WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group Plc v. Maxim I Fedoseev
Case No. D2016-0479
1. The Parties
The Complainant is Vodafone Group Plc. of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Boult Wade Tennant, United Kingdom.
The Respondent is Maxim I Fedoseev of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <vodafone-database.net> is registered with Regional Network Information Center, JSC dba RU-CENTER-MSK (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2016. On March 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2016, 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, further informing the Center that the language of the registration agreement for the disputed domain name was Russian. On March 14, 2016 the Center sent the the language of the proceedings document and invited the Complainant to state its position on this issue by March 17, 2016, and the Respondent – by March 19, 2016. On March 14, 2016, the Complainant filed a statement with which it reiterated its request the proceeding to be held in the English language. The Respondent did not state its position within the deadline fixed by the Center.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 25, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute, pointing out that the website at the disputed domain name (including its sections for countries other than the United Kingdom) is in English and is directed at English language speaking consumers. According to the Complainant, this shows that the Respondent understands English and is able to communicate in this language. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, and the Respondent has not submitted any objection to the Complainants' request that the proceeding be held in English. The Center has sent all its communications to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage, particularly considering that, as communicated to the Respondent in Russian, a Russian language Response would have been considered. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English language.
4. Factual Background
The Complainant is a mobile communications network operator with its headquarters in the United Kingdom. It is one of the world's largest mobile communications companies by revenue, operating across the globe through numerous subsidiaries and providing a wide range of communications services. As at January 28, 2015, the Complainant has a market capitalization of approximately GBP 62.79 billion. For the financial year ended March 31, 2014, the Complainant generated revenue of GBP 43.6 billion. The Complainant has over 404 million mobile customers, equity interest in over 30 countries across six continents, and more than 40 partner networks.
The brand name VODAFONE was created to encompass "voice", "data" and "phone". It was first announced to the media by the Complainant on March 22, 1984. In 1985, the Complainant launched one of the first cellular telephone networks in the United Kingdom tinder the same name. The 2014 Brand Finance Global 500 ranked VODAFONE as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.
The Complainant has numerous registrations of the trademark VODAFONE (the "VODAFONE trademark"), including the following:
- The word trademark VODAFONE with registration No. UK00001215879, registered on October 14, 1988 in the United Kingdom for goods in International Class 9;
- The word trademark VODAFONE with registration No. UK00002109387, registered on January 2, 1998 in the United Kingdom for services in International Class 42;
- The word trademark VODAFONE with registration No. UK00001291652, registered on November 8, 1991 in the United Kingdom for services in International Class 38;
- The EU word trademark VODAFONE with registration No. 000134890, registered on April 16, 1998 for goods and services in International Classes 9, 36, 37 and 38;
- The EU word trademark VODAFONE with registration No. 002966018, registered on November 16, 2005 for goods and services in International Classes 9, 14, 16, 18, 21, 25, 28, 35, 36, 38, 39, 41 and 42;
- The word trademark VODAFONE with registration No. 218657, registered on August 7, 2002 in the Russian Federation for goods and services in International Classes 9, 11, 18, 38 and 42; and
- The word trademark VODAFONE with registration No. 320582, registered on February 7, 2007 in the Russian Federation for goods and services in International Classes 9, 16, 36, 38 and 42.
The Complainant is the registrant of the domain names <vodafone.com>, registered on December 4, 1997, <vodafone.org>, registered on January 15, 2002, and <vodafone.net>, registered on January 3, 1996, among others.
The disputed domain name was registered on May 10, 2013.
5. Parties' Contentions
According to the Complainant, the disputed domain name is confusingly similar to the VODAFONE trademark, as it reproduces the trademark in its entirety. The "vodafone" element of the disputed domain name is dominant, while the "database" element is of low distinctiveness and does nothing to detract from the similarity with the Complainant's earlier trademark. As a result, the disputed domain name would be understood to be under the same ownership by consumers.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection with or affiliation to the Complainant and has not received any license or authorization to use the VODAFONE trademark in a domain name or in any other manner. The Respondent has no trademark registrations for VODAFONE and is not known by the name Vodafone. The Complainant's VODAFONE trademark predates the registration of the disputed domain name. The domain name purports to be setting customer data and information including options to take control of Vodafone customer accounts and mobile telephones. This is not a legitimate use of the disputed domain name and in many jurisdictions it would be prohibited. No data or information has been supplied by the Complainant to the Respondent, and if the Respondent has obtained data and information of Vodafone customer accounts and mobile telephones, this has been done without the authorization and consent of the Complainant. Given the well known status of the VODAFONE trademark, there is no conceivable use which could be made of the disputed domain name that would not infringe the Complainant's earlier rights.
