The Complainant is eircom Limited of Dublin, Ireland, represented by Arthur Cox Solicitors, Ireland.
The Respondent is Magnet Networks Limited of Dublin, Ireland, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013 via email. On July 22, 2013, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On July 22, 2013, IEDR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an amended Complaint on July 24, 2013 by email and on July 30, 2013 by courier.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2013. In accordance with the Rules, paragraph 5.1, the due date for Response was August 29, 2013. The Respondent filed a Response on August 28, 2013 by email and on September 9, 2013 by courier.
The Center appointed Yvonne McNamara as the sole Panelist in this matter on September 16, 2013. 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 A. The Complainant
The Complainant was formerly the State-owned Irish telecommunications company which has since been privatised. It has the most extensive telecommunications network in Ireland, with approximately 1.4 million fixed-line telephone access channels in service. It provides fixed line and mobile telecommunications services to end users as well as providing wholesale access to its network to other authorised telecommunications operators in Ireland, including the Respondent.
Figures derived from the Irish telecommunications regulator, Commission for Communications Regulation (“ComReg”), adduced by the Complainant to demonstrate its market reach, include information that the Complainant:
- was Internet service provider for 455,000 customers as of December 31, 2012;
- is the largest provider of fixed line telecommunications services in Ireland, offering Internet, voice and data services to individual consumers and business users, having a market share for the quarter ended December 31, 2012 of 52.7% of the Irish fixed line market, based on revenue.
The Complainant is in the process of rolling out an upgrade to its broadband services for which the umbrella term is “Next Generation Access” or “NGA”. NGA is expected to have a major impact on upload and download speeds for customers and is the result of investment in the network to the tune of EUR 1.5 billion. The Complainant’s NGA capability is also available to other telecommunications operators, such as the Respondent, at the wholesale level. The retail NGA service to individual customers is marketed by the Complainant under the name “eFibre”. The eFibre service was launched on May 16, 2013.
The Complainant owns applications to register a series of marks comprising various representations of the words “eFibre” and “e-Fibre” as an Irish registered trade mark, which applications were filed on July 20, 2012. As of the date of the filing of this Complaint, that application was pending.
The Complainant registered eFibre as a business name with the Companies Registration Office in Ireland.
The Complainant has acquired the domain names and . B. The Respondent
The Respondent is also an Irish-incorporated company which provides fixed line and telephone and broadband services which it indicates offer Ireland’s fastest broadband speeds through a fibre optic and copper access network.
The Respondent indicates that it is the largest provider of dedicated fibre to the home services in Ireland since 2005 and indicates that it has made an investment of EUR 115 million to date in building its Next Generation network.
The Respondent draws attention to the fact that it is a sister company of the owner of the only transatlantic fibre optic cable directly connecting Ireland and Northern Ireland to North America.
The Respondent markets a broadband service under its own name and under the name “fatpipe”.
On May 21, 2013 the Respondent registered the disputed domain name.
In addition to the disputed domain name, the Respondent holds the following domain names: , , , and .
At time of the filing of this Complaint the disputed domain name led users to a webpage entitled “Fibre Broadband in Ireland”. This webpage gave information in relation to investment in fibre broadband in Ireland and consequential availability of significant improvements in broadband speeds. The webpage provided a link entitled “Check my address” whereby visitors to the website were invited to check with “an Irish Internet service provider” whether their area was served by the improved broadband capability. A note in smaller print beneath the link read “Note: You will be directed to ”. Clicking on the link led to the website of the Respondent. 5. Parties’ Contentions A. Complainant Identity or misleading similarity with a Protected Identifier in which the Complainant has rights
The Complainant contends that the name “eFibre” which is encompassed in the disputed domain name is a Protected Identifier by virtue of common law rights built up by the Complainant through use.
In this regard the Complainant provides copies of sample advertising of the roll out of its improved broadband offering under the “eFibre” name, which marketing campaign the Complainant says was inaugurated on April 8, 2013 in advance of launch on May 16, 2013; the Complainant points to a schedule of sums spent on advertising in the period to June 30, 2013. The Complainant also relies upon the results of a Google search conducted under the “eFibre” name in which the majority of the results returned related to the services provided or to be provided by the Complainant under the name.
