Complainant is Vodafone Group PLC, Newbury, United Kingdom of Great Britain and Northern Ireland, represented internally.
Respondent is Wikipiedra S.L. / Jonathan Palma Ruz, Sant Boi de Llobregat, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2010. On July 22, 2010, the Center transmitted by email to 1 & 1 Internet AG a request for registrar verification in connection with the disputed domain name. On July 23, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Registrar stated that the language of the Registration Agreement is Spanish.
On July 27, 2010, the Center informed both parties, in English and Spanish, of the language of the Registration Agreement. Complainant was instructed to file its Complaint in Spanish, to present an agreement of the parties to proceed in English, or to file a Request to proceed in English. Respondent was instructed that it could comment and that if Complainant requested to proceed in English, Respondent could object to that Request. Complainant then filed a Language of Proceedings Request on July 30, 2010, that the proceeding be administered in English. The Center notified Respondent of Complainant’s Request. Respondent did not file an objection to the Language of Proceedings Request.
The Center verified that the Complaint, together with the Language of Proceedings request, 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 Respondent of the Complaint, in English and Spanish, and the proceedings commenced on August 3, 2010. The Center notified Respondent that it accepted the Complaint as filed in English and would accept a response to the Complaint in English or in Spanish. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on August 25, 2010.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on September 6, 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. 4. Factual Background
Complainant is a large mobile communications network operator headquartered in Berkshire, England, United Kingdom, and operating in many countries around the world, including the United Kingdom, Spain, other countries of the European Community, and Australia, to name only those most relevant to this proceeding.
Complainant owns the following registrations for the trade mark VODAFONE:
Australia: Registration No. 1104633; Registration Date 20/03/06; Classes 9 and 38;
European Community (CTM): Registration No. 134890; Registration Date 1/04/96; Classes 9, 36, 37, and 38; and
European Community (CTM): Registration No. 2966018; Registration Date 9/12/02; in multiple classes.
Complainant also owns a number of domain names based on the designation “Vodafone,” including ; ; ; and . Complainant’s Spanish subsidiary owns and operates the domain name .
Respondent registered the Domain Name on February 2, 2010. The “.cc” suffix is a country code TLD for the Cocos Islands, which is a territory of Australia.
The Domain Name opens to a server default site. 5. Parties’ Contentions A. Complainant
Complainant contends that it is a large communications services company operating in numerous countries around the world, serving over 340 million proportionate mobile customers through its various operating companies and affiliates, and generating revenues in the most recent fiscal year of £44.5 billion.
Complainant contends that through extensive advertising, sales, and marketing around the world it has acquired a very substantial reputation in its Vodofone brand, recently ranked by one industry publication as the seventh most valuable brand in the world.
Complainant contends further that as result of extensive use of its trade mark and its registrations, the VODAFONE mark has become well-known in many countries, including the United Kingdom, where Complainant is headquartered; Spain, where Respondent is located; and Australia, the country to which the Domain Name country code relates, and Complainant has developed an enormous amount of goodwill in its trade mark.
Complainant contends that the Domain Name is identical to its established VODAFONE trade mark.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has no connection or affiliation with Complainant and no license or authorization from Complainant to use the VODAFONE trade mark in a domain name or for any other purpose. There is no evidence that Respondent holds trade mark registrations for the word “Vodafone” anywhere in the world.
Respondent is not known in any way as “Vodafone.” Respondent is called “Wikipiedra” and /or”Jonathan Palma Ruz.”
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the Domain Name.
Complainant contends that it communicated in writing and by telephone with Respondent and Respondent’s legal representative, informing Respondent of Complainant’s rights in its VODAFONE mark. In a telephone conversation between one of Complainant’s representatives and one of Respondent’s representatives, Complainant says that Respondent’s representative said that her client wanted to set up a new business using the name “Vodafone” but also said that the client wanted to sell the Domain Name as quickly as possible. Complainant offered to pay Respondent USD 100 as the estimated cost of having registered the Domain Name. Complainant then did not hear again from the legal representative with respect to this offer, and the representative later informed Complainant that it no longer represented Respondent.
Complainant contends that the Domain Name was registered and is being used in bad faith in that Respondent has no rights to use the VODAFONE trade mark, that Respondent’s purpose in registering the Domain Name was principally to sell it to the legitimate owner of the VODAFONE trade mark, and that there is no conceivable use could be made of the Domain Name that would be in good faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues
The Panel first addresses an issue concerning the language of this proceeding. Paragraph 11(a) of the Rules provides:
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.
According to the Registrar, the Registration Agreement is in Spanish, although that Agreement has never been made part of the Record. The Panel must therefore determine whether the proceeding should be administered in English.
