WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group Plc v. Vodafoneco Vodafoneco
Case No. D2016-0133
1. The Parties
Complainant is Vodafone Group Plc of Newbury, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Boult Wade Tennant, United Kingdom.
Respondent is Vodafoneco Vodafoneco of Doha, Qatar.
2. The Domain Name and Registrar
The disputed domain name <vodafoneco.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2016. On January 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on January 25, 2016.
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 Respondent of the Complaint, and the proceedings commenced on January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 16, 2016.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 22, 2016. 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
Complainant, Vodafone Group Plc, is one of the world’s largest mobile communications companies, with revenue of GPB 43.6 billion for Fiscal Year 2014, according to the company’s annual report. Shares of the company are traded on the London stock exchange as well as on NASDAQ. Complainant created and began using the mark VODAFONE in 1984. Complainant owns trademark registrations for the VODAFONE mark around the world, as well as VODAFONE plus other terms including United Kingdom Registration No. 1215879 for VODAFONE (registered 1998) as well as Community Trade Mark Registration No. 134890 for VODAFONE (Registered 1996), and in Qatar where Respondent lists its address of record, Registration No. 56593 for VODAFONE 360 (registered 2011); Registration No. 50318 for VODAFONE WORLD (registered 2010); and Registration Nos. 69674 and 69676 for VODAFONE DISCOVER (registered 2014), among others.
Complainant owns the registrations for over 200 domain names including the mark VODAFONE with Top-Level Domains as well as over 400 others including the mark VODAFONE with other terms. Some examples are <vodafone.com> (registered 1997); <vodafone.org> (registered 2002); <vodafone.info> (registered 2001); <vodafonebusiness.com> (registered 2003); and <vodafone.co.uk> (registered “before August 1996”). Vodafone has been ranked among the top brands in the world, including being ranked no.16 in the 2014 BrandFinance 500 ranking of The World’s Most Valuable Brands, over such well-known brands as McDonald’s, Walt Disney, and American Express. Due to its extensive global use and recognition, several prior UDRP panels have found Complainant’s VODAFONE mark to be “one of the most recognized brands in the world”. See Vodafone Group Plc v. TurnCommerce, Inc. DBA NameBright.com / Zhenhua Bin, WIPO Case No. D2014-0504 (transferring <vodafonewallet.com>); and “widely known worldwide”; see Vodafone Group, Plc v. Domain Privacy, WIPO Case No. D2007-1684 (transferring <vodafoneracing.com>); as well as a “famous mark” see Vodafone Group PLC v. Bora Karakol, WIPO Case No. D2014-0326 (transferring <vodafonearena.com>).
Respondent registered the disputed domain name, <vodafoneco.com>, on July 25, 2015. The disputed domain name redirects to a website of Complainant, which advertises goods and services in Qatar, “www.vodafone.qa”. Respondent has no affiliation with Complainant, nor any license to use its trademarks.
5. Parties’ Contentions
Complainant, Vodafone Group Plc, contends that (i) <vodafoneco.com> is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it is the owner of the world famous VODAFONE trademark, and that Respondent has incorporated its mark in the disputed domain name and merely added the descriptive term “co”, which is an abbreviation for “company”. Complainant contends that its VODAFONE mark is well-known around the world, including in Qatar, where Respondent lists its address of record, and that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Identical or Confusingly Similar
This Panel must first determine whether <vodafoneco.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s registered mark, VODAFONE, and combines it with the term “co”, which is an abbreviation for “company”, which is descriptive of a corporate entity, and therefore a place where web users would expect to find information about Complainant, the Vodafone “company”, or its goods and services.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interests” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location”. Respondent is using the disputed domain name to resolve to Complainant’s own website. Furthermore, passive holding does not as such prevent a finding of bad faith use, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2. Rather, the Panel must look at the totality of the circumstances. Complainant’s VODAFONE mark is internationally well-known. Given the fame of the VODAFONE mark, and that Respondent is redirecting to Complainant’s own website, it is clear that Respondent must be aware of Complainant’s marks. See Vodafone Group, PLC v. Liron Mizrahi, WIPO Case No. D2014-0358 (transferring <bankofvodafone.com>, <bankvodafone.com>, and <vodafonebank.com>) (finding bad faith where “Respondent was plainly aware of Complainant’s trademark before he or she registered the disputed domain name”).
Considering all of the circumstances, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <vodafoneco.com> be transferred to Complainant.
Date: March 5, 2016