The Complainant also submits the results of a telephone survey conducted among 1,019 survey respondents in Ireland between July 3 and 7, 2013 purporting to show that 48% of survey respondents would expect the domain name to lead to a site run by eFibre (the Complainants asserts the result as signifying an expectation in the 48% in question of an eFibre site run by the Complainant, although this does not emerge from the evidence provided), that 31% of survey respondents would expect to be led to a site run by the Complainant and that less than 1%, specifically 0.49%, would expect to arrive at a site run by the Respondent.
The Complainant indicates that the “eFibre” name is part of a family of trade marks of the Complainant which use the prefix lower case “e” to denote the services of the Complainant, such as for instance its “eMobile” services and such that, the Complainant argues, the name “eFibre” has a distinctive quality capable of accruing and grounding exclusive rights to its use.
The Complainant refers in addition to its registration of the “eFibre” name as a business name, its acquisition of other domain names encompassing the name “eFibre” under the “.com” and “.net” top level domains and its application to register the name “eFibre” as a trade mark. Rights or legitimate interests of the Respondent in the disputed domain name
The Complainant says that there is no evidence of any bona fide use of the disputed domain name or demonstrable preparations to make such use, on the part of the Respondent.
The disputed domain name was registered three working days after launch by the Complainant of its eFibre service and the Complainant argues that prior to that the Respondent had not used the “eFibre” name, nor had it made any investment or preparation for any such use.
On those bases the Complainant asserts that the Respondent does not have any right or legitimate interest in the disputed domain name. Registration or use in bad faith
The Complainant essentially submits that an inference arises from the facts and circumstances to the effect that the Respondent’s objective in obtaining and using the disputed domain name was to “undermine the Complainant’s service launch and on-going marketing campaign under the Protected Identifier and to cause confusion amongst customers (likely to lead the public to believe that the services offered by it are the services of the Complainant).” The Complainant further submits that the intention of the Respondent was “to drive traffic to its primary website (at “”) via the webpage at the disputed domain name, with an inevitable consequence of initial consumer confusion” and “to create ‘initial interest confusion’ on the part of internet users seeking the Complainant and in order to profit from at least some of that traffic.”
The Complainant bases these assertions on its contention that launch and/or roll out of the Complainant’s “eFibre” service was known and anticipated by the telecommunications industry, including the Respondent, who is a direct competitor for the services in question. The Complainant points to the fact that the Respondent chose to register the disputed domain name three working days after the launch by the Complainant of its eFibre services, having no previous interest in it. The Complainant characterises the webpage that is reached by use of the disputed domain name as a webpage that has the sole objective of redirecting Internet users to the Respondent’s website and services, which it offers under its own name and brand. These matters, in conjunction with the lack of any evidence of use or preparations on the part of the Respondent to use the “eFibre” name that were independent of the choice of the name “eFibre” by the Complainant for its new service offering, form the basis of the Complainant’s submission that the Respondent registered and is using the disputed domain name in bad faith within the meaning of that term in the IEDR Policy. B. Respondent Identity or misleading similarity with a Protected Identifier
The Respondent counters the Complainant’s assertion of ownership of common law rights in the word “eFibre” on the basis, essentially, that the word “eFibre” is descriptive of the services to be provided under it and devoid of distinctive character. In this regard the Respondent asserts that “the word fibre is used in everyday speech in trade and it does not distinguish the goods and services of one undertaking from that of another undertaking. The letter “e” is commonly used before many words to denote an electronic service, e.g., e-Banking, e-Commerce, e-Filing and therefore is descriptive of an electronic service.” The Respondent then argues “The word eFibre is descriptive when taken as a whole word or split into two words. Efibre is descriptive of the product or service and should be excluded from registration as a trade mark as both of its possible meanings designate a characteristic of the goods and services concerned.” Rights or legitimate interests of the Respondent in the disputed domain name
Notwithstanding the fact that the Respondent asserts in the preamble to its submission that it has “built up and acquired considerable goodwill and a notable reputation in the fibre name…” and that it “has built up a subtstantial amount of goodwill in the name fibre since the inception of the company in 2005”, the essential position of the Respondent is that since the term “eFibre” is, in its contention, generic and incapable of functioning as a trade mark, then the Respondent has as much right to use that term as the Complainant. The Respondent appears to imply in fact that it may more properly use the term “eFibre” since, in its argument, it is in a position to provide a more complete “fibre” service to customers’ homes.
