WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodafone Group Plc v. Andrei Costin
Case No. DMD2014-0001
1. The Parties
The Complainant is Vodafone Group Plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Olswang LLP, UK.
The Respondent is Andrei Costin of Limassol, Cyprus. In the Response, the Respondent claimed his contact address to be in Biot, France.
2. The Domain Name and Registrar
The disputed domain name <vodafone.md> is registered with MoldData, SC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15 and 17, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification sent by the Center to the Complainant on April 17, 2014 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on the same day.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2014. The Response was filed with the Center on May 11, 2014.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on May 20, 2014. 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 with its headquarters in Berkshire, England, UK. It is one of the world’s largest mobile communications companies by revenue, operating across the globe, providing a wide range of communications services. The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the Nasdaq. As at February 10, 2014, the Complainant had a market capitalisation of approximately GBP 108.1 billion. For the financial year ended March 31, 2013, the Complainant generated revenue of GBP 44.4 billion. It 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 on March 22, 1984. In 1985, the Complainant launched one of the first cellular telephone networks in the UK under the same name. The Vodafone brand has since expanded rapidly across the globe. Through extensive sales, advertising and marketing around the world, the Complainant has acquired very substantial reputation in the Vodafone brand. The 2014 BrandFinance Global 500 ranked Vodafone as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.
The Complainant currently holds 1,434 registered and pending trademarks for and including the word VODAFONE, including in Cyprus and France where the Respondent seems to now be domiciled.
The well-known character of the Vodafone brand has been acknowledged by numerous UDRP panels.
The Complainant owns over 200 domain names consisting exclusively of the mark VODAFONE as well as more than 400 domain names in which the mark VODAFONE is used in combination with other words and/or numbers. The Complainant also owns a number of domain names incorporating common misspellings of the mark VODAFONE which redirect to the Complainant’s main website such as, for instance, <vodaphone.md> (since May 13, 2010), <vodafone.com> (since December 4, 1997), <vodafone.org> (since January 15, 2002) or <vodafone.net> (since January 3, 1996).
The Respondent has registered numerous domain names over the years. He registered the disputed domain name <vodafone.md> on May 5, 2007. As of the time the Complaint was filed, the disputed domain name pointed to a website that displayed a message indicating that the page was being held for a video on demand platform project for mobile phones called “project VOD@FONE”. The disputed domain name was set to expire on May 5, 2014, its registration got renewed on April 26, 2014 for a one year period of time.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name <vodafone.md> is either identical or confusingly similar to its trademarks, as it wholly incorporates the brand VODAFONE without any additional element but for the country cold Top-Level Domain (ccTLD) “.md”.
The Complainant further affirms that the Respondent has neither rights nor legitimate interests in the disputed domain name, as he has no connection or affiliation with the Complainant which has never granted to him any license or authorization to use its VODAFONE trademark. The disputed domain name <vodafone.md>, which has been registered for more than six years, has never led to any use or demonstrable preparations to use it in connection with a bona fide offering of goods or services.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. Given the fame of the Complainant’s mark, it is inconceivable that the Respondent was not aware of the Complainant or its activities when the disputed domain name was registered on May 5, 2007. The disputed domain name is being used for a webpage advertising a project or service for mobile phones. The Complainant is well known for offering goods and services in the telecommunications and mobile phones sector under the VODAFONE trademark. The Respondent’s deliberate selection and registration of a domain name incorporating the Complainant’s trademarks is an attempt to gain commercially from the Complainant’s reputation and will cause confusion on the part of the public; there in no doubt in the Complainant’s belief that Respondent’s website was set up to lead consumers to believe that the project advertised, project “VOD@FONE”, was in some way associated or affiliated to the Complainant.
Furthermore, considering the fame enjoyed by the Complainant, it must have been clear to the Respondent when he registered the disputed domain name that his registration and use would unfairly disrupt the Complainant’s business.
The Respondent argues that he did not initiate, nor has received any contact at any time from the Complainant regarding the disputed domain name <vodafone.md>, for which he acknowledges not to hold any trademark. The Respondent argues that, while he had heard about the Complainant’s trademark outside of the Republic of Moldova, the Complainant would only hold VODAFONE SMART PASS trademark in the Republic of Moldova, at the exclusion of any other, a trademark that was registered four and a half years after the registration of the disputed domain name.
The Respondent further states that the disputed domain name would consist of the terms “Vod”, standing for Video On Demand, and “Fone” as a slang term for phone, telephone and smartphone, linked by “@” with the meaning of “requested by” or “requested from” a phone system, concerning media, particularly video-on-demand type of media. The Respondent argues that he took reasonable due diligence at the time of registration to make sure that “VOD@FONE” was not a registered trademark; considering that technical constraints did not enable the Respondent to register the disputed domain name with a “@”, the Respondent had no other choice but to register the disputed domain name as <vodafone.md>.
