WIPO Domain Name Decision D2003-0700 for dialaphones.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dial-a-Phone Limited v. Mr. Tony Bennett

Case No. D2003-0700

 

1. The Parties

The Complainant is Dial-a-Phone Limited, Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners Solicitors, of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mr. Tony Bennett, Wallington, United Kingdom, with an address also in Banstead, Surrey, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name (the "Domain Name") is registered with R (the "Registrar").

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2003. On September 9, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On September 9, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.

3.2 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").

3.3 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 September 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on October 7, 2003.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 16, 2003. 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 paragraph 7 of the Rules.

 

4. Factual Background

4.1 The Complainant is a private limited company incorporated in the United Kingdom. It carries on business as a supplier of mobile telephones direct to consumers in the UK.

4.2 The Complainant has used the name Dial-a-Phone since at least 1995, when it was incorporated under its present name. The Complainant estimates its turnover for the financial year 2002-2003 at �100 million, and states that it spends approximately �30 million per year on marketing and advertising.

4.3 The Complainant is the owner of six UK and European Community trade mark registrations in various classes for "DIAL-A-PHONE" and related marks, both as word marks and as words in combination with devices (the "Trade Marks"), as follows:

- "DIAL-A-PHONE" in classes 9 and 38, No. 1,380,971 (European Community);
- "DIAL-A-PHONE + device" in classes 9 and 38, No. 2,199,563 (UK);
- "DIAL-A-PHONE" in classes 9 and 38, No. 2,214,692 (UK);
- "DIAL-A-PHONE" in class 35, No. 2,283,914A (UK);
- "DIAL-A-PHONE + device" in class 35, No. 2,283,914B (UK);
- "DIALAPHONE" in classes 9, 35 and 38, No. 2,303,141 (UK).

The applications for the Trade Marks were filed between June 8, 1999 and June 18, 2002.

4.4 The Complainant is also the registrant of several domain names that are similar to the Trade Marks, as follows:

.

These domain names were registered between March 17, 1999 and September 21, 2002, with three of the four registered during 1999.

4.5 The Respondent registered the Domain Name on September 17, 2002.

4.6 A company named D Limited was incorporated on September 25, 2002, with the Respondent as a Director and Company Secretary.

4.7 Legal advisers to the Complainant wrote to D Limited, for the attention of the Respondent, at the addresses provided in the WHOIS database by letter dated October 15, 2002. In that letter, the Complainant requested that D Limited provide undertakings that it change its company name and transfer the Domain Name to the Complainant.

4.8 On October 28, 2002, D Limited changed its name to Nowphones Limited.

4.9 On October 30, 2002, following a telephone call between Nowphones Limited�s legal advisers and the Complainant�s legal advisers, the latter wrote a letter to the former setting out the contents of the telephone discussion between them, including a statement that Nowphones Limited agreed not to use the Domain Name but that Nowphones Limited�s legal advisers required further instructions on the question of canceling or transferring the Domain Name. The Complainant�s legal advisers also offered on behalf of the Complainant the sum of �200 to cover registration and transfer costs in return for transfer of the Domain Name.

4.10 On November 13, 2002, the Complainant�s legal advisers wrote to Nowphones Limited�s legal advisers noting that there had been (discontinued) use of the Domain Name to connect to a website selling mobile telephones direct to customers, and seeking an undertaking to transfer the Domain Name.

4.11 On November 28, 2002, the Complainant�s legal advisers wrote to Nowphones Limited�s legal advisers noting the contents of a telephone conversation in which the transfer of the Domain Name for �2,000 was refused by the Complainant�s legal advisers, and �250 was offered to cover registration and transfer costs.

4.12 Thereafter correspondence between legal advisers continued with no substantial change to either party�s position, ending with a letter dated July 25, 2003, in which Nowphones Limited�s legal advisers stated that "we have no objection to your writing direct [to our clients]".

4.13 At the time of this decision, the Domain Name does not appear to link to a web page controlled by the Respondent or by a third party.

 

5. Parties� Contentions

Complainant

5.1 The Complainant asserts as follows:

(a) The Trade Marks are incorporated into the Domain Name and the addition of the letter "s" is not sufficient to prevent confusing similarity between the Domain Name and the Trade Marks.

