The Complainant is Vodafone Group PLC of Newbury, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.
The Respondent is Petra Havlova of Prague, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with ASNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to ASNIC a request for registrar verification in connection with the disputed domain name. On December 15, 2011, ASNIC 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 the 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 December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Response was filed with the Center on January 9, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on January 16, 2012. 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
Based on the written evidence submitted by the Parties, the Panel finds the following to be the facts of this case:
The Complainant is a large mobile network operator organized under the laws of the United Kingdom.
The Complainant is the owner of the well-known VODAFONE trademark. The 2011 BrandFinance Global 500, which is the world’s most comprehensive brand value league table, ranked VODAFONE as the 5th most valuable brand in the world.
The Complainant owns trademark registrations in the VODAFONE trademark in many countries around the world, including a Czech Republic registration No. 255510 dated September 5, 2003, a Czech Republic registration No. 255511 dated September 5, 2003, a United States registration No. 2145714 dated March 24, 1998, a United Kingdom registration No. 1223053 dated January 17, 1990, and a European Union Community Trade Mark registration No. 134890 dated April 1, 1996.
The Complainant also owns several domain names incorporating its well-known trademark. Among its domain names are , , , , , and , which are used to promote the Complainant’s services internationally. The domain name is owned and operated by the Complainant’s wholly owned subsidiary company Vodafone Czech Republic a.s.
The Respondent is Petra Havlova, a natural person who resides in the Czech Republic. The Respondent registered the Domain Name on August 27, 2009. For some period of time, the Domain Name redirected to a website offering products/services of Telefonica O2 Czech Republic. As of December 21, 2011 the Domain Name redirects to the domain name . The domain name resolves to a website which provides information about musical instruments called “Waterphones” and offers Waterphones for sale. The “www.” website belongs to an individual called Richard Waters who, according to the website to which the Domain Name redirects, invented the Waterphone instrument.
On September 2, 2011, the Complainant sent an email to the Respondent. In its email, the Complainant queried the Respondent’s actions in relation to its registration and use of the Domain Name in connection with services of Telefonica O2 Czech Republic. The Complainant advised the Respondent about its rights in the VODAFONE trademark and invited the Respondent to comment on its use of the Complainant’s registered trademark. The Complainant further demanded that the Respondent discontinue offering Telefonica’s services and threatened legal actions to remedy the situation. Nine days later the Respondent replied to the Complainant’s email. The Respondent claimed that it made several attempts to get permission to use the trademark from the Complainant to no avail. The Respondent expressed willingness to negotiate the transfer or lease of the Domain Name to the Complainant and suggested to hold a meeting between the parties in a neutral place. The Respondent insisted that no legal representatives of the parties would be allowed at the meeting. Some time later, the parties had a meeting concerning the future use of the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is one of the largest by revenue mobile communications companies operating across the globe providing a wide range of communications services. The Complainant alleges that it is the owner of the well-known VODAFONE trademark. According to the Complainant, previous UDRP panelists stated that the VODAFONE trademark is, without any doubt, a well-known trademark. The Complainant states that the VODAFONE trademark has become well-known in many countries including the Czech Republic and the United Kingdom. The Complainant alleges that it has developed an enormous amount of goodwill in the mark making it an extremely valuable corporate asset.
The Complainant alleges that the Domain Name is identical or confusingly similar to its VODAFONE trademark.
The Complainant claims that it owns trademark registrations in the VODAFONE trademark in many countries around the world, such as the Czech Republic, the United States, the United Kingdom and the European Union. As a result, the Complainant claims that it has rights in the VODAFONE trademark.
The Complainant states that it owns several domain names incorporating its well-known trademark. Among its domain names are , , , , , and , which are used to promote the Complainant’s services internationally. The , domain name is owned and operated by the Complainant’s wholly owned subsidiary company Vodafone Czech Republic a.s. According to the Complainant, since 2005 the Vodafone brand has been used in the Czech Republic to promote Vodafone’s business, products and services.
The Complainant further alleges that the Domain Name incorporates the VODAFONE mark in its entirety.
The Complainant maintains that the mere addition of a generic top-level domain (“gTLD”) or a country code top-level domain (“ccTLD”) does not prevent a finding of confusing similarity. As a result, the Complainant states that the addition of the ccTLD “.as” is without legal significance since the use of a ccTLD is technically required to operate the domain name.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant alleges that the Respondent has no connection or affiliation to the Complainant and has not received any express or implied license or authorization to use the VODAFONE trademark in any manner. According to the Complainant, the Respondent has no trademark registrations for the VODAFONE trademark anywhere in the world and is not known by the name “Vodafone”. The Complainant further alleges that the Respondent is not using the Domain Name in connection with bona fide offering of goods and services, nor is it making a legitimate non-commercial or fair use of the Domain Name. The Complainant alleges that since December 21-23, 2011, the Respondent has been redirecting the Domain Name to , which cannot be considered to be an act that legitimizes the Respondent’s earlier registration and use.