Accordingly the Respondent contends that it has freedom to use a descriptive/generic term such as “eFibre” and that the use made of the disputed domain name is legitimate.
The Respondent characterises that use as being “to inform consumers of the availability of high speed next generation fibre in their area…The site provides the opportunity for the visitor to check their access to fibre and directs visitors to the Respondent’s website where they can view the Respondent’s fibre product offerings and purchase a suitable fibre service. The Respondent is making legitimate use of the domain name in advising the public of fibre availability in their area.” Registration or use in bad faith
The Respondent indicates that the disputed domain name was not registered or acquired for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant.
The Respondent also denies that the disputed domain name was registered to create confusion or association with the Complainant’s services. The Respondent says: “The Respondent actively uses the domain name to inform consumers of the availability of high speed next generation fibre broadband in their area and directs them to their website where the consumer can view and purchase the Respondent’s fibre product service.” 6. Discussion and Findings A. Identical or Confusingly Similar
In prescribing the elements of a justified complaint in respect of a domain name as follows:
(a) A domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
(b) The Registrant has no rights in law or legitimate interests in respect of a domain name; and
(c) A domain name has been registered or is being used in bad faith,
paragraph 1 of the IEDR Policy prescribes the issues to be considered by the Panel in coming to its decision as to whether registration of the domain name at issue should be (a) confirmed; (b) cancelled; or (c) transferred - the three possible outcomes of the IEDR dispute resolution process.
The Panel notes that the IEDR Policy is similar in many respects to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and therefore considers it appropriate to refer to authorities concerning the UDRP to the extent applicable to the IEDR Policy. B. Identical or Misleadingly Similar to a Protected Identifier in which the Complainant has rights
The first element to be established by a complainant is that it has rights in a “Protected Identifier” to which the domain name is identical or misleadingly similar.
Paragraph 1.3 of the IEDR Policy provides:
“Protected Identifiers for the purposes of this Policy are:
- 1.3.1 trade and service marks protected in the island of Ireland;
- 1.3.2 personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland;
- 1.3.3 geographical indications that can prima facie be protected in the island of Ireland…”
Neither of 1.3.2 nor 1.3.3 is relevant to the Complaint in this case. The Complainant is moving the Complaint on the basis that it has a trade or service mark protected in Ireland.
As to whether the Complainant does have such a right is a question of Irish law (paragraph 4.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), recognizes that the question of the existence or otherwise of the rights asserted are a matter for the application of the relevant national law, it reads: “the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist)”).
Registered trade marks are of course protected under Irish law. At the date of filing its Complaint, while the Complainant had applied to register a series of marks comprising various representations of the words “eFibre” and “e-Fibre”, it did not have any registered right. Accordingly the Complainant is proceeding on the basis of common law rights.
In respect of common law rights, it is very well established under Irish law that one may take an action to restrain use of a trade mark by another person if the impugned use is such as to mislead the relevant public that there is a link or association between the business of the person whose use of the mark is impugned and that of the plaintiff. The relevant cause of action in such circumstances is the tort of passing off.
The assessment of whether or not such rights are engaged in this case therefore requires an assessment of whether or not the Complainant would have a basis to take a passing off action in Ireland in respect of the Respondent’s use of the disputed domain name.
The formulation of Oliver J in Reckitt & Colman v. Borden [1990] 1 WLR 491 (“Jif Lemon”) approved and applied in Ireland in numerous cases, (recently by the Supreme Court in McCambridge Ltd v Joseph Brennan Bakeries [2012] IESC 46) brings a decision maker to the heart of what needs to be shown by a plaintiff in a passing off action. The formulation is as follows:
“First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognized by the public as distinctive specifically of the plaintiff’s goods or services.”
“Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff.”
“Thirdly, he must demonstrate that he suffers…damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendants’ goods or services is the same as the source of those offered by the plaintiff.”
The consensus view of UDRP panels as to what needs to be shown to ground a complaint on an unregistered trade mark condenses and paraphrases the foregoing in referring (at paragraph 1.7 of the WIPO Overview 2.0) to a need to show that the name in question has become a “distinctive identifier” of the Complainant’s business.