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant contends that through extensive sales, advertising and marketing around the world, it has acquired a very substantial reputation in the VODAFONE brand, which is inherently distinctive, being an invented word. As a result of the Complainant's extensive use of the VODAFONE mark, it has become well known in many countries worldwide, including in the Russian Federation, where the Respondent is based.
Given the fame of the Complainant' VODAFONE trademark, it is inconceivable that the Respondent was not aware of the Complainant or of its activities when the disputed domain name was registered. The services and goods offered on the website at the disputed domain name are directly related to the Complainant. In these circumstances, the Respondent must have registered the disputed domain name principally in an attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the VODAFONE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. This conclusion is further supported by the fact that the Respondent attempts to mislead Internet users that it is selling data obtained from the Complainant.
The Complainant also points out that the data offered on the website at the disputed domain name is private customer data which consumers would expect to be made private. The linking and offering for sale of such data would severely tarnish the reputation of the Complainant and of the VODAFONE trademark as consumers would view this as demonstrating that their data was not safe with the Complainant. The Respondent's website contains references to hacking, taking control of a phone and obtaining personal data that may allow identity fraud to occur. In addition to the risk of financial loss and loss of business, the Respondent's conduct presents the risk of significant reputational damage and disruption being caused to the Complainant and to its business.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under the Rules, paragraph (14)(b): "[…] the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the VODAFONE trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".net" part of the disputed domain name.
Therefore, the relevant part of the disputed domain name that has to be analyzed is its "vodafone-database" section, which contains the elements "vodafone" and "database" joined by a hyphen. The distinctive element "vodafone" is identical to the VODAFONE trademark, while the element "database" is descriptive and its combination with the "vodafone" element is likely to confuse Internet users into regarding the disputed domain name as an official online location of the Complainant.
Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the VODAFONE trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name Vodafone, has no rights in the VODAFONE trademark, and has not been authorized by the Complainant to use it. The Complainant has further pointed out that the VODAFONE trademark predates the registration of the disputed domain name, which has been used by the Respondent for purposes that could not be regarded as legitimate. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the distinctive VODAFONE trademark entirely with the addition of the descriptive element "database". This makes it likely that Internet users may regard the disputed domain name as related to the Complainant. The VODAFONE trademark has been registered in the Russian Federation, where the Respondent is located, since 2002. The website associated to the disputed domain name misleadingly offers Vodafone customer data and options to take control of customer accounts and mobile telephones. The Panel agrees with the Complainant that such actions could not be regarded as legitimate and may even be legally prohibited in certain jurisdictions.
The circumstances of this case lead the Panel to reach a conclusion that the Respondent must be well aware of the business of the Complainant and that it is likely that the Respondent exploits the popularity of the Complainant and of the VODAFONE trademark to attract the attention of Internet users to its website. In the Panel's view, such conduct cannot be regarded as giving rise to rights and legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of this case show that the disputed domain name was registered with knowledge of the reputation and goodwill of the Complainant. The disputed domain name incorporates the VODAFONE trademark and is confusingly similar to it. The VODAFONE trademark had been registered in the Russian Federation for more than ten years when the Respondent registered the disputed domain name. The Respondent's website makes a clear reference to the Complainant and its business. In this situation, the Respondent is likely to have registered the disputed domain name in view of the goodwill of the same trademark and its attractiveness to consumers, while at the same time not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent registered the disputed domain name in bad faith.
The website associated to the disputed domain name offers Vodafone customer data and options to take control of customer accounts and mobile telephones. The Complainant has stated that it has never consented to the carrying out of such activities by the Respondent and that the same activities may actually cause significant harm to its reputation. In the absence of any plausible explanation by the Respondent of its conduct, the Panel is prepared to accept the Complainant's contentions that, by using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant's VODAFONE trademark to attract, for commercial gain, Internet users to the website at the disputed domain name. The Panel also accepts that the offering of personal information and access to client accounts made on the Respondent's website may indeed harm the reputation of the Complainant in the eyes of its clients and the general public. This conduct of the Respondent supports a finding that the disputed domain name is being used in bad faith.
On the basis of all the above the Panel finds that the disputed domain name 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 name <vodafone-database.net> be transferred to the Complainant.
Date: May 18, 2016