(b) Internet users will most likely believe that a website available under the Domain Name is at least sponsored by or affiliated with the Complainant�s trade marks.

(c) The Respondent is not authorised to use the Trade Marks in any way, does not appear to hold any registered marks similar to the Domain Name, is not commonly known by the name comprising the Domain Name and has no legitimate intention to use the name comprising the Domain Name. Therefore, the Respondent has no right or legitimate interest in respect of the Domain Name.

(d) The change in name from D Limited to Nowphones Limited on October 28, 2002, indicates that the Respondent was aware that he has no rights or legitimate interest in respect of the name D Limited or the Domain Name.

(e) The fact that, around the end of October and beginning of November 2002, the Domain Name was used to divert traffic to , the Respondent�s website which is in direct competition with the Complainant, "illustrates that the Respondent has no rights or legitimate interests" in the Domain Name (see Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346).

(f) The widespread use and renown of the Trade Marks mean that the Respondent must have known of the Trade Marks and the Complainant�s business at the time of registration of the Domain Name and it is likely that the Respondent intended to capitalise on the Trade Marks by registering the Domain Name.

(g) The registration of the Domain Name alone had the purpose of disrupting the business of the competitor of the Respondent, constituting bad faith.

(h) The Respondent�s offer to sell the Domain Name for �2,000 indicates in the alternative that the domain name is registered primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant or a competitor of the Complainant for valuable consideration, constituting bad faith.

(i) Further, following the decision in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), in the circumstances the Respondent can make no good faith use of the Domain Name.

(j) Further, an investigation of the WHOIS results for the Domain Name may lead to press reports that the Respondent�s former business has gone into liquidation and is being investigated by the Metropolitan Police Fraud Squad, creating a likelihood of association with the Complainant and a risk of damage to the Complainant�s name and goodwill and the Trade Marks.

5.2 The Complainant requests that the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.

Respondent

5.3 The Respondent has made no formal substantive reply to the Complainant�s contentions.

 

6. Discussion and Findings

Introduction

6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.

6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

6.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".

Identical or Confusingly Similar

6.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Nameis identical or confusingly similar to a trade mark in which it has rights.

6.5 The Complainant relies upon the Trade Marks. Four of these are word marks for "Dial-a-Phone" or "Dialaphone", the priority date for each of which fell prior to the date of the registration of the Domain Name. These word marks are together referred to hereafter in this decision as the "Word Marks".

6.6 The Domain Name comprises the Word Marks and differs solely to the extent of the addition of the letter "s" (and the necessary relevant .com or . suffix).

6.7 The Panel holds that the addition of the letter "s" to the phrase "Dialaphone" is insufficient in this case to prevent the Domain Name from being confusingly similar to the Word Marks. The Panel also holds that the lack of the hyphens between "Dial", "a" and "Phone" in the Domain Name (as opposed to the hyphens which appear in most of the Word Marks) does not affect the question of confusing similarity in this case.

6.8 The Panel therefore finds that the Domain Name is confusingly similar to the Word Marks.

6.9 Given the Panel�s finding in relation to the Word Marks, it is not necessary for the Panel to consider the question of confusing similarity in relation to the two remaining Trade Marks relied upon by the Complainant.

Rights or Legitimate Interests

6.10 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.

6.11 The Complainant asserts and the Panel finds that at no time has the Respondent been authorised to use the Complainant�s Trade Marks.

6.12 The Complainant further asserts that the Respondent has no rights or legitimate interest in the Domain Name as it "does not appear to hold any registered trade marks which are identical or similar to the domain name, is not commonly known by this name and has no legitimate intention to use this name". However, it is the Complainant�s case that a company of which the Respondent is Director and Company Secretary was registered in England and Wales with the name D Limited. It appears that it was only following the demand of the Complainant�s solicitors that the name of this company was changed on October 28, 2002, to Nowphones Limited. The Complainant suggests that this change of name was a "clear indication that the Respondent was completely aware that he has no legitimate rights or interests in the company name D Limited or the [D]omain [N]ame". The Panel accepts that this is indeed an indication but no more than that. It is not of itself sufficient to justify a finding of no legitimate rights and interests.

