WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC v. Whoisguard Protected, Whoisguard Inc. / Engin Laleli
Case No. D2016-2483
1. The Parties
The Complainant is Vodafone Group PLC of Berkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Boult Wade Tennant, United Kingdom.
The Respondent is Whoisguard Protected, Whoisguard Inc. of Panama City, Panama / Engin Laleli of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <e-vodafonefaturaodemesi.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2016. On December 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2016, 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 December 20, 2016 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 December 23, 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 the Respondent of the Complaint, and the proceedings commenced on December 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 18, 2017.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 20, 2017. 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 headquartered in Berkshire, United Kingdom.
The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the NASDAQ. As of 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 worldwide.
The brand name VODAFONE, created to encompass "voice", "data" and "phone", 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 under the same name.
The 2014 BrandFinance Global 500, the world's brand value league chart, ranked VODAFONE as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.
The Complainant is the owner of 1531 trademark registrations and applications for, or including, the term VODAFONE throughout the world.
The Complainant is also proprietor of trademark registrations in Turkey, where the Respondent is located, including the Turkish trademark No. 2001 19998 for the word mark VODAFONE, registered on January 14, 2003, in classes 9, 16, 38 and 42.
The Complainant also owns over 200 domain names consisting exclusively of the mark VODAFONE as well as more than 400 domain names in which VODAFONE is used in combination with other words and/or numbers. Amongst others, the Complainant owns and operates the domain names <vodafone.com.tr>, registered on November 24, 2005, and <vodafone.com>, registered on December 4, 1997.
In addition to the above, the well-known character of the trademark VODAFONE has been recognized in several prior UDRP decisions.
The disputed domain name was registered on June 23, 2016.
The screenshot submitted by the Complainant as Annex 10 evidences that the Respondent was offering competing services at the time of filing of the Complaint. The Panel visited the disputed domain name on January 24, 2017, and observed that the disputed domain name directed to a parked page with the following text: "Index Of". At the time of this Decision, the Panel notes that the disputed domain name does not resolve to an active website. The Panel notes that the Respondent's website does not contain any information about the Complainant's trademark.
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 letter "e" and the descriptive term "fatura odemesi", meaning "bill payment" in Turkish, are of low distinctiveness and does nothing to detract from the similarity with the Complainant's earlier trademark. Thus, 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.
According to the Complainant, the disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent's website relies on the use of the Complainant's brand to draw in customers. With Annex 10, the Complainant alleges that on viewing the website it is possible that consumers would believe that there is some connection with the Complainant as the disputed domain name prominently features the Complainant's branding and lists the Complainant's address. It references a service known to be offered by the Complainant. Consumers would therefore assume that the website is operated by the Complainant and would not give further thought but would proceed with using the website as if it were owned by the Complainant.
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 Turkey, where the Respondent is based.
Given the fame of the Complainant's 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 to attract for commercial gain Internet users to the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall make a decision in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(1) The domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
In the event of a lack of a response, the Panel may – as appropriate – accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark VODAFONE registered throughout the world including in Turkey as evidenced in the annexes to the Complaint.
In relation to the disputed domain name, the disputed domain name fully incorporates the Complainant's trademark and the only difference between the disputed domain name and the Complainant's trademark is the addition of the letter "e", which is generally the abbreviation for "electronic", the descriptive term "fatura odemesi", which means "bill payment" in Turkish, and the ".com" extension.
It has been established by previous UDRP panels that the use of a trademark in its entirety with the addition of generic terms does not negate the confusing similarity with said trademark. Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755.
The Panel finds that simply adding terms like "e" (electronic), "fatura odemesi" (bill payment), is not sufficient to distinguish the disputed domain name from the Complainant's trademarks and, hence, does not exclude the likelihood of confusion. These words are descriptive and generic to the communication sector to which the Complainant belongs. In Turkcell Iletisim Hizmetleri A.S v. GWT, WIPO Case No. D2007-0614, the panel observed that "the full incorporation of the trade mark in the domain name is sufficient to make a finding of confusion between the trade mark and the domain name."
Therefore, it is safe to conclude that the Respondent clearly did not intend to distinguish the disputed domain name from the Complainant's trademark by adding the letter "e" and the descriptive terms "fatura odemesi" to the Complainant's trademark VODAFONE when creating the disputed domain name. The Panel finds that these incorporations are rather descriptive and do not distinguish the disputed domain name from the Complainant's trademark VODAFONE. Quite the opposite, the Panel believes that the full inclusion of the Complainant's trademark in combination with some content-related descriptive terms may even enhance the false impression that the website linked to the disputed domain name is somehow officially linked to the Complainant.
