WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group PLC v. WhoisGuard Protected, WhoisGuard, Inc. / Semih Kalın
Case No. D2017-1028
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 WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Semih Kalın of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <vodafonefaturasiodeme.net> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2017, 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 June 12, 2017 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 June 15, 2017.
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 June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 10, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on July 12, 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 large and well-known mobile communication network operator. It has more than 400 million mobile customers worldwide. More than 20 million subscribers are from Turkey.
The Complainant is the owner of the famous trademark VODAFONE, which is registered in a large number of jurisdictions, including in Turkey. In total, the Complainant owns more than 1,500 registered or applied trademarks comprising the term "Vodafone". According to the provided information in the case file, the first trademark registrations date back to the year 1988.
The Respondent is an individual located in Istanbul, Turkey.
The disputed domain name <vodafonefaturasiodeme.net> was created on November 22, 2016 by using a privacy service.
The Panel notes that at the time of the decision, the disputed domain name was inactive. However, screenshots provided by the Complainant indicate that the disputed domain name resolved to a website prominently using the Complainant's branding for some alleged e-billing services to the Complainant's customers.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's trademark VODAFONE.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint 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:
(i) the disputed domain name is identical or confusingly similar to the trademark in which the Complainant 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.
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 replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") and, where appropriate, will decide consistent with the WIPO Overview 3.0.
A. Identical or Confusingly Similar
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As indicated above, the Complainant is the owner of the well-known trademark VODAFONE, which is registered in a large number of jurisdictions, including in Turkey, since many years.
Although not identical, the disputed domain name fully incorporates the Complainant's trademark VODAFONE.
The disputed domain name differs from the trademark VODAFONE only by the addition of two generic Turkish terms, namely "faturası" and "ödeme". In combination with the Complainant's trademark, the disputed domain name could be read and understood as "payment of Vodafone bills" in the English language. In the Panel's view, these additions do not negate the confusing similarity between the Complainant's trademark and the disputed domain name, as they are purely descriptive and do not create a new distinctiveness separate from the Complainant's trademark VODAFONE. On the contrary, the full inclusion of the Complainant's trademark in combination with the above mentioned generic Turkish terms may even enhance the false impression that the disputed domain name is somehow officially related to the Complainant's own e-billing services offered to its customers.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that in the absence of a Response, the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of 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 file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or any other authorization, to use the Complainant's trademark VODAFONE in the disputed domain name.
In the absence of a Response, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. The Respondent has also failed to demonstrate any of the other non‑exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Finally, the Panel does not see any indication in the record for assessing a bona fide offering of goods or services by the Respondent.
C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent must have been aware of the Complainant's VODAFONE trademark when it registered the disputed domain name on November 22, 2016.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take unlawful advantage of the Complainant's trademark, probably for commercial gain or some other illegitimate benefit.
It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an illegitimate association with the Complainant, in particular with its provided e-billing services. According to the provided documents and screenshots in the case file, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to create the false impression that the connected website is somehow officially linked to the Complainant. The Panel particularly believes that the disputed domain name was registered and used for the sole purpose of obtaining personal data and probably bank account details by devious means from misled consumers who are searching for official e-billing services provided by the Complainant.
The Panel finds that the Respondent's failure to respond to the substance of the Complaint further supports the conclusion that it has registered and is using the disputed domain name in bad faith.
The Panel also notes that the Respondent used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain name (which fully incorporate the Complainant's trademark VODAFONE), rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
The fact that the disputed domain name does not resolve to an active website anymore, does not change the Panel's findings in this respect.
All in all, the Panel cannot conceive of any good faith use of the disputed domain name which is not related to the trademark VODAFONE owned by the Complainant.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 <vodafonefaturasiodeme.net> be transferred to the Complainant.
Date: July 26, 2017