Complainant is Zamir Telecom Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Silverman Sherliker LLP,UK.
Respondent is Simple Mobile, Mehmet Kurt of Evry Cedex, France.
The disputed domain name <simple-calls.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2014. On April 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 14, 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.
Complainant operates in the telecoms sector providing services on communication systems for fixed line and VoIP telephony, broadband and data. Complainant is the holder of various figurative trademarks, containing the words “simple call” and shows to be the holder of the International figurative trademark No.1080968 with the United States and the Office for Harmonization in the Internal Market as designations under the Madrid protocol. Complainant also shows to be the holder of the registered UK figurative trademark No. 3023654, containing a stylized letter “S” and the words “simple call” and applied for on September 26, 2013.
The disputed domain name was registered on December 5, 2012. Respondent seems to be using the disputed domain to offer VoIP services, which it advertises under the name “simple mobile”. The website linked to the disputed domain name contains a logo that consists of a stylized “S”.
On February 28, 2014 Complainant notified Respondent of its intentions to submit a UDRP complaint.
Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith.
Respondent did not reply to the Complainant’s contentions.
Paragraph 15 of the Rules provides that 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 rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there are trademarks in which it has rights, which consist of figurative elements and the words “Simple Call”.
The Panel considers the disputed domain name <simple-calls.com> to differ from the SIMPLE CALL trademark by the addition of the letter “s” in the word “call” and the addition of a hyphen. According to the Panel, the disputed domain name contains all verbal elements of the Complainant’s trademark and the abovementioned differences between the trademark and the disputed domain name are insufficient to remove the confusing similarity. See La Quinta Worldwide L.L.C. v. Satoshi Shimoshita, WIPO Case No. D2007-1241, where the fact that disputed domain name contained the principal textual element of the majority of complainant’s trademarks and the addition of a hyphen was considered insufficient to remove the confusing similarity; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768, where the omission of letters and the addition of a hyphen were considered insufficient to remove the confusing similarity; see also Creative Nail Design, Inc. and Colomer USA, Inc. v. Creative Nails, c/o E Designers Ltd, WIPO Case No. D2006-0873.
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established case law under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Complainant submits that its representatives have found no indication that the Respondent owns any legitimate interests in the disputed domain name, having searched relevant trademark registers.
However, the Panel notes that the domain name is composed of generic words, as recognized by Complainant, and that the disputed domain name seems to have been consistently since registration used in connection with the generic meaning of these words. The Complainant does not show to have exclusive rights in the generic words contained in the disputed domain name in connection with the services that Respondent seems to offer. The Panel also considers that the Complainant fails to make a prima facie showing that Respondent’s services and interests are not legitimate or that Respondent is illegitimately targeting the Complainant by creating a likelihood of confusion such that whatever rights or legitimate interests Respondent may have in that disputed domain name would be called in to question. In this respect, the Panel noted that the website associated to the disputed domain name contains a stylized “S”, if other factors were present that could possibly support a finding of likely confusion. However, limited factual research on “archive.org” shows that Respondent has been using (along with other variations of text and content) the stylized “S” on the website associated to the disputed domain name prior to the Complainant’s application for the invoked UK figurative trademark No. 3023654, containing a stylized letter “S” and the words “simple call”. (The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition records to be a consensus view among WIPO panelists that panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past). As a result, the Panel finds that there is a question as to whether Respondent’s conduct was aimed at creating confusion with the Complainant’s figurative trademark.
The Panel also notes that Respondent’s trading name is “Simple Mobile” and the website at the disputed domain name displays “Simple Mobile/Simple Calls” which indicates to the Panel that Respondent is seeking to use descriptive terms related to these services as much as it may also be aware of Complainant. This is underscored by the prominence of the word “simple” in what appears to be Respondent’s website (the email address provided by the registrar ends in “simplemobile.fr”).
In the circumstances, Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy.
Given the Panel’s finding on the issue of rights and legitimate interests, it is unnecessary to consider the issue of bad faith registration or use.
It has not escaped the Panel that Respondent could conceivably be targeting Complainant in bad faith. Given however the descriptive nature of Complainant’s mark coupled with it being a figurative mark, the Panel notes that the present case is not a clear cut case of cybersquatting and that on balance Complainant has failed to discharge its burden under the Policy. The Panel also notes that the parties are free to consider court proceedings where a fuller evidentiary record can be explored (indeed Complainant claims possible “Registered Trade Mark Infringement”).
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Date: May 28, 2014
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