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 Bora Karakol of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Şti. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2014. On March 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant replied by email confirming its mutual jurisdiction selection on March 14, 2014.
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").
On March 14, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On March 14, 2014, the Respondent requested Turkish to be the language of the proceedings. On March 17, 2014, the Complainant requested English to be the language of the proceedings.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Turkish, and the proceedings commenced on March 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2014. The Respondent filed its Response on April 4, 2014.
The Center appointed Kaya Köklü as the sole panelist in this matter on April 16, 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 one of the largest mobile communication network operators in the world. It has more than 400 million mobile customers worldwide. It is also the sponsor of Besiktas Jimnastik Kulübü (BJK) Istanbul, one of Turkey's major soccer teams. The new stadium of BJK Istanbul will bear the name "Vodafone Arena", which is due to open for the 2014-2015 football season in Turkey.
The Complainant is the owner of the famous trademark VODAFONE, which is registered in a large number of jurisdictions, including in Turkey. In total, the Complainant owns nearly 1,400 registered or pending trademarks comprising the invented word "Vodafone". The first trademark registrations date back to the 1980's.
On November 6 and 25, 2013 the Complainant further applied for trademark protection in Turkey concerning the term "Vodafone Arena". At the time of the Decision, both trademark applications were still pending and, hence, not yet registered by the Turkish Patent Institute, which is the competent authority to register trademarks in Turkey.
Furthermore, the Complainant holds and operates more than 200 domain names consisting exclusively of the trademark VODAFONE and more than 400 domain names in which VODAFONE as the Complainant's mark is used in combination with other words and/or numbers, many of them registered already in the 1990's.
The Respondent is an individual located in Istanbul, Turkey. The disputed domain name was created in the name of the Respondent on June 14, 2013.
On January 3, 2014, the Complainant sent a cease and desist letter to the Respondent, asking for the transfer of the disputed domain name, in exchange for reasonable reimbursement for its costs of registering.
The Respondent replied by email communication, stating that it is not fluent in English language and asked the Complainant to contact his wife, who is alleged to be an attorney and able to read, write and communicate in English. The contact was made with the Respondent's wife, but the Parties could not agree on a transfer of the disputed domain name without payment that exceeds out-of-pocket expenses.
The Panel notes that at the time of the Decision, the disputed domain name was inactive. 5. Parties' Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
It is of the opinion of the Complainant that the disputed domain name is either identical or confusingly similar to the VODAFONE trademarks owned by the Complainant.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that it has never granted a license or any other permission to the Respondent to use its trademark VODAFONE. The Complainant further alleges that the Respondent has never used and does not intend to use the VODAFONE trademark in connection with a bona fide offering of goods and services.
Finally, the Complainant is of the opinion that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that due to the notoriety of the VODAFONE trademark, the Respondent was or should have been aware of the VODAFONE trademark when it registered the disputed domain name. B. Respondent
The Respondent requests the denial of the Complaint.
With regard to the Complainant's trademark rights in VODAFONE, the Respondent believes that there is neither identity nor confusing similarity between the trademark and the disputed domain name. It is particularly argued that the use of the trademark VODAFONE with a generic pre- or suffix within a domain name must lead out of the scope of trademark protection as otherwise the freedom of the public to express itself would be affected unreasonably.
With regard to the Complainant's trademark applications for VODAFONE ARENA, it is of the opinion that the Respondent can successfully rely on priority rights concerning the disputed domain name as the respective trademark applications by the Complainant in Turkey were filed in November 2013 and, hence, almost 5 months later than the creation of the disputed domain name by the Respondent.
Also, the Respondent argues that it has not registered the disputed domain name in bad faith. It is alleged that the disputed domain name has been created solely for the purpose of establishing a fan website. The delay in doing so is justified by the Respondent by referring to the late opening of the new BJK stadium in Istanbul and its fear of getting into legal conflicts.
