WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pelephone Communications Ltd. v. Golan Thomas Case No. D2010-0187 1. The Parties
The Complainant is Pelephone Communications Ltd. of Givatayim, Israel, represented by E.S. Shimron, I. Molho, Persky & Co. Law Offices, Israel.
The Respondent is Golan Thomas of Holon, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with W Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2010. On February 10, 2010, the Center transmitted by email to W Inc. a request for registrar verification in connection with the disputed domain name. On February 11, 2010, W Inc. 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 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 February 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Response was filed with the Center on March 14, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 18, 2010. 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.
On March 21, 2010 the Complainant filed a supplemental filing in response to the Respondent's submissions. 4. Factual Background
The Complainant, Pelephone Communications Ltd. (hereinafter the “Complainant”), is a telecommunication company in Israel, established in the late 1980s. The Complainant is currently one of three major Mobile Network Operators in Israel, with approximately 2.7 million subscribers.
The Complainant is the owner of multiple trademark registrations for the mark PELEPHONE in Israel. For example: Israeli trademark registration no. 60716 – PELEPHONE, with the registration date of January 29, 1987; Israeli trademark registration no. 60713 – PELEPHONE and design (in Hebrew characters), with the registration date of January 29, 1987; Israeli trademark registration no. 203438 – PELEPHONE with the registration date of January 22, 2009; Israeli trademark registration no. 203437 – PELEPHONE (in Hebrew characters) with the registration date of January 22, 2009; and many others.
The Complainant expended significant resources throughout the years in promotion and advertisement throughout Israel. As a result of extensive use and publicity, the PELEPHONE trademark became widely-known and is solely associated with the Complainant. The PELEPHONE trademark also became well-known and well-recognized by the general public, and has generated significant goodwill.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names that contain the name PELEPHONE. For example: and . The Complainant is using these domain names in connection with its activities.
The Respondent, Golan Thomas (hereinafter the “Respondent”), is a student in London, who is planning on using the disputed domain name to store personal contact information such as phone numbers, address details, website links, etc.
The Respondent registered the disputed domain name on March 24, 2009.
The disputed domain name does not currently resolve to an active webpage. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the PELEPHONE trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole.
The Complainant further argues that it has exclusive rights to the PELEPHONE trademark and that this trademark is widely recognized in connection with the Complainant and the Complainant's operations.
The Complainant further argues that the PELEPHONE mark is a unique mark, which has no secondary meaning in English, Hebrew or any other European language, to the best of the Complainant's knowledge.
The Complainant further argues that the Respondent is not making a legitimate use of the PELEPHONE mark. The Complainant indicates that the lack of use of the disputed domain name since it was registered indicates the Respondent's bad faith.
The Complainant further argues that the Respondent concealed his identity under an identity shield. The Complainant asserts that this indicates the Respondent's bad faith.
The Complainant further argues that the Respondent was aware of its existence and of its PELEPHONE mark and products at the time he registered the disputed domain name.
The Complainant further argues that the Respondent registered the disputed domain name with intent to produce commercial gain, by selling the disputed domain name to the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent argues that the “.tel” gTLD (Generic Top Level Domain) is designed to serve as the gTLD for websites, which store personal contact information. The Respondent argues that he had registered the disputed domain name for personal use purposes.
The Respondent further argues that “pelephone” is a commonly used word for cell-phones, irrespective of the brand of the cell-phone or of the service provider.
The Respondent further argues that the lack of use of the disputed domain name is not an indication of bad faith.
The Respondent further argues that the identity shield, which was placed in the WhoIs database, is not an indication of bad faith, as he is entitled to privacy on the Internet.
The Respondent further argues that his use of the disputed domain name is a legitimate noncommercial and fair use. The Respondent further argues that he does not intend on gaining a commercial benefit from the disputed domain name nor does his action mislead consumers.
The Respondent argues that he has no intent to sell the disputed domain name to the Complainant nor has he approached the Complainant in this matter.
For all of the above reasons, the Respondent requests that the Complaint be denied. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The PELEPHONE trademark is registered in the name of the Complainant in Israel. For example: Israeli trademark registration no. 60716 – PELEPHONE, with the registration date of January 29, 1987; Israeli trademark registration no. 60713 – PELEPHONE and design (in Hebrew characters), with the registration date of January 29, 1987; Israeli trademark registration no. 203438 – PELEPHONE with the registration date of January 22, 2009; Israeli trademark registration no. 203437 – PELEPHONE (in Hebrew characters) with the registration date of January 22, 2009; and many others.
The disputed domain name consists of a repetition of the PELEPHONE trademark in its entirety and the gTLD “.tel”.
The dominant element in the disputed domain name is the Complainant's PELEPHONE trademark, which is incorporated in its entirety.
The addition of the gTLD “.tel” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.tel” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Furthermore, as the Complainant is a well-known telecommunication company in Israel, the gTLD “.tel” may imply a connection between the domain name owner and the telecommunication services offered by the Complainant under the PELEPHONE trademark. Thus, the gTLD “.tel” further does not serve to distinguish the disputed domain name from the Complainant's PELEPHONE trademark.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds the Complainant has established a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PELEPHONE trademark, or a variation thereof.
The Respondent alleged that he has legitimate interest in the disputed domain name as the word “pelephone” has become a commonly used word for cell-phones, irrespective of the brand of the cell-phone or of the service provider.
The panel sites the following decision with approval:
“We believe that the courts or regulatory authorities are better able to grapple with the question of the generic nature of words and phrases, and the acquisition of secondary meaning. In addition, the summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the majority here accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondent's assertions that the TRASHY LINGERIE mark is descriptive or generic and without analyzing secondary meaning” (402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie,WIPO Case No. D2000-1223).
Accordingly, the Panel finds that the existence of a valid registration of a trademark is sufficient proof that the trademark is not of a generic nature.
The Respondent also alleged that he is making valid personal use of the disputed domain name that is not connected or affiliated with the Complainant.
The Policy paragraph 4(c) provides three nonexclusive methods for a respondent to demonstrate that it has rights or a legitimate interest in a domain name:
(i) Before any notice to the domain name registrant of the dispute, the registrant's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The domain name registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) The domain name registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent alleged that he is making a legitimate noncommercial and fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel notes that the disputed domain name is passively held. Previous panels have asserted that “absent some contrary evidence from Respondent, passive holding of a domain name does not constitute ‘legitimate non-commercial or fair use'” (See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Euromarket Designs, Inc. v. Domain For Sale VMI,WIPO Case No. D2000-1195). The Respondent did not submit contrary evidence that indicates his fair noncommercial use or intended use of the disputed domain name. Accordingly, the Panel finds that the Respondent did not overcome the burden of proof and did not show that he has rights or legitimate interests in respect to the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name after the Complainant registered its PELEPHONE trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for its PELEPHONE trademark at least since the year 1987. It is strongly suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
It has been ruled that it is not necessary for a disputed domain name to be associated with an active website in order to find that the use of the website is in bad faith. Previous WIPO panels have held that the bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion. See CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080.
The disputed domain name is virtually identical to the Complainant's trademark. Previous WIPO panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site”. See: E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095. To this end, prior WIPO panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. See Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
On the other hand, the Panel agrees with previous UDRP panel decisions that a respondent may use a privacy protection service such as WhoIs Identity Shield for legitimate purposes. (See, Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.) The Panel therefore finds that the Respondent's use of the identity shield does not, without more cognizable evidence, demonstrate bad faith.
Nevertheless, and due to the above discussed circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all 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 be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: March 29, 2010
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