The Complainant asserts that the Domain Name was registered and has being used in bad faith. The Complainant claims that the Domain Name was registered in bad faith because the Respondent has no right to use the VODAFONE mark.
The Complainant further alleges that the Respondent’s conduct evidences registration and use of the Domain Name in bad faith. The Complainant claims that on September 2, 2011, it contacted the Respondent by email. The Complainant claims that its letter outlined the unacceptable nature of the Respondent’s use of the Domain Name, which at that time redirected to a website offering products/services of Telefonica O2 Czech Republic, a direct competitor of the Complainant.
The Complainant alleges that nine days later, the Respondent replied to the Complainant’s email and requested a meeting with Complainant’s representatives. The Complainant claims that the Respondent insisted on no legal representatives being present at the meeting. The Complainant states that during the meeting, the Respondent offered to the Complainant to rent the Domain Name for CZK 10,000, which is approximately EUR 400, or to sell the Domain Name to Vodafone for CZK 300,000, which is approximately EUR 12,000. The Complainant alleges that later during that meeting, the Respondent revised her offer and reduced the sale price to CZK 200,000. According to the Complainant, the Respondent registered the Domain Name for the purpose of selling the Domain Name to the Complainant.
The Complainant also claims that the Respondent represented that she could offer the Domain Name to a third party and/or host pornographic material on the website to which the Domain Name resolved. The Complainant invited the Panel to note a Domain Name registration agreement concluded by the Respondent that allegedly provides for the registrant’s warranty and representation that [the Registrant] “is not seeking to use the domain name for any purpose which may be offending to values and morals of American Samoa, including without limitation, pornographic or racist material.”
The Complainant alleges that the Respondent registered the Domain Name to prevent the Complainant from reflecting its company name in American Samoa and/or to confuse those searching for the Complainant’s website in the Czech Republic. In the Complainant’s view the Respondent’s registration of the Domain Name causes confusion between the Respondent’s use and the legitimate interests of the Complainant’s subsidiary named Vodafone Czech Republic a.s. The Complainant states that the factors that lead to the finding that the Domain Name was registered in bad faith also lead to the conclusion that the Domain Name was being used in bad faith because no conceivable use which could make of the Domain Name would be use in good faith.
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent tells a different story. The Respondent claims that it purchased the Domain Name more than two years ago. According to the Respondent, during 2009-2010 she made several futile attempts to contact Vodafone Czech Republic a.s. concerning the company’s interest in the Domain Name and inquiring about a possibility to use the Domain Name.
The Respondent alleges that it contacted a Complainant’s employee, who appeared to be the company’s media manager at jan.ksandr@. The Respondent claims that it also sent an inquiry to info@. According to the Respondent, over the course of two years it sent seven emails to the Complainant. The Respondent states that it never received any response to her emails.
According to the Respondent, two years later it renewed the registration of the Domain Name and “ordered e-shop for [its] own activities.” According to the Respondent, it terminated the opening of its shop and redirected the Domain Name to , which is the literal translation of the word “Vodafone”.
Finally, the Respondent alleges that more than two years after the Domain Name registration, it was contacted by Drahomira Berjchova, an attorney for Vodafone CR. According to the Respondent, it responded that [it] “prefer normal communication without lawyers”. Subsequently, the Respondent had a meeting with Tomas Peterka, a representative for the Complainant. However, no solution was reached by the Parties. 6. Discussion and Findings 6.1. Language of the Proceeding.
In its response, the Respondent claimed that it “feel[s] damaged only in the language of only one side”. The Panel’s interpretation of this statement is that the Respondent feels disadvantaged or prejudiced by use of English as the language of the proceeding. The Panel, therefore, finds it necessary to examine whether the Respondent is indeed being treated unfairly.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1
The Panel finds that it is fair and just to conduct this proceeding in English. First, the language of the registration agreement is English. Second, there is no agreement between the parties as to the use of a Czech language as the language of this proceeding. Third, the record of the case demonstrates the Respondent’s apparent ability to understand and communicate in English. Specifically, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in the English language. The Respondent understood those communications and submitted a reply to the Complaint. Although the Respondent does not appear to be completely fluent in English, it can apparently comprehend information in English. Fourth, the Respondent’s Domain Name currently redirects to a website containing content that is entirely in English. Therefore, the Panel finds that the Respondent is not disadvantaged by use of the English language as the language of the proceeding. 6.2. Analysis of the Complaint
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in its case: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy the first element of the Policy, a domain name must be identical or confusingly similar to a trademark in which a complainant has rights.
