Complainant was a provider of mobile telephone services in the Irish market and was the owner of the DIGIFONE trademark and service mark under Irish common law.  Respondent registered the domain name, digifonewap.com only two months after Complainant had made a service available using WAP technology.

Held, Name Transferred to Complainant

The domain name registered by the Respondent is confusingly similar to the trademark owned by the Complainant as the said domain name comprises of the Complainant’s trademark plus a description of a service recently made available by the Complainant.

Contrary to a brief submission by the Respondent, he was not using the domain name in connection with a bona fide offering of goods or services nor is there any evidence of demonstrable preparations to so use the domain name.  In fact, at the time of the proceeding, the disputed domain name resolves to a site containing an advertisement for the registering body, Register.com.  Respondent therefore has no legitimate rights or interests in the domain name.

Given the fact the trademark owned by the Complainant has acquired a significant reputation in Ireland due to substantial advertising, and the said domain name was registered shortly after the Respondent launched services based on WAP technology, it can be inferred that the Respondent registered and used the said domain name in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to
Talk City Inc. v. Robertson, Case No. WIPO D2000-009
Eauto, L.L.C. v. EAuto Parts, Case No. WIPO D2000-0096
Adobe Systems Incorporated v. Domain OZ, Case No. D2000-0057
British Telecommunications & Others v. One in a Million [1998] 4 All ER 476
Coca-Cola v. F. Cade & Sons Limited [1957] I.R. 196
Pianotist Co’s Application (1906) 23 R.P.C. 774

Panel Decision referred to 

Bridgeman, Panelist:- 

1. The Parties

The Complainant is ESAT Digifone Limited, a company incorporated in Ireland, having its registered office at 76 Lower Baggot Street, Dublin, Ireland.

The Respondent is Colin Hayes of 55 Shelbourne Road, Dublin, Ireland. 

2. The Domain Name(s) and Registrar(s)

This dispute concerns the domain name <digifonewap.com>. The registrar with which the domain name is registered is Register.com Inc

3. Procedural History

On June 14, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center
("the Center") by e?mail and in hard copy on June 15, 2000 and complied with the
requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")
and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental
Rules"). The appropriate fees were paid by the Complainant. 

On June 22, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the
authorized representative of the Complainant by e?mail. A copy of the said Acknowledgment
were sent at the same time to the Respondent by e?mail. The said e?mail to the Respondent
was returned to the sender as the Respondent's e?mail address failed.

On June 22, 2000 the Center sent a Request for Registrar Verification to Register.com Inc.
the Registrar of the said domain name. On June 28, 2000 the Registrar responded to the
Center and stated that it was in receipt of the Complaint sent by the Complainant, confirmed
that it is the registrar of the said <digifonewap.com> domain name, confirmed that the
Respondent is the registrant, confirmed that the Policy is applicable to the said domain
name and that the said domain name is in "active" status. 

The Center reviewed the Complaint and was satisfied that it complied with the formal
requirements. 
On June 30, 2000 the Center sent a Notification of Complaint and Commencement of
Administrative Proceeding relating to the <digifonewap.com> domain name to the
Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments)
and by e?mail (Complaint with attachments). A copy of said Notification was sent to the
authorised representative of the Complainant by e?mail. Further copies of said Notification
were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to
Network Solutions Inc., the Registrar of the <digifone.net> domain name (Complaint without
attachments).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia
advised the Respondent that the Administrative Proceedings had commenced on June 30,
2000 and that the Respondent was required to submit a Response to the Center on or before
July 22, 2000. This e?mail to the Respondent was also returned to the sender as the
Respondent's e?mail address failed.

The Respondent failed to submit a Response and on July 25, 2000 the Center sent a
Notification of Respondent Default to the Respondent by post/courier, facsimile and e?mail
advising the Respondent that the consequences of said default included inter alia that the
Center would proceed to appoint a single member Administrative Panel.

On July 26, 2000 the Respondent sent an e?mail to the Center stating as follows:"Please
note that I am no longer the owner of this domain. I will shortly be notifying the relevant
registration people. My solicitors will furnish you with details of the new owners."