Finally, the Respondent is of the opinion that the Complainant does not need to own the disputed domain name as it already owns the domain name . 6. Discussion and Findings
The Panel determines in accordance with the Complainant's request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language. Although the language of the Registration Agreement is the Turkish language, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint.
The determination of the language of theses administrative proceedings is mainly based on the following reasons.
First, the Panel has noted that the Center received an email communication by the Respondent in good English language on March 14, 2014, indicating that he – contrary to his assertion – is well able to read and write in English.
Even if not, the Respondent stated himself that in pre-trial negotiations with the Complainant he was represented by his wife, who is alleged to be an attorney and apparently able to read, write and communicate in English language. The Panel therefore presumes that the Respondent has at least its wife as a legal expert in the background who is well able to read and write in English. The assumption that the Respondent is supported by his wife is supported by the fact that the Respondent's well-drafted Response refers and considers all main arguments raised in the Complaint, although being drafted in English.
Last but not least, the Panel considers the notoriety of the VODAFONE trademark, which indicates that this is a typical cybersquatting case, which the UDRP was designed to time and cost efficiently address. Moreover, the Respondent was given the opportunity to file a Response in Turkish, which he did.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a Decision being rendered in English language.
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and
(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.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the VODAFONE trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in VODAFONE. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks comprising VODAFONE in many jurisdictions worldwide, including in Turkey.
Although not identical, the disputed domain name fully incorporates the Complainant's VODAFONE trademark.
The disputed domain name differs from the VODAFONE trademark only by the addition of the generic term "arena". In the Panel's view, the addition of such generic term does not negate the confusing similarity between the Complainant's trademark VODAFONE and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant's VODAFONE trademark. On the contrary, the full inclusion of the Complainant's trademark in combination with the generic term "arena", which directly refers to the sponsoring of the new BJK stadium by the Complainant, even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
The fact that the Complainant's trademark applications for VODAFONE ARENA in Turkey are still pending is immaterial here as the Panel finds that the disputed domain name is confusingly similar to the Complainant's already existing trademark VODAFONE.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant on this point as well, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's VODAFONE trademark in the disputed domain name.
The Respondent, however, failed to provide any indication in his Response that he is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. In this regard, the Panel considers the Respondent's mere allegation that the disputed domain name has been created for the sole purpose of establishing a fan website as not convincing and a simple self-assertion that is not supported with any material evidence (the Respondent did not even bother to demonstrate an indication that he spent any efforts to establish such a fan website). In any event, the Panel is of the view that in the present case, such alleged purpose would likely not create a right or legitimate interest in the disputed domain name. Indeed, given the circumstances of this case, the Panel finds it hard to conceive of any use of this trademark in combination with the descriptive term "arena" by the Respondent, which would qualify as a legitimate use. The trademark VODAFONE is an invented term without a specific meaning, neither in English nor in Turkish language, and has worldwide notoriety.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers with the Complainant's VODAFONE trademark, apparently for commercial gain or any other illegitimate benefit.
The Panel believes that the Respondent must have been well aware of the Complainant's VODAFONE trademark when it registered the disputed domain name in June 2013. At the date of creation of the disputed domain name, the Complainant's VODAFONE trademark was already well known worldwide, including in Turkey, for quite a long time.
The Panel is convinced that the Respondent created the disputed domain name in expectation that the Complainant would eventually use its trademark VODAFONE in combination with the term "arena" and that he would then at least then be able to gain illegitimate benefit - either by putting pressure on the Complainant to pay money for the transfer of the disputed domain name or by misleading Internet users, who are searching for the Complainant's official website.
The lack of willingness to transfer the disputed domain name in return for a compensation of out-of-pocket expenses, although being asked for prior to these administrative proceedings, is in the Panel's view another strong indication for the Respondent's malicious intent.
As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel's views in this respect.
Taking all facts of the case into consideration, the Panel is of the opinion that this a typical cybersquatting care, which the UDRP was designed to address.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Kaya Köklü
Sole Panelist
Date: April 27, 2014
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