The Panel finds that the Complainant has rights in the VODAFONE trademark for the purposes of the Policy. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence copies of several trademark registrations in the VODAFONE trademark, including a Czech Republic registration No. 255510 dated September 5, 2003, a Czech Republic registration No. 255511 dated September 5, 2003, a United States registration No. 2145714 dated March 24, 1998, a United Kingdom registration No. 1223053 dated January 17, 1990, and a European Union Community Trade Mark registration No. 134890 dated April 1, 1996. The Panel, therefore, finds that the Complainant has established its rights in the VODAFONE mark.
The Panel also finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark. The Domain Name consists of the word “vodafone” and a suffix “.as,” which is the country code top level domain for American Samoa. It is well established that the addition of the top-level domain suffix or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration. Without the ccTLD “.as”, the Domain Name is identical to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the VODAFONE trademark in which the Complainant has rights.
The first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name. “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”2 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.3
The Complainant alleges that the Respondent has no rights or legitimate interest in the Domain Name, because: 1) the Respondent has no connection or affiliation to the Complainant and has not received any express or implied license or authorization to use the VODAFONE trademark in any manner; 2) the Respondent has no trademark registrations for the VODAFONE trademark anywhere in the world; 3) the Respondent is not known by the name “Vodafone”; 4) the Respondent is not using the Domain Name in connection with bona fide offering of goods and services, nor is it making a legitimate non-commercial or fair use of the Domain Name; 5) prior to December 21-23, 2011, the Domain Name redirected to a website offering products/services of Telefonica O2 Czech Republic, a direct competitor of the Complainant; 6) since December 21-23, 2011, the Respondent has been redirecting the Domain Name to , which cannot be considered to be an act that legitimizes the Respondent’s earlier registration and use.
In support of its allegations, the Complainant submitted copies of its letter to the Respondent, in which the Complainant queried the Respondent’s actions in relation to her registration and use of the Domain Name in connection with services of Telefonica O2 Czech Republic. The Complainant advised the Respondent about its rights in the VODAFONE trademark and invited the Respondent to comment on her use of the Complainant’s registered mark. The Complainant further demanded that the Respondent discontinue offering Telefonica’s services and threatened legal actions to remedy the situation. In addition, the Complainant presented a copy of the Respondent’s reply to its email communication. The Respondent claimed that it made several attempts to get permission to use the mark from the Complainant to no avail. The Respondent expressed willingness to negotiate the transfer or lease of the Domain Name and suggested a meeting in a neutral place without presence of legal representatives of both sides.
Based on the record, the Panel finds that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Once a complainant makes such prima facie case, “the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”4 Pursuant to paragraph 4(c) of the Policy, the Respondent may satisfy its burden by demonstrating any of the following: i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods and services; or ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or iii) the Respondent 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 of service mark at issue.
The Panel finds that the Respondent failed to show existence of rights or legitimate interests in the Domain Name. The Respondent claims that it made several futile attempts to procure permission or authorization from the Complainant to use the Domain Name. This shows that the Respondent was aware that it was necessary to obtain the Complainant’s permission to use the VODAFONE trademark, that she had no rights in the trademark, and that she had no authorization from the Complainant to use the VODAFONE trademark. In addition, the Respondent does not dispute that it was not known by the Domain Name. Further, Respondent admits that it did not use of the Domain Name for two years.
Nor does the Respondent show that it made a legitimate noncommercial or fair use of the name by admitting that it “ordered e-shop for [the Respondent’s] own activities.” It appears likely that the Respondent received financial remuneration for the promotion of Telefonica’s services. Furthermore, the use of the name of one mobile company to offer the services of another mobile company by the Respondent who has nothing to do with either of them does not constitute bona fide offering of goods or services. Nor does the Respondent’s offer to sell or to lease the Domain Name to the Complainant qualify as a legitimate non-commercial use.
Finally, the fact Domain Name currently redirects to “,” a website that sells musical instruments called “Waterphones”, does not improve the Respondent’s position. The Respondent states that “waterphone” is a literal translation of vodafone. Even assuming that the Respondent is trying to make a claim that she has legitimate rights in the Domain Name that is comprised of dictionary words, her argument fails. First, it is not clear in which language “waterphone” means “vodafone” and, as a result, that is comprised of dictionary terms. Second, the Respondent failed to provide any explanation of what relation, if any, she has to the business that sells Waterphones. According to the website printout, the website belongs to an inventor and entrepreneur. Redirection of the Domain Name to a third party’s non-infringing domain name does not create legitimate use of the Domain Name, nor does it legitimize the Respondent’s prior actions. It is a consensus view among UDRP panelists that if the Complainant “makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase.” Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the Domain Name.
