WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telefónica, S.A. v. 曹伟 (caowei)

Case No. D2021-2455

1. The Parties

Complainant is Telefónica, S.A., Spain, represented by Acens Technologies, S.L., Spain.

Respondent is 曹伟 (caowei), China.

2. The Domain Name and Registrar

The disputed domain name <telefonica.tech> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On August 4, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On August 4, 2021, Complainant confirmed its request that English be the language of the administrative proceeding. Respondent did not comment on the language of the administrative proceeding.

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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on August 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2021.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 17, 2021. 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, Telefónica, S.A., is a global telephone operator and mobile network provider. It provides fixed and mobile telephony, broadband and subscription television, operating in Europe and the Americas, with almost 350 million clients worldwide, operates in 13 countries (present in 24), and employs more than 100,000 people. In 2020, Complainant had consolidated revenues of EUR 43,076 million and more than 345.4 million total accesses, 266 million mobile phones accesses, 20 million Internet and data accesses, and 8 million pay TV accesses. Complainant is a 100% listed company with more than 1.2 million shareholders, traded in several of the major stock markets around the world.

Complainant owns over 900 registered trademarks worldwide with the TELEFÓNICA and TELEFONICA mark either alone or in combination with another term, including for example the following:

- European Union Trademark No. 001029834 for TELEFONICA mark and design, registered on July 12, 2000;

- European Union Trademark No. 001785252 for TELEFÓNICA MOVILES, registered on September 25, 2001;

- European Union Trademark No. 006653125 for TELEFÓNICA O2, registered on November 24, 2008;

- European Union Trademark No. 006972335 for TELEFÓNICA EUROPE, registered on May 22, 2009;

- European Union Trademark No. 008712119 for TELEFONICA mark and design, registered on June 22, 2010;

- European Union Trademark No. 012180584 for TELEFONICA STUDIOS mark and design, registered on February 24, 2014;

- European Union Trademark No. 018317062 for TELEFONICA GLOBAL SOLUTIONS mark and design, registered on February 6, 2021;

- Spanish Trademark No. M2132151 for TELEFONICA, registered on June 5, 1998;

- Spanish Trademark No. M2902629 for TELEFONICA mark and design, registered on March 1, 2010;

- Spanish Trademark No. M4094224 for TELEFONICA 西班牙电信 mark and design, registered on June 8, 2021;

- Spanish Trademark No. M1137293 for TELEFÓNICA mark and design, registered on
December 16, 1987.

Complainant also owns several Chinese Trademark registrations for TELEFÓNICA. Complainant also owns numerous domain names consisting of or containing the TELEFÓNICA mark, including <telefonica.com> which was registered and has been in use since 1996.

Respondent registered the Domain Name on March 2, 2021. At the time of filing the Complaint, the Domain Name resolved to a parking page indicating that “Telefonica.tech is up for sale” and “Buy Telefonica.tech for USD 3,899”. At the time of the Decision, the Domain Name was listed as being available for sale for “USD 4,399”.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for the TELEFÓNICA and TELEFONICA marks and owns domain names incorporating the TELEFÓNICA and TELEFONICA marks. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide products and services under the well-known TELEFÓNICA and TELEFONICA marks.

Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue – Language of the Proceeding

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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.

Complainant submitted its original Complaint in English. In its Complaint and email communication to the Center on August 4, 2021, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is in Chinese.

Complainant contends that the Domain Name is comprised of ASCII (English) characters. In addition, Complainant notes that the Domain Name is identical to Complainant’s trademark. Complainant also contends that it is unable to communicate in Chinese, and it would be unfairly burdensome for Complainant to translate and conduct the proceeding in Chinese. Complainant notes that the Domain Name resolves to a webpage that advertises the Domain Name for sale in English, and Respondent is likely to understand English.

In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notified Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using Latin characters and contents of the webpage that the Domain Name resolves to includes content in English.

The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the TELEFÓNICA and TELEFONICA marks, which have been registered since at least as early as 1987, well before Respondent registered the Domain Name on March 2, 2021 as noted above. Complainant has also submitted evidence, which supports that the TELEFÓNICA and TELEFONICA marks are widely known trademarks and distinctive identifiers of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the TELEFÓNICA and TELEFONICA marks.

With Complainant’s rights in the TELEFNICA and TELEFONICA marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.tech”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Name is identical to Complainant’s TELEFONICA marks and confusingly similar to Complainant’s TELEFÓNICA marks. The TELEFÓNICA and TELEFONICA marks are recognizable in the Domain Name. The omission of the accent on the letter “ó” in the Domain Name <telefonica.tech> does not prevent a finding of confusing similarity between Complainant’s TELEFÓNICA trademark and the Domain Name. See WIPO Overview 3.0, section 1.9.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production on this element shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the TELEFÓNICA and TELEFONICA marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the TELEFÓNICA and TELEFONICA trademarks or to seek registration of any domain name incorporating the trademarks.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a webpage offering it for sale. At the time of filing the Complaint, the Domain Name resolved to a parking page indicating that “Telefonica.tech is up for sale” and “Buy Telefonica.tech for USD 3,899”. At the time of the Decision, the Domain Name was featured as being available for sale for “USD 4,399”. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.

Further, the nature of the Domain Name carries a high risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 website or other online 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 Panel finds that Complainant provided ample evidence to show that registration and use of the TELEFÓNICA and TELEFONICA marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s TELEFÓNICA and TELEFONICA marks and related services are widely known and recognized. Moreover, the Panel also notes that Complainant registered and has used the domain name <telefonica.com> since 1996. Therefore, the Panel finds that Respondent knew or should have known of the TELEFÓNICA and TELEFONICA marks when Respondent registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.

As discussed above, the Domain Name resolves to a parking webpage offering the Domain Name for sale. At the time of filing the Complaint, the Domain Name resolved to a parking page indicating that “Telefonica.tech is up for sale” and “Buy Telefonica.tech for USD 3,899”. At the time of the Decision, the Domain Name was listed as being available for sale for “USD 4,399”. Here, the present circumstances, including the distinctiveness and reputation of the TELEFÓNICA and TELEFONICA marks, the failure of Respondent to submit a response to the Complaint or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith.

Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <telefonica.tech> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: September 27, 2021