The Respondent affirms that he has invested resources in development of show-case scenarios since 2009 and have posted some of them publicly available, notably on YouTube. He incorporated in Cyprus in 2011 a company called Sereso Services Ltd. and filed a United States patent application on a system and methods for creating, storing and utilizing videos and images of a geographic location on March 23, 2013.
Finally, the Respondent considers that he did not register nor uses the disputed domain name in bad faith. The Complainant is not known in the Republic of Moldova, and it did not prove that the disputed domain name is currently being used in bad faith. To the contrary, based upon the explanations given above, the Respondent asserts that he makes a bona fide use of the disputed domain name and associated website.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The fact that the Complainant may not hold a trademark in the country where the Respondent is located is irrelevant. As stated by UDRP panels, it is sufficient for a complainant to own a trademark, no matter where such trademark has been registered (paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). In the present case, the Complainant has provided ample evidence that it owns numerous trademarks consisting of the term VODAFONE.
The UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
While the Respondent tries to argue that the content of his website excludes any likelihood of confusion, the UDRP panels agree that “the content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP” (paragraph 1.2 of WIPO Overview 2.0).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).
In the present case, the Respondent has tried to demonstrate his bona fide offering of goods or services by providing a screenshot of YouTube displaying “Processing of on-demand media (videos, images, etc.) on mobile […]” uploaded on February 16, 2009 and the incorporation of a company registered on August 4, 2011 in Cyprus under the corporate name Sereso Services Ltd. The Respondent furthermore provides that he has filed a United States patent application on a system and methods for creating, storing and utilizing videos and images of a geographic location on March 23, 2013. All this would clearly demonstrate his rights or legitimate interests in the disputed domain name.
None of this evidence however appears to be convincing in the Panel’s opinion. Set aside the fact that the YouTube video displayed as a screenshot is more than five years old, there is no way for the Panel to establish any direct link between such video and the website attached to the disputed domain name. The same goes with regards to Sereso Services Ltd or the United States patent application filed by the Respondent, whose relation with the website has not been established at all.
Considering the fact that the Complainant’s trademark has to be considered as well-known as will be explained hereunder (see Section 6.C.), it would have been up to the Respondent to come up with screenshots of his website displaying a bona fide offering of goods or services in direct relation to such website, respectively of a business plan and/or investments carried out over the years since 2007. The screenshots provided by the Respondent to demonstrate the traffic generated over the years by the website do not even relate to the disputed domain name, but to <vodafone.digi-face.net>.
As a result, the Panels considers that the Respondent has not demonstrated with satisfactory evidence the fact that he would have had any rights or legitimate interests in the disputed domain name and related website.
In light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the Respondent to be aware of the Complainant’s trademarks. In the present case, while the Respondent argues that the well-known character of the Complainant’s trademarks would not have been demonstrated, several UDRP panels have already held that VODAFONE enjoys a well-known character (Vodafone Group Plc v. Brendan Conlon, WIPO Case No. D2002-0822; Vodafone Group Public Limited Company v. Akio Nagata, WIPO Case No. D2005-0077; Vodafone Group Plc v. Domain Privacy, WIPO Case No. D2007-1684). The Panel sees no reason to consider otherwise.
Furthermore, it appears from the Respondent’s Curriculum Vitae that he has been working for several years in the telecommunication industry, and that the patent application filed in front of the United States Patent and Trademark Office, as well as his Response, refers to an address in France where the Respondent seems to be currently doing a Ph.D. As a result, the persistence of the Respondent to claim that the Complainant would not be known in the Republic of Moldovia appears misleading, all the more than, as stated above, the existence of a trademark in the country where a respondent is located is not a requirement to prevail under the UDRP in any case.
This purposefully misleading information leaves no doubt in the Panel’s opinion that the Respondent, considering in particular but not only his field of expertise, was clearly aware of the Complainant’s Vodafone brands when he decided to register the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith.
Whether the Respondent has used the Complainant’s name in bad faith is less clearly evident on the facts. However, as stated by UDRP panels, the Respondent’s registration of a well-known trademark such as VODAFONE may, in itself, be sufficient to consider that the disputed domain name is being used in bad faith (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Deutsche Lufthansa AG v. Miguel Casajuana, WIPO Case No. D2009-0018). As argued by the panel in Comerica Inc. v. Horoshiy, Inc., supra, when one registers a well-known trademark, “there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights”. Such happens to be the case here. Considering the fact that the disputed domain name incorporates the Complainant’s trademark, that the Respondent was obviously aware of the Complainant’s brand when he registered the disputed domain name, and one cannot see how any use of the disputed domain name could occur in good faith. The Respondent did not convincingly prove otherwise. To tolerate such registrations would in the Panel’s opinion run afool of the objectives of the UDRP.
Consequently, the Panel is of the opinion that the disputed domain name <vodafone.md> has been registered and is being used in bad faith under the 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 <vodafone.md> be transferred to the Complainant.
Date: June 5, 2014