The Complainant is Vodafone Group PLC of the United Kingdom of Great Britain and Northern Ireland, represented by Quisumbing Torres Law Firm, Philippines.
The Respondent is Jad Corporation of the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <vodafone.com.ph> is registered with DotPH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2010. On April 8, 2010, the Center transmitted by email to DotPH a request for registrar verification in connection with the disputed domain name. On April 12, 2010, DotPH 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 PH. Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for PH. 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(1) and 4(1), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2010. In accordance with the Rules, paragraph 5(1), the due date for Response was May 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed Fleur Hinton as the sole panelist in this matter on May 21, 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
The Complainant is the largest mobile telecommunications company in the world. It is based in Berkshire in England and owns assets worth approximately GBP 71 billion. The VODAFONE trademark has a substantial international reputation. The Complainant has operations in over 20 countries and partner networks in over 40 countries. Its VODAFONE trademark is registered in a large number of countries around the world. Its earliest registration is in the United Kingdom and is trademark number 1215879 in class 9 covering “Electrical, electronic, telecommunications and telephonic apparatus and instruments; parts included in Class 9 of all the aforesaid goods” dating from March 30, 1984.
The trademark VODAFONE is registered in the Republic of Korea, where the Respondent is domiciled, in classes 9 and 38, and in the Philippines. The trademark laws of the Philippines expressly protect the rights of owners of internationally well-known trademarks.
In addition, the Complainant is the registrant of many domain names incorporating its widely-known trademark including <vodafone.com>, <vodafone.net>, <vodafone.org>, <vodafone.info>, <vodafone.biz>, <vodafone.eu> and <vodafone.co.uk>. The Complainant is also the registrant of the domain name <vodafone.ph>
5. Parties' Contentions
A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's trademark VODAFONE;
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
The Respondent has no connection with or affiliation to the Complainant and has not been licensed by the Complainant to use its trademark VODAFONE as a domain name or otherwise;
The Respondent does not have a trademark registration for VODAFONE in the Philippines or in the Republic of Korea;
The Respondent does not conduct business in the Philippines and is not using the trademark VODAFONE and has no rights to the disputed domain name;
The Complainant has sent a letter of demand to the Respondent both by courier and by email and has not received any response;
The Complainant argues that the Respondent has registered the disputed domain name in bad faith because the Respondent has no legitimate rights to use the disputed domain name. The Complainant claims further that the Respondent's reason for registering the disputed domain name was to sell the disputed domain name to the legitimate owner of it. The Complainant states that the Respondent has previously sold two domain names, <philips.ph> and <philips.com.ph> to another individual from the Republic of Korea.
In addition, the Complainant has included with its submissions copies of WhoIs searches of widely-known trademarks on the dotPH register showing that the Respondent has registered the domain names <gucci.com.ph> and <hundai.com.ph>.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to satisfy the requirements of Policy and have a disputed domain name transferred or cancelled, the Complainant must show that the disputed domain name is identical or confusingly similar to its trademark, that the Respondent has no right or legitimate interest in it, and that the Respondent registered and uses the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name wholly incorporates and is confusingly similar to the Complainant's trademark VODAFONE. The Panel further notes that the trademark VODAFONE is a widely-known trademark.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not responded to the allegations by providing evidence that it does have rights or legitimate interests in the disputed domain name. In view of the notoriety enjoyed by the Complainant in its VODAFONE trademark, it is difficult to imagine what evidence the Respondent could produce to establish that it does have rights or legitimate interests in the disputed domain name.
In Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455, the panel considered what the complainant had to establish in a case such as this, where the respondent has not lodged a response, where the respondent is in a position easily to provide proof of such rights or legitimate interests as it may have, and where the requirement of the Policy appears to be that the complainant prove a negative. The panel found that, even in such a case, the complainant does have the onus of proof upon it. However, where the respondent has not lodged a response, it is necessary for the complainant to establish a prima facie case in order for the onus to shift to the respondent.
The Panel finds that in this case the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
C. Registered and Used in Bad Faith
In order to succeed under this heading, the Complainant must show that the disputed domain name has been registered in bad faith and is also being used in bad faith. The Complainant alleges that the Respondent's motivation for registering the disputed domain name was to sell it to the Complainant. The Panel notes that there is no evidence that the Respondent has attempted to do that. The Complainant has also pointed to two other instances of the Respondent's registration of domain names with the dot.PH registry and these are dealt with in Koninklijke Philips Electronics NV v. Park Kyoung Seok,WIPO Case No. DPH2000-0001.
In that case the respondent had purchased the domain names from the present Respondent. The panel found that a number of factors in combination demonstrated that the domain names were registered and used in bad faith. Some of those circumstances also apply here. The Respondent has registered several other domain names which consist of widely-known trademarks. The Respondent has not replied either to the Complainant's letter of demand delivered by courier or to the emailed version of it. The Respondent has no connection with the trade mark encompassed in the disputed domain name. It can also be inferred in the present case that the Respondent's purpose of acquiring the disputed domain name was to prevent the Complainant from having it. Therefore the Panel finds that the disputed domain name was registered in bad faith.
It is also a requirement that the disputed domain name be used in bad faith. In the present case, entry of the disputed domain name into a browser does not lead to a website. There is no evidence that the Respondent has attempted to sell the disputed domain name and there is no evidence of any use by the Respondent of the disputed domain name in any way. However, in certain circumstances such as the ones present in this case, mere failure to use a domain name registered in bad faith does not lead to the conclusion that the disputed domain name is not being used in bad faith.
The issue of inactivity by a respondent was considered in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The panel concluded that the factors which led to the finding of the domain name having been registered in bad faith also led to the conclusion that the domain name was being used in bad faith. This is because no conceivable use which could be made of the domain name would be use in good faith.
The Panel finds that that is also the situation in the present case. Therefore the disputed domain name has been registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(9) of the Policy and 15 of the Rules, the Panel orders that the domain name <vodafone.com.ph> be transferred to the Complainant.
Fleur Hinton Sole Panelist
Dated: June 4, 2010
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