6.13 The Complainant then relies upon the decision in Ticketmaster Corporation v. Woofer Smith (WIPO Case No. D2003-0346) as support for the proposition that the use of a domain name that is confusingly similar to the relevant trade marks of the Complainant "illustrates that the Respondent has no rights and interests". Ticketmaster was a case where the respondent who had at no time traded under the name of the complainant used a domain name that incorporated the complainant�s name with a slight misspelling in order to attract customers to a competing site. The Panel has no doubt that an entity that engages in such activities has no rights or legitimate interests in the "misspelt" domain name. As was held in AltaVista Company v. OFEZ et al (WIPO Case No. D2000-1160), use of domain names with slight misspellings "to attract Internet users to other directly competitive sites is not legitimate use of a domain name".

6.14 However, the situation currently before the Panel is slightly different from that faced in Ticketmaster and AltaVista. This is a case where there appears to have been at least some (albeit brief) use of the Domain Name as the name of the business. Does this make a difference? In the view of the Panel it depends upon why the business name Dialaphones was chosen in the first place. If it was with the sole or predominant purpose of diverting traffic, then the answer is no. For the reasons that are explained later on in this decision in the context of the issue of bad faith, the Panel finds as a matter of fact that is so in this case. Accordingly, the Panel finds that the Complainant has made good its assertion that the Respondent has no legitimate rights and interests in the domain name.

Registered and Used in Bad Faith

6.15 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent, and has been used, in bad faith.

6.16 A non-exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the Policy. The Complainant appears to rely upon paragraphs 4(b)(i), (iii) and (iv) of the Policy, the reasoning in the decision in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and an additional argument based on unrelated behavior of the Respondent.

6.17 Paragraph 4(b)(i) refers to:

"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".

6.18 The Domain Name was registered on September 17, 2002. The Panel accepts the Complainant�s contention that the Respondent would have known of the use of the name Dial-a-Phone for the Complainant�s business when he registered the Domain Name. In coming to its conclusion the Panel considers of particular importance the facts that:

(a) the word "Dialaphones" is a made up word with no credible meaning in any language other than as a misspelt version of the Complainant�s business name,

(b) the conclusion that this is a misspelt version of the Complainant�s business name is reinforced by the fact that when split into its constituent parts "Dial", "a" and "phones", the word "Dialaphones" does not make grammatical sense,

(c) the Complainant has put a large quantity of resources into advertising its business,

(d) the Respondent and the Complainant�s business are both located in the United Kingdom, and

(e) it is apparent from the copies of the website of the Respondent�s business (at "www.") provided with the Complaint that the Complainant and the Respondent operate in precisely the same field.

6.19 In a telephone call of November 20, 2002, the Respondent offered to transfer the Domain Name for a purchase price of �2,000. Clearly this was more than the "documented out-of-pocket costs directly related to the domain name".

6.20 However, it is notable that the Respondent did not contact the Complainant to offer the Domain Name for sale, and that the offer was made only when the Complainant made attempts to persuade the Respondent to transfer the Domain Name to it. This is in contrast with the readiness of the Respondent to use the Domain Name by linking it to his website at . It therefore appears that the purpose of registration was not "primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant" (emphasis added).

6.21 In the circumstances, the Panel finds that the circumstances required under paragraph 4(b)(i) of the Policy have not been successfully made out.

6.22 Paragraph 4(b)(iii) of the Policy refers to a situation where:

"you have registered the domain name primarily for the purpose of disrupting the business of a competitor".

6.23 The Complainant relies in this respect upon the Respondent�s use of the Domain Name to link to the Respondent�s website at "www.". As the Panel has already stated above this website operates in precisely the same field as the Complainant and therefore is in direct competition with the Complainant. It is clear that the registration and use of a domain name that takes the form of a misspelt version of a trade mark for the purpose of directing traffic to a competing website can constitute disruption to the business of a competitor within the scope of paragraph 4(b)(iii). UDRP decisions in which this has been held to be the case include Express Messenger Systems, Inc. v. Golden State Overnight (WIPO Case No. D2001-0063), Aero Products International, Inc. v. Mattress Liquidation Specialists (WIPO Case No. D2002-0921) and Ticketmaster Corporation v. Woofer Smith (WIPO Case No. D2003-0346).