Additionally, the Panel refers to previous UDRP decisions like Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.
The Panel further finds that the addition of the ".com" extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy by showing that the disputed domain name is confusingly similar to its trademarks.
B. Rights or Legitimate Interests
The Panel also finds that the Respondent has not demonstrated a right or legitimate interest in the disputed domain name.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests, is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is required to make out a prima facie case to shift the burden to the Respondent to come forward demonstrating its rights or legitimate interests. If the Respondent fails to do so, the Complainant is deemed to have satisfied the requirements in paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate any right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided non-contested prima facie evidence that the Respondent has no trademark, license or any other similar right to use the disputed domain name.
As already indicated before, the Panel can confirm that – when it visited the disputed domain name on January 24, 2017 – there was no provided content. Without any response, the Panel can only infer that the Respondent took down the website after the commencement of the proceeding, indicative of the Respondent's lack of rights or legitimate interest.
By not submitting a Response, the Respondent failed to demonstrate any circumstance that could be brought forward to support a legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue.
In the present case, the Complainant states that the Respondent has no relationship with or permission from the Complainant for using its trademarks, as well as that the Complainant's rights in its trademarks precede the Respondent's registration of the disputed domain name.
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.
In addition, there is no indication that the Respondent is commonly known by the disputed domain name, that he has used the same in connection with a bona fide offering of goods or services, or 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 or to tarnish the trade mark or service mark at issue. On the contrary, the Panel finds that it can be safely concluded that the Respondent was fully aware of the Complainant's extensive goodwill and reputation in its VODAFONE trademarks, especially taking into account that the Complainant is a well-known company in Turkey and that the Respondent is a Turkish resident. In this respect, the Panel finds that since the term "Vodafone" is not a generic or a dictionary term, but rather an original creation made up by the Complainant, the likelihood that the Respondent came up with the same name for the disputed domain name without being aware of the Complainant's earlier rights over VODAFONE trademark when creating the disputed domain name, is extremely low, almost impossible, particularly given the Respondent's disputed domain name use as evidenced by the Complainant.
In this regard, the Complainant submits that the Respondent could not establish legitimate interest in the trademark incorporated in the disputed domain name "where (i) the Respondent is not a licensee of the Complainant; (ii) the Complainant's rights in its related trademarks precede the Respondent's registration of the disputed domain name; and (iii) the Respondent is not commonly known by the disputed domain name in question" (citing Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403).
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.
The Panel is aware of the notoriety and reputation of the trademark VODAFONE. By consideration of the foregoing and in view of the content of the evidence, the Panel is of the opinion that, due to the extensive and intensive usage of VODAFONE marks by the Complainant, the Respondent, who appears to be located in Turkey, cannot be unaware of the existence of the Complaint and its VODAFONE trademark. Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. This is in particular likely as the disputed domain name has been registered well after the Complainant's trademark VODAFONE has become recognized worldwide, including in Turkey. The Respondent has also its address in Turkey and most likely knew of the trade/service mark rights of the Complainant before the registration of the disputed domain name. As held in Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, the panel finds:
"[…] Respondent's […] constructive and actual knowledge of Complainant's trademark rights prior to registering the disputed domain name to be strong evidence of registration and use of the domain in bad faith…"
It rather appears that the Respondent has registered the disputed domain names solely for the purpose of creating a false association with the trademark VODAFONE in order to mislead Internet users who may search for bill payment services provided by the Complainant and its affiliated companies in accordance with paragraph 4(b)(iv) of the Policy. The Panel is convinced that the Respondent was aware that a legitimate use of the disputed domain names would not have been possible without infringing the Complainant's trademark rights.
The Panel also believes that the Respondent's lack of a response additionally supports the impression that he has registered the disputed domain names in bad faith without any legitimate interest to use them, Awesome Kids LLC v. Selavy Communications, WIPO Case No. D2001-0210.
Finally, the Panel notes that currently the Respondent is not actively using the disputed domain name (the disputed domain name appears to be merely "parked" with the Registrar), nor does it seem from the evidence presented that the Respondent ever tried to sell or contact the Complainant in relation to the disputed domain name. In this regard, the Panel is of the opinion that such lack of active use of the disputed domain name without any attempt to sell or to contact the trademark holder (so called "passive holding"), does not prevent a finding of bad faith. According to the consensus view summarized under paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), it is adopted that "the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith".
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under 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, the Panel orders that the disputed domain name <e-vodafonefaturaodemesi.com> be transferred to the Complainant.
Date: February 3, 2017