WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Corporate Mobile Recycling Limited v. Mazuma Mobile Pty Ltd
Case No. DAU2011-0034
1. The Parties
The Complainant is Corporate Mobile Recycling Limited of London, United Kingdom of Great Britain and Northern Ireland ( “United Kingdom”), represented by Rollingsons Solicitors Limited, United Kingdom.
The Respondent is Mazuma Mobile Pty Ltd of Victoria, Australia, represented by Clarke Willmott LLP, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <fonebank.com.au> (the “Domain Name”) is registered with NetRegistry Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 17, 2011, 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.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2011. The Response was filed with the Center on November 22, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 30, 2011. 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
Beginning in 2003 the Complainant, operating in the United Kingdom, with ventures now also in Germany, Spain, Ireland, France and Croatia, has been in the mobile phone recycling business, buying used mobile phones from the public and reselling them. In January 2008 it launched the website “www.fonebank.com” and began using the names “fonebank” and “fonebank.com”.
The Respondent was incorporated on October 2, 2009. It is a subsidiary of a United Kingdom company, Ventura Telecoms Holdings Limited (“Ventura”), which is also the parent company of another United Kingdom company, Mazuma Mobile Limited, a competitor of the Complainant. One of the Respondent’s directors, Mr. Charlo Carabott, is a resident of the United Kingdom, a director of Mazuma Mobile Limited and a director of and major shareholder in Ventura.
The Respondent registered the Domain Name on December 17, 2009. It resolves to a website at “www.mazumamobile.com.au”, at which the Respondent offers mobile phone recycling services in Australia.
In March 2011 an email exchange took place between Mr. Tagg of the Complainant and Mr. Carabott. Mr. Carabott’s reply was headed “Without prejudice save as to costs”. The Complaint annexes both emails. (Annex 16 to the Complaint). The Respondent has made no objection to this and the Response annexes Mr. Tagg’s email and refers to the content of Mr. Carabott’s email. (Annex 13 to the Response) Under these circumstances the Panel considers it appropriate to take both emails into account.
On March 25, 2011, Mr. Tagg emailed Mr. Carabott and his co-director of Mazuma Mobile Limited as follows:
“Further to your earlier conversation with Mark, he explained that we are very keen to keep our brand constant in new territories and to that end we would much prefer to use the Fonebank URL. Whilst we can appreciate that you would prefer Fonebank not to compete with you in Australia, buying up URL’s and holding them to ransom does seem a little unfair. We currently have operations in the UK, Spain, France and Ireland with a site due to launch shortly in Australia. Whilst competitors in these countries annoy and frustrate us from time to time we maintain respect for them and by and large we’ve always managed to keep relationships cordial, particularly with the ‘old school’.
We employ five Japanese people at CMR and obviously the last couple of weeks has been quite emotional for all. I propose that a good cause profiteers from our foolishness and we make a donation of £1,000 to the Japanese Red cross in exchange for the transfer of the URL.”
On March 28, 2011 Mr. Carabott replied:
“Without prejudice save as to costs.
I’m all for keeping things friendly and don’t really want to get into a moral debate of why we registered the fonebank.com.au domain. Let’s just assume the reasons we registered this domain are the same reasons you registered envirofone.com.au.
To make things clearer, we would consider selling you the domain for a non-negotiable value of £5,000. I feel this is fair considering we paid more than this for our mazuma au domain.”
On June 17, 2011 the Complainant became the proprietor of United Kingdom registered trademark No. 2584944, comprising the word FONEBANK together with a logo depicting the head and shoulders of a smiling man with moustache in shirt, tie, braces and bowler hat.
On September 2, 2011, the Complainant entered into a 10 year franchise agreement with Fonebank Recycling Limited (“FRL”), a company incorporated in New Zealand, permitting FRL to operate a franchise business in Australia and New Zealand using the name “fonebank” under a trademark licence from the Complainant. The Complainant has authorized FRL to sub-license its right to use the “fonebank” trademark to Fonebank Pty. Ltd, a company incorporated in Australia by the director of FRL.
5. Parties’ Contentions
The Complainant seeks the transfer to it of the Domain Name. It says the Respondent is a competitor of the Complainant in the mobile phone recycling industry, operating under the name “Mazuma Mobile”.
The Complainant claims common law trademark rights in “fonebank” and “fonebank.com” (“the Marks”) through use and substantial advertising prior to its 2011 trademark registration. Its “www.fonebank.com” website has had 5,997,683 visits since January 2008, of which 4,481 originated in Australia. In the year to March 2010, it bought and sold over GBP 16 million worth of stock and spent over GBP 1.3 million on advertising.