6.24 Of course, merely showing that a domain name has been registered for the purpose of disrupting the business of a competitor is not sufficient. A Complainant must show that such disruption was the primary purpose of the Respondent. However, given the Panel�s finding above that the Domain Name was chosen in full knowledge of the Complainant�s mark it is difficult to come to any other conclusion in this case. In the circumstances the Panel finds that the circumstances described under paragraph 4(b)(iii) of the Policy have been successfully made out by the Complainant.

6.25 Paragraph 4(b)(iv) of the Policy refers to a situation where:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

6.26 Because of the reputation of the Word Marks created by the Complainant�s significant spending on advertising, the similarity of the Domain Name to the Word Marks and the fact that the Respondent�s and the Complainant�s businesses are both in the same field and both in the UK, the Panel holds that there is a likelihood of confusion between the Domain Name and the Word Marks. For the reasons already given above the Panel is also satisfied that the Respondent registered and used the Domain Name with the intention of attracting Internet users to the Respondent�s website.

6.27 There is an argument that, upon reaching the Respondent�s website at "www.", a user would not be confused as to the identity of the owner of the website even if he had reached it because of confusion between the Domain Name and the Trade Marks, and that therefore there would be no likelihood of confusion. However, the cases referred to at paragraph 6.23 above include instances where any likely confusion was unlikely to remain once the respondent�s site had been reached, and such instances in those cases were nevertheless held to amount to bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Panel concurs with those decisions and accordingly holds that the circumstances required by paragraph 4(b)(iv) of the Policy have also been successfully made out.

6.28 The Complainant asserts that the reasoning in the decision in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) applies to the present case. That decision referred to the application of paragraph 4(a)(iii) to circumstances in which the respondent took no positive action in relation to a domain name registered in bad faith. Considering the Complainant�s assertion on this point would require an analysis of whether the argument applied in the Telstra decision is strictly applicable to the circumstances in the present case. It is, however, unnecessary for the Panel to do so because of the decisions reached in relation to paragraphs 4(b)(iii) and (iv) of the Policy above.

6.29 Finally, the Panel turns to the Complainant�s assertion that the press reports of an investigation into the Respondent�s former business by the Metropolitan Police Fraud Squad risk damaging the Complainant�s name, trade marks and goodwill. Frankly, it is difficult to see what point the Complainant is trying to make here. The fact that a complainant can show that damage has flowed from a registration is not by itself sufficient to satisfy paragraph 4(a) of the Policy.

6.30 The Panel accepts that there may be some cases where the fraudulent behavior of a respondent otherwise than in the registration process may constitute evidence that is pertinent to the question of whether the respondent�s registration and use of a domain name was in bad faith. However, given the seriousness of an allegation of fraud the Panel would expect in such a case the Complainant to provide substantive evidence that supported such an assertion. Innuendo, speculation or reports of investigation such as those mentioned by the Complainant are not good enough. Further, the Panel would expect the link between the alleged fraudulent behavior and the alleged bad faith registration and use to be fully and cogently explained. No such explanation is provided by the Complainant in this particular case.

6.31 To be fair to the Complainant, the Complaint does not expressly assert that these reports and the damage allegedly suffered are evidence of bad faith. However, if this is so, the Panel questions why these matters were brought to its attention in the first place. In the circumstances, the Panel wishes to make it clear that in coming to its conclusions in this case it has taken no account of these allegations.

6.32 In summary, taking all of the foregoing into account, the Panel is persuaded that, for the reasons set out in paragraphs 4(b)(iii) and (iv) of the Policy, the Domain Name has been registered and used in bad faith.

 

7. Decision

7.1 For all of the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:

(a) the Domain Name is confusingly similar to the Word Marks;

(b) the Respondent does not have any rights to or legitimate interest in the Domain Name; and

(c) the Domain Name was registered and has been used in bad faith.

7.2 Therefore, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

 

 

Matthew S. Harris
Sole panelist

Dated: October 30, 2003

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