Therefore, the Panel finds that the Complainant established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires a positive finding that both the registration and use were in bad faith. Paragraph 4(b) of the Policy provides an open list of the circumstances that shall be evidence of the registration and use of a domain name in bad faith. The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the Policy. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant alleges and the Respondent does not dispute that the Respondent knew about the Complainant’s VODAFONE trademark and that it had no permission to use it. The Respondent’s attempts to obtain the Complainant’s permission to use the VODAFONE trademark after the fact of the registration of the Domain Name does not show that the Domain Name was registered in good faith. Furthermore, the Complainant denies that these attempts ever took place. Specifically, the Complainant’s employee whom the Respondent allegedly contacted has no recollection of such contact. Finally, the Respondent admits that while knowing it had no right to use the Domain Name, it renewed its registration to derive financial gain from the Domain Name’s use. This is evidence of bad faith registration.
The Complainant claims that the Respondent registered the Domain Name to prevent the Complainant from reflecting its company name in American Samoa and/or to confuse those searching for the Complainant’s website in the Czech Republic, which belongs to the Complainant’s subsidiary Vodafone Czech Republic a.s. The Respondent does not respond to this allegation. The Panel can find no other plausible explanation as to why a Czech Republic resident who has no business in American Samoa registered the domain name except to cause confusion between the Domain Name and the Complainant’s subsidiary in the Czech Republic Vodafone Czech Repiblic a.s. This is additional evidence of the Domain Name registration in bad faith.
The Complainant claims that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark 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. Given the similarity between the Complainant’s subsidiary’s name and the Domain Name, it is likely that potential Czech Republic consumers will be confused into believing that the domain name is affiliated with, or endorsed by, the Complainant. Because the Respondent used the Domain Name to resolve to the website that offered services of the Complainant’s competitor, it is probable that she derived some commercial gain from it. This is evidence of bad faith use of the Domain Name.
The Panel finds it likely that the Respondent registered the Domain Name for the purpose of selling it to the Complainant. The Complainant alleges that the Respondent registered the Domain Name for the purpose of selling the Domain Name to the Complainant. It is a consensus view among UDRP panelists that “[t]he legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith and panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort.”5 Here, the Complainant alleges that during the meeting between the Respondent and the Complainant’s representative, the Respondent offered to rent to the Complainant the Domain Name for CZK 10,000, which is approximately EUR 400, or to sell the Domain Name to Vodafone for CZK 300,000, which is approximately EUR 12,000. The Complainant alleges that later during that meeting, the Respondent revised her offer and reduced the sale price to CZK 200,000. Further, the Complainant claims that the Respondent represented that it could offer the Domain Name to a third party and/or host pornographic material on the website to which the Domain Name resolved.
The Panel finds it likely that negotiations between the parties indeed took place and that the Respondent tried to obtain a financial gain from the Domain Name at the Complainant’s expense. First, the copy of the Respondent’s September 11, 2011 email shows that the Respondent made an offer to the Complainant to negotiate for the transfer or lease of the Domain Name. Second, the Respondent suggested a meeting in a neutral place without the presence of legal representatives for either party. While it is not possible to determine on the present record that the Respondent indeed demanded as much money as the Complainant claims or whether the Respondent indeed threatened to host pornographic material on the website, the Respondent’s actions are not indicative of a good faith offer to compromise. Instead, they are likely to be a bad faith effort to extort. Therefore, the Panel finds the evidence sufficient to show that the Respondent used the Domain Name in bad faith.
Finally, the Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered by someone with no connection with the product.6 The Panel finds that the Complainant presented sufficient evidence that the VODAFONE trademark is well-known. To show the popularity and worldwide recognition of its trademark, Complainant submitted a copy of its annual report for 2011 showing that the Complainant generated revenue of GBP 45.9 Billion and has over 370 million mobile customers. The Complainant also submitted a printout from the “” website showing that the 2011 BrandFinance Global 500, which is the world’s most comprehensive brand value league table, ranked VODAFONE as the 5th most valuable brand in the world. Therefore, the Respondent, who has no relation to the Complainant, registered the Domain Name that incorporated the well-known trademark VODAFONE. This is sufficient to find both bad faith registration and bad faith use of the Domain Name.
Accordingly, the Panel concludes that the Complainant has proved registration and use of the Domain Name in bad faith, and therefore, has satisfied paragraph 4(a) 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 Domain Name be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: January 27, 2012
1 See paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; see also Biotechnology and Biological Sciences Research Council v. Kim Jung Hak,WIPO Case No. D2009-1583.
2 Paragraph 2.1 of the WIPO Overview, 2.0.
3 See Paragraph 2.1 of the WIPO Overview, 2.0.
4 Paragraph 2.1 of the WIPO Overview, 2.0.
5 See paragraph 3.6 of the WIPO Overview, 2.0.
6 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. ,WIPO Case No. D2000-0163; See also General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568.
Full & Egal Universal Law Academy