Each of the Marks, the Complainant submits, is identical or confusingly similar to the Domain Name. It submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered or is subsequently being used in bad faith.
As to legitimacy, the Complainant says the Respondent, a competitor of the Complainant, has never used the Marks in connection with its offering of mobile phone recycling services or at all; the Respondent redirects all visitors to the Domain Name to its own website “www.mazumamobile.com.au”, at which it commercially offers its own services; other than this redirection and the Respondent’s attempt to sell the Domain Name to the Complainant (discussed below), the Respondent makes no other use of the Domain Name; and the Respondent has no affiliation with the Complainant.
Regarding bad faith, the Complainant says that all four circumstances set out in subparagraphs 4(b)(i) – (iv) of the Policy are present.
As to sub-paragraph 4(b)(i), at the time of the Domain Name registration, the Complainant had traded via its website “www.fonebank.com” for almost 2 years. Given the Complainant’s rights in the Marks, the Respondent’s complete lack of legitimate interests in them and the e-mail of Mr. Carabott of March 28, 2011, it can be inferred that the primary purpose of the Respondent registering the Domain Name was to sell it for a sum in excess of what the Respondent paid in relation to it.
As to sub-paragraph 4(b)(ii), the Respondent commenced business in the mobile phone recycling industry in or about 2006, three years after the Complainant, and has been a competitor of the Complainant since then. The Respondent previously traded via its parent company, Ventura. From 2006 onwards Ventura had dealings with the Complainant from time to time. Clearly therefore the Respondent was aware of the Complainant and therefore the Marks in December 2009, when it registered the Domain Name. It follows that the Respondent had the Complainant specifically in mind at the point of registration (see Mandarin Oriental Services B.V. v. Control Alt Delete, WIPO Case No. D2000-1671).
The present case is analogous to Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies, WIPO Case No. DAU2010-0014, in that the Respondent knew about the Complainant and the Marks as at registration in December 2009; the Respondent has not at any time held rights in any mark or name corresponding to the Domain Name; and the Domain Name corresponds to the Complainant’s marks.
As to sub-paragraph 4(b)(iii), it must also be inferred that the primary purpose of the Respondent in registering the Domain Name was to disrupt the Complainant’s business in some way. Such disruption has been caused: the Complainant’s Australian franchisee cannot presently conduct any business using the Domain Name.
As to sub-paragraph 4(b)(iv), the parties are currently competitors in the highly specialised business of buying and selling recycled mobile phones. There is a high degree of similarity between their businesses. The Respondent was aware of the Complainant’s presence in the market and the clear inference is therefore that, in its use of the Domain Name, which is identical to the Marks, the Respondent was hoping to capture the custom of consumers who were seeking to contact the Complainant through the Internet.
The Respondent asks the Panel to deny the remedy sought by the Complainant. It submits that the Complainant’s registered trademark should be disregarded because it post-dates the Domain Name registration; that the Complainant had no goodwill in the FONEBANK mark in the United Kingdom before January 2008; and that the Complainant has never used that mark in Australia.
The Complainant appears to be contemplating moving into the Australian market two years after the Domain Name was registered, as appears from Mr. Tagg’s email to Mr. Carabott dated March 25, 2011. The franchise agreement to which the Complainant refers was signed only on September 2, 2011. The Complainant has no goodwill in the Marks in Australia.
As to whether the Respondent has rights or legitimate interests in respect of the Domain Name, the Respondent says “fonebank” is a descriptive term and, as such, the Respondent should be allowed to use it in its business, even if it competes with the Complainant. The Respondent’s business is to pay a sum of money to members of the public for them sending their old and unwanted phones. The use of “fonebank” is analogous to “sperm bank” or “blood bank”. Essentially the Respondent provides a financial incentive to the general public to “bank” their old and unwanted mobile phones to them.
The Complainant was refused trademark registration in the United Kingdom for “mobilefonebank” as it was descriptive and non-distinctive. It secured registration of its logo mark only because of the logo.
In or around 2010 the Respondent registered several other descriptive domain names, such as <mobilephoneexchange.com.au>, <cashforfone.com.au> and <sellmyfone.com.au>, which, as in the case of the Domain Name, it uses in order to redirect users to its main website “www.mazumamobile.com.au” and to increase its rankings through Google. The Respondent therefore argues that it has a legitimate interest in using common descriptive terms to resolve to its website. See: Creative NetVentures, Inc. v. Webheads, WIPO Case No. D2000-1655. It is commonplace to use generic and descriptive words in domain names in order to redirect traffic to a website logically related to the domain name at issue: Bernstein v. Action Advertising, Inc., WIPO Case No. D2000-0706.