The Complainant has said that it launched a high profile marketing campaign in respect of its eFibre service six weeks in advance of a well-publicised launch. At exhibit 10 to its submission it appends evidence of billboard advertising, full page advertisements in the Irish Times and prominent banner advertising on Internet sites such as the RTE website and MSN. At exhibit 11 to its submission a total marketing investment of EUR 3,279,970 is indicated, although the figures given are identified as expenditure up to June 30, 2013, in circumstances where the disputed domain name was applied for on May 21, 2013.
The Google search against “efibre”, conducted on July 3, 2013 returned 18 out of 23 sites that can be clearly seen to relate to services provided by the Complainant; it is not clear whether or not the remaining sites retrieved in the search were returned by the search due to mention of the Complainant’s service or not but the possibility that they were cannot be excluded.
The evidence given in support of the Complainant’s assertion of acquisition of common law rights in the name “efibre” spans a period of time before and after registration of the disputed domain name. However, it is clear that under the UDRP the right on which the complaint is grounded does not necessarily have to be shown to have vested prior in time to the registration of the domain name. In the formulation of the panel in Reckitt Benckiser Plc v. Eunsook Wi,WIPO Case No. D2009-0239:
“The question of priority of the Complainant’s trade mark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, as registration of a domain name before a complainant acquires corresponding trade mark rights does not prevent a finding of identity or confusing similarity: the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544).”
It is anyway clear from the dates of some of the items retrieved by the Google search furnished at exhibit 7 to the Complainant’s submission that launch of the eFibre service at the Complainant’s headquarters by the Irish Prime Minister and/or the promotional efforts of the Complainant had attracted commentator attention by the date of registration of the disputed domain name.
It is also significant in this respect that the Respondent takes no issue with the Complainant’s assertions in respect of the level of advertising and promotion of the Complainant’s eFibre service, the Respondent simply says that the word “eFibre” is descriptive/generic and therefore incapable of functioning as a trade mark or attracting exclusive rights, presumably, in their contention, no matter how much it has been used.
The Panel can certainly accept that the term “fibre” in the context of broadband services is understood as indicating fibre optic cable. One could also certainly accept that in the context of digital communication the letter “e” is often used to mean “electronic” as in “e-mail”. However it has not been explained by the Respondent as to how the combination of the two elements into the word “eFibre” - in the Respondent’s case therefore connoting “electronic fibre” - is descriptive of a service and if so, what service and why.
“Fibre” meaning “fibre optic cable” is a conveyance medium for data, which medium is comprised of bundles of high quality extruded glass. It is an efficient transmission medium for electronic information but query if it is itself electronic. If it can be regarded as itself connoting an electronic system, then adding “e” as a prefix creates a tautology which may in itself be distinctive. If the word fibre is taken just to mean a type of cable, then if one were to read “eFibre” as meaning “electronic Fibre”, the question would arise as to what kind of product or service was being indicated where the cable itself was electronic.
There appears to the Panel to be a spark of distinctiveness in the word “eFibre” as a mark but crucially, for the purposes of this decision, the Respondent has not presented any analysis on the subject. It is significant in this regard that the Respondent does not itself use the term “efibre” at all on the webpage to which the disputed domain name leads, let alone in a descriptive sense. The Google search results adduced by the Complainants did not return any discernible result treating efibre as a descriptive term for a product or service and all the results that can be deciphered as to their content treat the term as a brand under which the Complainant is advertising or providing a service.
The level of advertising and use of “eFibre” services is certainly of a level capable of creating a reputation and business goodwill in connection with any word capable of becoming distinctive. Not only are the amounts expended on advertising and promotion significant, but it is clear from the piece appearing in the website of the Irish Independent on June 8, 2013, and exhibited at exhibit 3 to the Complainant’s Complaint, that the name “eFibre” was being seen by the author of the piece as a brand of the Complainant, that the said author regarded failure on the part of the Complainant to register a domain name encompassing the mark as an embarrassing oversight and the move by the Respondent in having “beaten them to the punch” and as being “cheeky”.