On July 26, 2000 the Center invited James Bridgeman to act as Administrative Panel in these
proceedings and having received a Statement of Acceptance and Declaration of Impartiality
from the said James Bridgeman the Center proceeded to appoint this Administrative Panel
consisting of a single member on July 31, 2000. On the same date, the case file was
transferred to the Administrative Panel. 

In the view of the Administrative Panel, the proper procedures were followed and this
Administrative Panel was properly constituted. 

4. Factual Background

Given the Respondent's failure to file a Response in this case, the Administrative Panel
accepts as true and accurate, all statements of fact made by the Complainant in its
submissions. (vide: Talk City Inc. v. Robertson, (WIPO Case D 2000?0009, February 24,
2000); Eauto, L.L.C. v. EAuto Parts, (WIPO Case D 2000?0096, April 9, 2000).

The Complainant is a provider of mobile telephone services in the Irish market. It started
business in March 1997 and now has 38% of the Irish market in mobile telephone services
(both analogue and GSM), servicing over 649,500 business and personal users throughout
Ireland. Its share of the GSM market is presently 42.4%. The Complainant employs over 650
staff. Its turnover for the year ending 31 December 1998 was IR£222.2 million.
The Complainant has made substantial financial investment in the marketing and promotion
of its mobile telephone services, with particular emphasis on the development of the
<DIGIFONE> trade mark/service mark, and has built up a substantial reputation in that mark.
The Complainant spends approximately IR£5 million per year on advertising and sponsorship.
From its inception to date the Complainant has spent IR£12.5 million on advertising
campaigns and a further IR£3.5 million on promotions and sponsorships.

In addition to its principal service of providing mobile telephone services the Complainant
offers the following services:

<DIGIFONE BEELINE>: this is the provision of a private corporate network linking office and
mobile calls telephony. 

<DOT DIGIFONE ONLINE>: this service allows access to internet information through
WAP?enabled mobile telephones.

<ESAT DIGIFONE SPEAKEASY>: a prepaid mobile telephone service aimed at personal
users.

<DIGIFONE EASYDATA>: this service allows access to one’s personal computer via a
mobile telephone.

In addition, the Complainant has registered one Irish registered device mark <DIGIFONE
BUSINESS ADVANTAGE> registration no. 207421, registered on 6th October 1997. The
Complainant also has a number of trade mark applications pending before the Irish Trade
Marks Office which consist of, or incorporate, the mark <DIGIFONE>.

There has been no Response or other submissions filed by the Respondent in these
Administrative Proceedings so this Administrative Panel must rely on the information
received by the Center from the Registrar, the submissions and evidence adduced in the
Complaint and the Respondent's brief e?mail of July 26, 2000 as the source of information
relating to the Respondent. There is very little information available to this Adminstrative
Panel about the Respondent save that the Registrar's records indicate that his is the
registrant of the said domain name and the Respondent claims to have assigned the domain
name to a third party.

The Complainant's solicitors first wrote to the Respondent on March 21, 2000 in relation to
this dispute and there followed a brief exchange of correspondence between the solicitors for
the Parties prior to the commencement of this dispute. 

5. Parties’ Contentions

A. The Complainant

With regard to the substantive issues in dispute, the Complainant asserts that each of the
three conditions in paragraph 4(a) of the Policy is satisfied: 

(i) The Complainant submits that the <digifonewap.com> domain name is identical or
confusingly similar to a trade mark in which the Complainant has rights.

In support of this position the Complainant submits that the domain name
<digifonewap.com> is confusingly similar to the Complainant's <DIGIFONE> mark,
comprising, as it does the top level domain and the Complainant’s mark with a <WAP>
suffix. It is submitted by the Complainant that the <WAP> suffix is generic and in itself would
not serve to distinguish goods, services.

