WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC v. Highland Wi-Fi Ltd.
Case No. D2014-1375
1. The Parties
The Complainant is Vodafone Group PLC of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Olswang LLP, United Kingdom.
The Respondent is Highland Wi-Fi Ltd. of Isle of Skye, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <vodafonewifi.com> 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 13, 2014. On August 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 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 August 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 15, 2014.
The Center appointed Adam Samuel as the sole panelist in this matter on September 24, 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 England, United Kingdom. It conducts its business through a number of domain names, notably <vodafone.com>, registered on December 4, 1997. It is the owner of a number of United Kingdom trademark registrations for the name "vodafone", including number 1223053, registered on July 17, 1990. The disputed domain name was registered on April 6, 2012.
5. Parties' Contentions
These are the parties' contentions with which the Panel does not necessarily agree.
The Complainant's trademark, VODAFONE, is known worldwide. It was coined in 1984 to encompass the ideas of "voice", "data" and "phone". It has no independent meaning. The mere addition of a generic Top-Level Domain ("gTLD") to a disputed domain name does not avoid confusing similarity. The gTLD ".com" is without legal significance since the use of a gTLD or country code Top-Level Domain ("ccTLD") is technically required to operate the domain name. The Complainant's trademark VODAFONE is wholly contained within the disputed domain name. VODAFONE is the dominant first element of the disputed domain name and the element "wifi" is descriptive. The word "wifi" has a clear meaning in English. It denotes facilities which allow electronic devices to connect to the Internet or to communicate with one another wirelessly within a particular area. The use of "wifi" in combination with the Complainant's famous trademark VODAFONE suggests that wireless Internet or communication services are being offered or authorised by the Complainant.
The Respondent has no connection with or affiliation to the Complainant and has not received any express or implied licence or authorisation to use the VODAFONE trademark. The Respondent is not known by the name "Vodafone"; nor does it conduct any business under the "vodafone" name. The Respondent does not hold any trademark registrations for the name "vodafone". The Complainant's registered trademark rights in that name predate the date of the disputed domain name's registration. The Respondent has not made any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor has it made a legitimate noncommercial or fair use of the disputed domain name.
Given the fame of the Complainant's trademark VODAFONE it is inconceivable that the Respondent was unaware of the Complainant or its activities when the disputed domain name was registered. Bad faith can be found where a respondent has engaged in mere passive use of (or has not used) a domain name. The registration of the disputed domain name, being highly similar to the Complainant's VODAFONE mark serves to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent also holds similar registrations for the domain names <bestwesternwifi.com>, <crowneplazawifi.com>, <holidayinnexpresswifi.com> and <premierinnwifi.com> which incorporate third-party well-known trademarks. This is evidence of a pattern of engaging in conduct designed to prevent rights holders from reflecting their marks in corresponding domain names. The disputed domain name funnels customer traffic away from the Complainant's websites. It must have been clear to the Respondent when it registered disputed domain name that the registration and use of the disputed domain name would unfairly disrupt the business of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's well-known trademark which is a coined word with no independent meaning, the generic word "wifi" which denotes wireless communication, an activity in which the Complainant is engaged using the trademark concerned and the gTLD ".com".
The addition of a generic word and the gTLD ".com" after the Complainant's distinctive trademark does not prevent the disputed domain name from being confusingly similar to the Complainant's trademark. This is particularly the case here where the generic word describes the business carried on using the Complainant's trademark and that mark is a made-up word with no independent meaning.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark VODAFONE.
B. Rights or Legitimate Interests
The Respondent is not called "vodafonewifi" or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any Response from the Respondent on this point, notably one contradicting the Complainant's claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trademark is highly distinctive, having no ordinary word meaning. It is highly likely that the Respondent registered the disputed domain name knowing of the Complainant's mark since it consists of the Complainant's mark VODAFONE and a form of activity that the Complainant carries on using it. To the Panel, it is impossible, at least without a Response to the Complaint, to identify the reason why the Respondent registered the disputed domain name other than to attract business or Internet users to its website who were looking for a website connected to the Complainant's trademark or business.
The disputed domain name does not resolve to an active website. In the Panel's view, the Respondent's motive in registering and using the disputed domain name seems to have been to disrupt the Complainant's relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent's out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent's motivation may have been more than one of these and perhaps all three.
It is unnecessary, for the Panel, in the circumstances to reach a conclusion about the other points made in the Complaint.
For the above reasons, the Panel concludes that the disputed domain name was 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 name <vodafonewifi.com> be transferred to the Complainant.
Date: September 29, 2014