It is difficult to see how the Complainant would not have accrued a goodwill and reputation in their new service under the mark “eFibre” in the circumstances of the level of promotion and expenditure put into pre-launch and launch of the service and in circumstances where there are relatively few players in the Irish telecommunications market and where the question of broadband speeds was and is a national topic of discussion and desired improvement. The survey attached at exhibit 12 to the Complaint shows a third of the survey respondents to the survey associating the mark “eFibre” with the Complainant and less than 1% associating it with the Respondent.
The Panel finds that the Complainant must inevitably have built up a goodwill and association for its broadband business under the mark EFIBRE, in light of which, use of a domain name by a direct competitor incorporating the EFIBRE mark would be likely to amount to the kind of misrepresentation as to a link or association with the business of the Complainant (whether or not intentional) and consequent damage addressed by the law of passing off.
On those bases the Panel finds that the Complainant has established for the purpose of this proceeding that it has rights in the mark EFIBRE which fall to be protected under the law of passing off in Ireland.
The Panel finds that the disputed domain name is confusingly similar to the Protected Identifier EFIBRE in that it comprises the identical word with the addition only of the country code top level domain (“.ie”) such that it will be read and understood as the conversion of the mark EFIBRE into a domain name by the relevant public. C. Rights in Law or Legitimate Interests
Paragraph 3 of the IEDR Policy provides that the following factors may be considered as evidence of rights to or legitimate interests in the domain name:
- “3.1.1. Where the Registrant can demonstrate that before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business; or
- 3.1.2 Where the domain name corresponds to the personal name or pseudonym of the Registrant; or
- 3.1.3 Where the domain name which is identical or misleadingly similar to a geographical indication has been used, in good faith, by the Registrant before such geographical indication was protected in the Island of Ireland.”
These tests complement the bad faith head of the IEDR Policy in that, to the extent that the domain name can be shown to have been adopted independently of the complainant in any particular case, inferences of bad faith diminish accordingly.
In this case, the Respondent does not try to argue that it had chosen and/or made preparations to use the name “efibre” before becoming aware of the Complainant’s use or that the name “efibre” or to say that its adoption of the name was in any way independent of the Complainant’s choice of the “eFibre” brand for its upgraded broadband services. The Respondent essentially argues that it, like any other telecommunications operator has a “legitimate interest” in being able to use words that are descriptive or generic in the industry and it asserts that the word “efibre” is such a descriptive or generic term.
First in this regard, there must be a serious doubt for this Panel in respect of the Respondent’s assertion that the word “efibre” is descriptive/generic and available to all for use on the goods/services for which it is asserted to be descriptive or generic. The Respondent simply has not explained the precise asserted generic meaning of the word “efibre” and the reasons why it bears the asserted meaning. Secondly however the Respondent does not itself actually use the word “efibre” as a descriptive or generic term or indeed at all, except to incorporate it in the disputed domain name. The webpage to which the disputed domain name links does not include any reference to the word “efibre”. As already indicated, no other descriptive use of the word “efibre” is discernible from any submission or evidence filed for the purposes of this Complaint.
Paragraph 2.2 of the WIPO Overview 2.0 indicates the consensus view on these matters as being:
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
In this case, for this Panel, the word “efibre” does not appear to be a generic or descriptive word and there is anyway no evidence of it having been used in a generic sense, or indeed at all, by the Respondent except for the purposes of incorporation in the disputed domain name.
The Panel finds that the Respondent does not have a right or legitimate interest within the meaning of the IEDR Policy in the disputed domain name in the circumstances of this case. D. Registered or Used in Bad Faith
Paragraph 2 of the IEDR Policy provides that the following may be considered as evidence of registration or use of a domain name in bad faith:
- “2.1.1 where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the registrant’s documented expenses which are directly related to the registration of the domain name; or
- 2.1.2 where the domain name has been registered or is used primarily in order to prevent the Complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name; or
- 2.1.3 where the Registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant; or
- 2.1.4 where the Registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the Complainant has rights; or
- 2.1.5 where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainant has rights;
- 2.1.6 where the Registrant has intentionally provided misleading or false information when applying for the domain name registration.”
In respect of the bad faith head, the Respondent specifically rejects any notion that the disputed domain name was acquired for the purposes of selling back to the Complainant, although it is not clear that the Complainant leveled that accusation.