The Complainant submits that it has rights in the <DIGIFONE> trade mark under Irish
common law based on the extensive use it has made of the mark since starting business in
March 1997, and the substantial reputation and recognition which the mark enjoys in Ireland
by virtue of its large customer base and its high profile advertising and promotional
campaigns. 

Further, on 1 December 1999 the Complainant launched a service allowing access to Internet
information through WAP?enabled mobile telephones. This new service was extensively
advertised and in the period November 1999 to June 2000, the Complainant spent
approximately IR£858,676 on advertising and promoting it. The Complainant submits that the
term <digifonewap> therefore comprises the Complainant's trade mark <DIGIFONE> plus a
description of a service recently made available by the Complainant.

It is submitted by the Complainant that the Complainant possesses intellectual property
rights in the <DIGIFONE> trademark/service mark based on its use of the mark in the Irish
market for mobile telephony services, and that such rights are sufficient to establish the
rights requirement in condition (i) of paragraph 4(a) of the Policy.

The Complainant refers for support for this conclusion to the WIPO panel decision in Adobe
Systems Incorporated v Domain OZ (Decision D2000?0057) where common law rights in
trade marks were deemed to satisfy the test set out in the Policy.

The Complainant submits that the Respondent should be considered as having no rights or
legitimate interests in respect of the <digifonewap.com> domain name.

At the time of initiation of this dispute procedure, the Respondent was not using the
<digifonewap.com> domain name in connection with a bona fide offering of goods or
services nor is there any evidence of demonstrable preparations to so use the domain name.
The domain name resolves to a www site containing an advertisement for the registering
body, Register.com. 

The Complainant submits that in correspondence with the Complainant’s solicitors, the
Respondent’s solicitors have indicated that the Respondent is setting up a business in the
United States however the Complainant submits that the Respondent is domiciled in Ireland
and no details of the proposed business have been given. The Complainant is not aware of
any business run by the Respondent which is commonly known by the domain name in
dispute. The domain name in dispute is not the legal name of the Respondent or to the
knowledge of the Complainant, of any entity with which the Respondent is lawfully
associated. The Respondent is not, nor ever has been, licensed by the Complainant to use
the <DIGIFONE> mark whether in connection with a domain name or otherwise. The
Respondent has no registered trade mark rights in the <DIGIFONE> mark. The Respondent
has no legitimate interest in the mark under Irish law.

The Complainant further submits that on the basis of the well?known nature of the
Complainant’s mark in Ireland, the absence of any legal right of the Respondent to the
domain name or the said Complainant's trademark <DIGIFONE>, the absence of any
evidence of any use of, or preparations to use the domain names in dispute, the Respondent
can not successfully put forward a claim to be using or preparing to use the domain name in
connection with a bona fide offering of goods or services. In a letter of 26 April 2000, the
Respondent’s solicitors concede that the Complainant "may have a proprietary interest in the
name ‘Digifone’".

According to the Complainant, the timing of the registration of the said domain name on
February 8, 2000, just over two months after the well?publicised launch of the Complainant’s
new WAP enabled services, points to the fact that the Respondent’s registration of the name
was prompted by the Complainant’s new services. 

It is submitted by the Complainant that the Respondent, as an Irish resident must have been
aware of the Complainant’s <DIGIFONE> mark, given the particularly strong reputation of
that mark in Ireland. This view of the Respondent’s state of knowledge at the time of the
registration is supported by the concession by the Respondent's solicitors that the
Complainant "may" have a proprietary interest in the mark. 

The Respondent in the letter sent by his solicitor to the solicitor for the Complainant in the
course of the above mentioned correspondence, claims to be planning a business venture in
the USA. The Complainant submits that this claim lacks credibility, given that the
Respondent is resident in Ireland. In any event, the Complainant submits that if the
Respondent is intending to establish an e?commerce venture over the Internet, with a
possibility of this venture being in the same field of activity as the Complainant’s (as is
indicated in the Respondent's solicitor’s letter of 26 April), that business will inevitably be
accessible from Ireland. 