The Respondent denies registering the Domain Name in bad faith, saying it did so in order to use it in the course of its business. The Domain Name is a descriptive term and the Respondent is entitled to use it.
An offer to sell a domain name is not conclusive proof of bad faith: Magnum Piering, Inc. v. Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525; William Grant & Sons Limited v. Daniel Scotto, WIPO Case No. D2000-1656. It was the Complainant which first made an offer to buy the Domain Name, in Mr. Tagg’s email to Mr. Carabott of March 25, 2011. Mr. Carabott’s response was a legitimate counter-offer in response to that proposal. The Respondent had made no attempt to sell the Domain Name in the previous 15 months since registering the Domain Name.
The Respondent was not aware in 2009, when it registered the Domain Name, that the Complainant had any intention to use the Domain Name in Australia. The Complainant did not decide to trade in Australia until September 2011. Thus the Domain Name was being used from 2009 in connection with a bona fide offering of goods or services from the Respondent.
The Respondent does not see how any of the Complainant’s current customers would mistakenly access “www.fonebank.com.au” thinking it was the Complainant. The Domain Name automatically forwards to the Respondent’s website at “www.mazumamobile.com.au”, which clearly displays the MAZUMA MOBILE trademark.
The present case is clearly distinguishable from Bernard Janes v. L.J. Bubenicek & ors.,supra, in which the Respondent was unable to show that the term “go ballistic” was descriptive of the services being offered. Here there is a clear association between the term “fonebank” and the services being offered through the Domain Name.
The Complainant has neither asserted nor demonstrated that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting that mark in a corresponding domain name. All the Respondent has done is register descriptive terms as domain names. The Respondent has not acted in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Limited independent research by the Panel into publicly available information is permissible, such as visits to relevant websites: see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and the cases there cited.
To succeed, the Complainant must establish that:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), cases decided under the UDRP can be of assistance in applying the Policy.
A. Identical or Confusingly Similar
As under the UDRP, paragraph 4(a)(i) of the Policy does not require the Complainant’s trademark rights to have arisen before the Domain Name was registered: see Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038 and the cases there cited. The Panel notes that the date of registration or first use is irrelevant for the purpose of finding rights in a trademark under the first element of the Policy.
Further, as explained in 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin, WIPO Case No. DAU2010-0016:
“The requirement of paragraph 4(a)(i) of the Policy is not limited to trademarks that are registered in Australia (as, indeed, it is not limited to trademarks that are registered). This Panel accepts the view expressed in Mass Nutrition, Inc. and Todd Rosenfeld v. Mass Nutrition Pty. Ltd. now known as Tweed Holdings, Luke McNally, WIPO Case No. DAU2010-0002, to the effect that a right to a trademark registered outside Australia (in that case, in the United States of America) is sufficient for the purposes of the Policy. As the panelist in that case explained, the inquiry required by paragraph 4(a)(i) of the Policy for the purpose of establishing application of the Policy is different from the inquiry required by Australian trademark law for the purpose of establishing trademark infringement. The Policy requires only a comparison of the disputed domain name with any relevant rights proved by the complainant. Considerations such as the priorities in time of competing claims to a trademark or the ‘location’ of the goodwill attaching to a trademark do not fall for consideration under paragraph 4(a)(i) of the Policy, although they may arise for consideration under other paragraphs of the Policy such as paragraphs 4(a)(ii) or 4(a)(iii).”
Accordingly, the Complainant’s United Kingdom registered trademark is not to be disregarded.
That mark is a figurative mark. Whether a domain name is confusingly similar or identical to a figurative mark is to be judged objectively against the dominant textual elements of the mark, rather than graphic or stylized elements: Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477, citing Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. Top level domain suffixes are to be ignored: BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
Here the dominant textual element of the Complainant’s registered mark is the term “Fonebank”. Accordingly the Panel finds the Domain Name to be confusingly similar to the Complainant’s registered trademark.
The Complainant has established this element of its case.
On the view that the Panel takes of this case, it is unnecessary to decide whether, prior or subsequent to the registration of the Domain Name, the Complainant had established common law rights in the descriptive terms “fonebank” and “fonebank.com”.
B. Rights or Legitimate Interests
The Panel notes that Mr. Carabott is a director of the Respondent, a director of its parent company Venture, and a director of the Respondent’s related company, Mazuma Mobile Limited. In considering this and the next element, the Panel proceeds on the basis that the knowledge of Mr. Carabott may be imputed to the Respondent.