The Complainant did accuse the Respondent of intentionally wishing to create confusion as between the services of the Complainant and the Respondent by use of the disputed domain name as per paragraph 2.1.3 of the IEDR Policy. The Respondent denies that and indicates that the disputed domain name is used to “inform consumers of the availability of high speed next generation fibre broadband in their area and directs them to their website where the consumer can view and purchase the Respondents fibre product service”. It seems to the Panel however that this is not quite accurate. It is not possible to find out whether fibre broadband is available in one’s area from the webpage to which one is led by the disputed domain name. If a visitor to that webpage clicks on the “Check my address” link appearing at the bottom of the page, the visitor does not get information in respect of availability of high speed broadband in any particular area, rather, as is indicated in small print below the link, the visitor finds him or herself on the Respondent’s website where its services are offered under its own names and brands, none of which appear to be “eFibre”.
Whether or not there was a deliberate effort to confuse customers and potential customers as between the services offered by the Complainant and the Respondent respectively, there is certainly scope for confusion, which should have been apparent to the Respondent and, since in the law generally, foreseeable consequences of an intended act are themselves generally taken to have been intended, the Panel finds for the Complainant on this ground.
Irrespective of this however, the strongest inference from the evidence and submissions of both parties is that the Respondent registered the disputed domain name in order to prevent the Complainant from doing so as per paragraph 2.1.2 of the IEDR Policy. There was no attempt by the Respondent to disavow knowledge of the brand chosen by the Complainant for the roll-out of its new level of service and any such disavowal would, in the circumstances of the industry and the number of players, not be credible. In circumstances where the entire case of the Respondent is that the term “efibre” is descriptive and generic and incapable of affording exclusive trade mark rights, there could be no explanation for the Respondent’s own incorporation of the name in the disputed domain name other than the explanation that it was done to prevent its monopolisation by the Complainant in a domain name.
In 537397 Ontario Inc., operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567, a case with less compelling facts than in the instant case, in that there was relatively little evidence of the use of the mark in question by the complainant prior to registration of the domain name there and where the respondent in that case did not actively use the said domain name, the panel said:
“The Panel agrees that there is very little supporting evidence before the Panel as to the Complainant’s use of its trade marks prior to registration of the Domain Names, and . However, for the reasons given above, the Panel is satisfied that the Respondent would never have registered those Domain Names were it not for the fact that the Respondent knew that they were in use or about to be used as trade marks by the Complainant.
Since the Respondent has made no active use of the Domain Names, it is impossible to assess with any certainty what the Respondent’s precise motives were at time of their registration. The Complainant contends that the Respondent’s purpose was to block the Complainant from registering them itself (paragraph 4(b)(ii) of the Policy), but the Panel believes it at least as likely that the Respondent’s intention was to use them to disrupt the business of the Complainant (paragraph 4(b)(iii) of the Policy) or to use them for commercial gain (paragraph 4(b)(iv) of the Policy).
Parties do not register the trade marks of their competitors for no reason at all and in the particular circumstances of this case, the Panel feels entitled to infer that the Respondent’s intentions were abusive. The fact that no use has in fact been made of the Domain Names may simply have been the realization that any commercial use of the names would be likely to infringe the Complainant’s trade mark rights.
The Panel is satisfied that in the hands of the Respondent, a competitor, the Domain Names constitute an abusive threat hanging over the Complainant’s head, which equates to a bad faith use under the Policy. After all, as is apparent from paragraph 4(b)(ii) of the Policy, in the view of this Panel, active use is not always a dispositive pre-requisite for the purposes of paragraph 4(a)(iii) of the Policy.”
In circumstances where the word “efibre” was not used by the Respondent in any way before promotion and launch by the Complainant of its upgraded broadband services under the mark EFIBRE, where the Respondent asserts that it is entitled to use the word “efibre” in a generic way but does not explain the precise reason why the word is asserted as being generic and does not anyway use the word in a generic way or at all, save to incorporate it in a domain name, where the Respondent is a direct competitor of the Complainant and where its use of the EFIBRE mark as a conduit to its own website opens clear possibilities and even a likelihood of confusion, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of that term in the IEDR Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Yvonne McNamara
Sole Panelist
Dated: October 7, 2013
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