According to the Complainant, if the Respondent’s intentions were bona fide and the
Respondent was genuinely intent on launching and developing a new business venture which
will be accessible in Ireland, it seems extraordinary that, as a business operating out of
Ireland, the Respondent chose a domain name which by the Respondent's own admission
would invite, at the very least, a passing off action.

It is submitted that in all the circumstances the Respondent has no rights or legitimate
interest to the domain name.

(ii) The Complainant further submits that the <digifonewap.com> domain name has been
registered and is being used in bad faith 

In support of this submission the Complainant states that the Complainant launched its WAP
enabled mobile telephone service on 1 December. The Respondent registered the disputed
domain name on 8 February 2000. It is the Complainant’s belief that this has been done,
either in the hope of disrupting the Complainant’s business or attempting to profit from an
association with the mark, or in the hope of extracting some payment for the domain name in
excess of the Respondent’s out?of?pocket expenses from the Complainant or from a
competitor and the Complainant asks the Panel to infer such a finding in the matter. The
Complainant points out that in their letter of 26 April 2000 the Respondent’s solicitors do not
rule out that the Respondent may seek to trade in a field of activity in which the Complainant
engages. 

The Complainant further submits that the Respondent also admits to making efforts to sell
the business, presumably with the domain name. It is submitted that, in circumstances
where there was no bona fide registration of the domain name, those facts demonstrate the
Respondent’s clear intention to profit from the registration of the domain name, by disputing
the business of the Complainant or by seeking to sell the domain name for profit to the
Complainant or a competitor of the Complainant at the Complainant’s expense.

It is submitted by the Complainant that the very well?known nature of the Complainant’s mark
precludes the possibility that the registration and use by the Respondent of the disputed
domain names is in some way honest, mistaken or non?exploitative. 

As yet, there are no reported decisions of the Irish superior courts on the issue of "bad faith"
registration of domain names. The Complainant submits that it is likely that an Irish court
would follow the principles laid down by the English Court of Appeal in the case of British
Telecommunications plc v. One in a Million [1998] 4 All ER 476 in determining a dispute on
the facts of this case (although the Complainant states that it should be emphasised that
this English decision would not be binding on an Irish court). 

The English Court of Appeal in that case held that a domain name which was inherently
similar to the name of a well?known mark could amount to an "instrument of fraud" sufficient
to justify an injunction against the registrant of the domain name, if, when viewed in the light
of the intentions of the registrant, the similarity of the names and all the surrounding
circumstances, a court concluded that the name was produced to enable passing off, was
adapted to be used for passing off and, if used, was likely to be fraudulently used. Aldous LJ
(for the Court of Appeal) expressed the test (at p.493) that "a name which will, by reason of
its similarity to another, inherently lead to passing off is an instrument of fraud". It is
submitted that the <digifonewap.com> registration amounts to an instrument of fraud
within that test.

In all the circumstances, the Complainant submits that the Respondent has registered and
used the <digifonewap.com> domain name in bad faith within the meaning of paragraph
4(a)(iii) of the Policy.

B. Respondent

There was no Response or other submissions received from the Respondent. 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:?

          (i) the domain name in dispute is identical or confusingly similar to a
          trademark or service mark in which the Complainant has rights; and(ii)
          the Respondent has no rights or legitimate interests in respect of the
          said domain name; and(iii) the said domain name has been registered
          and is being used in bad faith.

Complainants Trademark Rights

The Complainant has satisfied this Administrative Panel that it has common law rights in the
trademark and service mark <DIGIFONE> and further common law and statutory rights
certain other trademarks service marks and pending applications for registration of
trademarks and service marks incorporating the word <DIGIFONE>. 

The word <DIGIFONE> is the first and more distinctive element in the said domain name
<digifonewap.com> as the <wap> element is acknowledged by the Complainant to be
descriptive of WAP technology and not distinctive with respect to any rights of the
Complainant.

As both Parties to these proceedings are based in Ireland, it would appear to this
Administrative Panel to be appropriate to call in aid the rules of comparison developed in Irish
law when courts have been faced with the problem of deciding how to approach the question
of similarity of trademarks.