The Complaint was filed in English by a Complainant headquartered in England against a corporate entity with an address in Spain. There were communications in English between Complainant and Respondent or Respondent’s representative both before and after the filing of the Complaint. Pursuant to instructions from the Center, given in both English and Spanish, Complainant filed and supported a proper Request to proceed in English. Despite being notified that it could do so, Respondent did not object to the Request. More importantly, when the Center formally notified the Parties of the commencement of the proceeding and afforded Respondent the option to file a response in either English or Spanish, Respondent chose to do neither and was subsequently found in default. Consequently, the Complaint, the exhibits to the Complaint, and all substantive documents in the record upon which the decision rests are in English.
Based on the foregoing, the Panel concludes that it is appropriate to proceed in this case in the English language.
Respondent did not respond to the Complaint therefore the Panel will consider whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in Respondent’s registration information available in the WhoIs and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), the respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. B. Identical or Confusingly Similar
By reason of extensive use of its trade mark and registrations of the mark pursuant to the laws of the European Community and Australia, Complainant has demonstrated that it has established legal rights in the VODAFONE trade mark. The mark is widely known. See Vodafone Group PLC v. Jad Corporation,WIPO Case No. DPH2010-001.
Respondent’s Domain Name is identical to Complainant’s trade mark, incorporating the trade mark in its entirety with no difference in spelling. The only difference between the trade mark and the Domain Name is the use in the Domain Name of the “.cc” country code top level domain (ccTLD). The addition to a trade mark of a top level domain (gTLD) or a ccTLD are disregarded as insignificant for purposes of determining the similarity between the Domain Name and the trade mark, because the TLDs are functionally necessary to operate the domain name. Missoni S.p.A. v. Colin Zhao,WIPO Case No. DCC2010-0004.
Complainant has established the first element of its case. C. Rights or Legitimate Interests
Complainant makes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, by showing that Respondent is not known by the Domain Name, has no trade mark rights in the Domain Name, has no relationship with Complainant, and has not been authorized by Complainant to use Complainant’s trade mark in registering the Domain Name. The evidence is sufficient also to show that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, a noncommercial use, or a fair use. There is in fact nothing on the website to which the Domain Name opens at this time other than a server default notice.
Respondent defaulted and has thus not come forward with any evidence that it is using the Domain Name in connection with a bona fide offering of goods or services which, if proved, could establish that Respondent has rights or legitimate interests in the Domain Name. Policy, paragraph 4(c)(i). Respondent Mr. Palma Ruz sent Complainant one email communication after the filing of the Complaint in which he purported to describe some sort of purpose he intended for use of the Domain Name, but the message made little sense, and the Panel cannot credit it as sufficient proof of intent or plan to make a legitimate use of Complainant’s trade mark.
The Panel finds and concludes that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name,that Respondent has not shown that it is making a use of the Domain Name sufficient to create rights or legitimate interests in the Domain Name. Respondent has not rebutted such prima facie case and Complainant has, therefore, established the second element of its case. D. Registered and Used in Bad Faith
Complainant must demonstrate that Respondent registered and is using the Domain Name in bad faith.
Registration of a domain name incorporating another’s well-known trade mark in its entirety has been found by other UDRP panels to be sufficient to support a finding of bad faith registration and use of the domain name. Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598. Complainant’s trade mark is well enough known and legally established in Spain, Europe, and Australia that Respondent must have had actual, or at least constructive, knowledge that it was using someone else’s trade mark as the basis for the Domain Name without authority or legitimate basis to do so.
The suggestion of bad faith finds further support here in the fact that, as represented by Respondent’s original legal representative, Respondent was seeking to sell the Domain Name quickly, but then declined Complainant’s offer to purchase the Domain Name for the estimated cost of registering it. Policy, paragraph 4(b)(i).
The fact that Respondent has not yet used the Domain Name to direct to a functioning website does not avoid a determination of bad faith. Passive holding of a Domain Name may constitute evidence of bad faith under the particular circumstances of the case. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Vodafone Group PLC v. Jad Corporation,WIPO Case No. DPH2010-0001. In the present case, the strength of Complainant’s trade mark, the initial indication of a purpose to sell the Domain Name to Complainant for an amount more than the cost of registering it, the Respondent’s default and failure to come forward with evidence of an actual or contemplated good faith use of the Domain Name, and the difficulty of conceiving any plausible actual or contemplated active use of the Domain Name that would not be illegitimate, lead the Panel to conclude that the Domain Name was registered and is being used in bad faith. See Telstra, supra.
Complainant has established the third and final element of its case. 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 domain name, , be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Dated: September 20, 2010
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