Panel to doubt Lifrico’s explanation regarding his relationship with the Respondent, and the Panel does not consider the inclusion of Privacy Protect.org as a party to be indicated in such circumstances.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ VODAFONE and VODACOM mark, in which the Complainants have established rights through registration and use. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainants’ VODACOM mark in its entirety. As noted earlier, UDRP panels have held that VODAFONE is entitled to recognition as a well-known mark, and the record before this Panel does not suggest otherwise. The Panel considers the inclusion of the geographic term “Europe” in the disputed domain name insufficient to distinguish it from the Complainants’ marks.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainants’ marks, both of which are coined terms and distinctive. It is undisputed that the Respondent has not been authorized to use the Complainants’ marks. The Respondent nevertheless has registered and is using the disputed domain name in connection with an offering of VoIP services, in competition with the mobile communications services of the Complainants.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted earlier, the Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainants and the Complainants’ marks when registering the disputed domain name. In the facts and circumstances of this case, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainants’ distinctive and widely recognized marks through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name would be linked to the Complainants’ website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainants. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
In light of the foregoing, the record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Rather, the record reflects the Respondent’s appropriation of the Complainants’ marks and the use of the disputed domain name to exploit and profit from the Complainants’ rights. Such use is not a bona fide use. Nor can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The Respondent has not been authorized to use the Complainants’ marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy despite the fact that the Respondent was able to register Vodacom Ltd. as a corporate name in Bulgaria. Indeed the registration of Vodacom Ltd. as a corporate name in Bulgaria by the Respondent appears to be a mere pretext to try to legitimize ownership of the disputed domain name. In sum, and as discussed further in the heading below, there is nothing in the record before the Panel that credibly supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent would have been aware of the Complainants and the Complainants’ marks when registering the disputed domain name. The Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainants’ trademark rights through the creation of Internet user confusion.
That the Respondent was able to register Vodacom Ltd. as a corporate name in Bulgaria has no bearing on the Respondent’s bad faith registration and use of <vodacom-europe.com> under the Policy for the reasons explained above. The record reflects that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ marks as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and as specifically requested by the Complainants, the Panel orders that the disputed domain name <vodacom-europe.com> be transferred to the Complainant Vodafone Group PLC.
William R. Towns
Date: July 15, 2014