In Coca?Cola v. F. Cade & Sons Limited [1957] I.R. 196, the Irish Supreme Court adopted
and applied the test which had been formulated by Parker J. in Pianotist Co's Application
(1906) 23 R.P.C. 774 at 777 viz. : "You must take the two words. You must judge them, both
by their look and by their sound. You must consider the nature and kind of customer who
would be likely to buy those goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to happen if each of those trade
marks is used in a normal way as a trade mark for goods of the respective owners of the
marks."

In applying this test, this Administrative Panel is conscious that this test was adopted and
applied in the context of legislation which pre?dates the statutory provisions regulating trade
mark rights in Ireland and also that this is a test for comparison of trademarks whereas this
Administrative Panel is required by the Policy to compare a domain name with a trademark.
Nonetheless this Administrative Panel is satisfied that this is the appropriate test to be
applied in these Administrative Proceedings and concludes that the Complainant has
established that the domain name in dispute is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights.

Rights and Legitimate Interest of the Respondent

          The Policy sets out how the Respondent can demonstrate rights to and
          legitimate interests in the domain name in responding to a Complaint.
          Paragraph 4(c) of the Policy provides that any of the following
          circumstances, in particular but without limitation, if found by the
          Administrative Panel to be proved based on its evaluation of all evidence
          presented, shall demonstrate the Respondent's rights or legitimate
          interests to the domain name for purposes of paragraph 4(a)(ii) :(i) before
          any notice to the Respondent of the dispute, the Respondent's use of,
          or demonstrable preparations to use, the domain name in issue or a
          name corresponding to the said domain name in connection with a bona
          fide offering of goods or services; or(ii) the Respondent (as an individual,
          business, or other organization) has been commonly known by the said
          domain name, even if the Respondent has acquired no trademark or
          service mark rights; or(iii) the Respondent is making a legitimate
          non?commercial or fair use of the domain name, without intent for
          commercial gain to misleadingly divert consumers or to tarnish the
          trademark or service mark at issue.

The Complainant has established a prima facie case that the Respondent has not used or
made any demonstrable preparations to use the said domain name in connection with a
bona fide offering of goods or services. Furthermore the Complainant has established a prima
facie case that the Respondent has not been commonly known by the said domain name
and if the Complainant were to use said domain name in relation to any business venture in
Ireland, in any field of activity related to the Complainant's business, it is likely that such use
would become the subject of proceedings for passing off. Furthermore the Complainant has
established that there is no evidence of the Respondent making any legitimate
non?commercial or fair use of the said domain name. 

In the absence of any submissions from the Respondent, this Administrative Panel is obliged
to accept the Complainant's submissions and hold that the Complainant has no rights or
legitimate interest in the said domain name.

Bad Faith

Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) the following
circumstances, in particular but without limitation, if found by the Administrative Panel to be
present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain
name primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the Complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of the Respondent's
documented out?of?pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain name, provided
that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting
the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on?line location, by creating a
likelihood of confusion with the complainant's mark 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.

In the absence of any submissions by the Respondent, and given the evidence submitted by
the Complainant to establish that it has a significant reputation in Ireland and that the said
domain name was registered shortly after the Respondent launched services based on WAP
technology, this Administrative Panel accepts the Complainant's submissions that in the
circumstances of the present dispute, the very well?known nature of the Complainant’s mark
precludes the possibility that the Respondent registered the said domain name in good faith.

This Administrative Panel is satisfied that on balance, the Complainant has established that
the said domain name was registered and is being used in bad faith.

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this
Administrative Panel decides that the Respondent has registered the domain name
<digifonewap.com> identical or confusingly similar to the Complainant's service mark, that
the Respondent has no rights or legitimate interest in respect of that domain name and that
the Respondent has registered and used that domain name in bad faith. Accordingly, this
Administrative Panel decides that said domain name <digifonewap.com> should be
transferred to the Complainant.
  James Bridgeman
Presiding Panelist
Dated: August 1, 2000