Since 2006, the Complainant and Mazuma Mobile Limited, preceded by its parent Venture, have been in competition with each other in the United Kingdom. Communications passed between the Complainant and Venture then. They were clearly aware of each other. The Complainant began to use the names “fonebank” and “fonebank.com” in 2008, when it launched its website at “www.fonebank.com”. The Domain Name was registered in December, 2009. The Respondent does not contend that it was unaware of the Complainant when it registered the Domain Name, nor does it contend that it was then unaware of the Complainant’s use of the names “fonebank” and “fonebank.com” and the Complainant’s website at “www.fonebank.com”.
The Respondent argues that it has a legitimate interest in using common descriptive terms to resolve to its website, citing Creative NetVentures, Inc. v. Webheads, WIPO Case No. D2000-1655. In that case the learned three-member Panel said:
“Respondent registered the domain name at issue on July 10, 1996. This is more than three years before Complainant filed for registration of the trademark, more than four years prior to the issuance of registration, and more than fifteen months before Complainant claims to have first used the mark in commerce. Prior panel decisions have found that this fact of prior registration in and of itself gives Respondent rights and legitimate interests in respect of the domain name. See, e.g., Mpower Communications Corp. v. Park Lodge Hotel, ICANN Case No. D2000-0078. The fact that Complainant's mark is a common descriptive term which has been in use by Complainant for only a short period indicates that the mark is a weak one. In such cases, it has been held that this would not defeat the rights or legitimate interests of a Respondent in respect of a domain name incorporating such mark where such adoption was not intended to cause confusion or diversion of business. EAuto, L.L.C. v. EAuto Parts, ICANN Case No. D2000-0096. Accordingly, the panel finds that Respondent has established that it has rights and legitimate interests in respect of the domain name at issue.”
This passage makes it clear that the intention of a respondent vis a vis a complainant in adopting as a domain name a descriptive term which may subsequently achieve trademark status may be relevant in considering whether a respondent has rights or legitimate interests in the domain name.
Here the Respondent, through Mr. Carabott, was well aware of the Complainant and of the Complainant’s use of the names “fonebank” and “fonebank.com” when it registered the Domain Name. In light of Mr. Carabott’s email of March 28, 2011: “Let’s just assume the reasons we registered this domain are the same reasons you registered envirofone.com.au”, the Panel has visited the websites to which the domain names <envirofone.com> and <envirofone.com.au> resolve. The former is the website of a mobile phone recycling company in Macclesfield, United Kingdom, that does not appear to be related to the Complainant. The latter is a website of the Complainant. The Panel infers that Mr. Carabott intended to convey to the Complainant that he believed the Complainant had knowingly registered the “.com.au” version of a competitor’s “.com” domain name and that, in registering the Domain Name, the Respondent had done likewise.
The Panel concludes that the Respondent registered the Domain Name in order to prevent the Complainant from doing so, in case the Complainant ever were to decide to expand into the Australian market, and to divert business, should the Complainant thereafter obtain trademark rights in “fonebank” or “fonebank.com”. Under these circumstances the Respondent’s use of the Domain Name to resolve to its website at “www.mazumamobile.com.au” is not a bona fide use, notwithstanding that the Respondent registered other domain names comprising descriptive terms and has used them in the same way.
Accordingly the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name.
The Complainant has established this element of its case.
C. Registered or Subsequently Used in Bad Faith
First, in light of the fifteen months that elapsed following the registration of the Domain Name and the Complainant’s offer to donate GBP 1,000 to the Japanese Red Cross in exchange for it, and the Respondent’s reply seeking GBP 5,000 for it, the Panel is not prepared to conclude that sale at a profit was the Respondent’s primary purpose in registering the Domain Name.
Further, paragraph 3.1 of WIPO Overview 2.0 addresses the question: Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? The consensus view includes the following (omitting citations):
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date […], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
“However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: […] when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises […]. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
Here the Panel has already found the Complainant’s registered trademark to afford it relevant trademark rights satisfying the first element of the Policy. The Panel finds that the Respondent was clearly aware of the Complainant and that it registered the Domain Name primarily for the purpose of disrupting any potential business or activities of the Complainant directed to the Australian market. Accordingly, pursuant to sub-paragraph 4(b)(iii) of the Policy, the Domain Name was registered in bad faith.
The Complainant has established this element of its case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <fonebank.com.au> be transferred to the Complainant upon the Registrar being satisfied of the Complainant’s eligibility. Alternatively, the Panel orders that the Domain Name <fonebank.com.au> be cancelled.
Alan L. Limbury
Dated: December 9, 2011