Domain name - Domain name dispute resolution policy - Irish Trademark - Irish Service Mark - Identical - Confusingly similar - Legitimate interest - Bad faith registration - Bad faith use - Passing off - Intellectual property rights - Fraud.

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.  Complainant also has a number of pending applications for registration of Irish trademarks which consist of, or incorporate, the mark DIGIFONE.  Respondent, a former employee of the Complainant, registered the domain name, digifone.net.

Held, Name Transferred to Complainant

The domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

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.  Respondent has arranged for the said domain name to default first to a site with a holding message which by its content suggested that the owner of the site was soon to offer services identical or similar to those of the Complainant and subsequently to a site dealing with issues relating among other things to the security of GSM technology which is used by the Complainant in the provision of its services.  It can then be inferred that the Respondent registered the domain name in a deliberate attempt to misleadingly divert consumers or to tarnish the Complainant’s mark in the hope of profiting from the situation.

Without any evidence to the contrary submitted by the Respondent, it can then 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
Registration Agreements referred to

Network Solutions 5.0 Service Agreement

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
Tourplan, DeC AF- 0096
British Telecom & Others v. One in a Million [1998] 4 All ER 476
Musicwww, Case No. WIPO D00-0001
Telstra, Case No. WIPO D2000-003
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 in this administrative proceeding is ESAT Digifone Limited, a company incorporated in Ireland, having its registered office at 76 Lower Baggot Street in the City of Dublin. 

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

The domain name in issue is <digifone.net>. The Registrar with which the domain name is Network Solutions, Inc.

The Respondent is Michael Fitzgerald trading as Telco?resources of Poststrasse 5, Unteruhldingen, 88690, Germany and Laytown, Co Meath, Ireland.

3. Procedural History

On June 15, 2000 the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in hard copy 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. Copies of the said Acknowledgment were sent at the same time to the Respondent by e?mail. On June 22, 2000 the Center sent a Request for Registrar Verification to Network Solutions
Inc., the Registrar of the said domain name. On June 30, 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 <digifone.net> domain name, provided the details of the registrant, the administrative contact, the billing contact and the technical
contact, confirmed that the Network Solutions 5.0 Service Agreement is in effect, 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 July 2, 2000 the Center sent a Notification of Complaint and Commencement of
Administrative Proceeding relating to the <digifone.net> 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 July 3,
2000 and that the Respondent was required to submit a Response to the Center on or before
July 22, 2000.

The Respondent failed to submit a Response and on July 25, 2000 the Center sent a
Notification of Respondent Default to the Respondent 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 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 telephony 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 investments in the marketing and promotion
of its mobile telephony services, with particular emphasis on the development of the
<DIGIFONE> 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 mainstay service of providing mobile telephony services the Complainant
offers the following value?added 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

There has been no Response submitted by the Respondent. 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).

5. Parties’ Contentions

A. Complainant

The Complainant requests this Administrative Panel to issue a decision that the contested
domain name be transferred to the Complainant. The Complainant asserts that each of the
three conditions in paragraph 4(a) of the Policy is satisfied: 

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

It is submitted that the name <digifone.net> domain name is identical to the Complainants
<DIGIFONE> trade mark and service mark, the addition of the <.net> element should be
disregarded.
The Complainant 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. 

In addition, the Complainant has registered the Irish device mark <DIGIFONE BUSINESS
ADVANTAGE>, registration number 207421, registered on 6th October 1997. Furthermore,
the Complainant submits that the Complainant also has a number of pending applications for
registration of Irish trade marks which consist of, or incorporate, the mark <DIGIFONE>.

It is submitted that the Complainant possesses intellectual property rights in the
<DIGIFONE> mark based on its use in the Irish market for mobile telephone services and
that such rights are sufficient to establish the rights requirement in condition (i) of para 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.

(ii) The Complainant submits that the Respondent should be considered as having no rights
or legitimate interests in respect of the <digifone.net> domain name. 

The Complainant submits that the Respondent is a former employee of the Complainant who
left the employ of the Complainant on 19 February 1998. The Respondent was fully aware of
the existence of the <DIGIFONE> mark and its extensive use by the Complainant. The
Respondent (as an individual business or other organisation) has not been commonly known
by the domain name. The domain name 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 or service mark rights in the <DIGIFONE> mark.
The Respondent has no legitimate interest in the mark under Irish law, nor does the
Respondent's use of the mark constitute an honest concurrent use or a fair use such as to
confer any intellectual property rights under Irish law.

The Complainant states that it wrote to the Respondent in February 2000 in relation to the
Respondent’s registration of the domain name at issue. At that time, the said domain name
<digifone.net> domain name defaulted to a www site which announced "information about
digital telephony coming soon". There was no evidence at that time that the Respondent was
actively engaged in supplying such services. At the time of initiation of this dispute
procedure, said domain name <digifone.net> resolves to a www site on which the public
post articles, information and questions relating to issues of Internet telecommunications and
national security, encryption, international espionage etc. A section of this www site
currently contains articles relating to GSM technology. According to the Complainant there is
no apparent monitoring authority as regards the contents of this site.
The Complainant submits that the Respondent can not maintain that he was using the
domain name in connection with a bona fide offering of goods or services in circumstances
such as these where he has registered the name of his former employer. Furthermore the
Respondent has arranged for the said domain name to default first to a site with a holding
message which by its content suggested that the owner of the www site was soon to offer
services identical or similar to those of the Complainant and subsequently to a site dealing
with issues relating among other things to the security of GSM technology which is used by
the Complainant in the provision of its services. 

The Complainant submits that in the circumstances the only reasonable inference is that the
registration of the domain name and the connection of the domain name to the sites referred
to above constitute deliberate attempts to misleadingly divert consumers or to tarnish the
Complainant’s mark in the hope of making some money out of the situation.

In February 2000, as soon as the Complainant became aware of the registration and use by
the Respondent of the said domain name <digifone.net>, the Complainant wrote to the
Respondent at the address which was at that time listed in Network Solutions Inc’s Whois
database as the address of the owner of the domain name <digifone.net>, asking the
Respondent to transfer ownership of the domain name to the Complainant. The Respondent
did not reply to this letter. 

It is further submitted by the Complainant that the Respondent is not making a legitimate
non?commercial or fair use of the domain name. The Respondent is fully aware of the
Complainant’s rights in the mark but has not sought to contact the Complainant to explain,
justify or seek permission for his behaviour.

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

(iii) The Complainant further submits that the said <digifone.net> domain name has been
registered and is being used in bad faith

The Complainant submits that it has had no connection whatsoever with the Respondent
since he left its employ on 19 February 1998. The Complainant has retained no relationship
whatsoever with the Respondent. The Complainant has not entered into any licensing
arrangement or joint venture with the Respondent in relation to any aspect of the
Complainant's business, including the registration of internet domain names. 

The Complainant refers to the Administrative Panel decision in the ICANN UDRP
Administrative Panel Decision DeC AF?0096 Tourplan wherein the setting up of a domain
name by a former employee which incorporated the company name of his former employer
was held to be sufficient evidence of bad faith under the Policy even where no offer of sale of
the site had been made by the Respondent. It is submitted that the reasoning in that
decision is of equal application here.

Given the content of the sites to which the Respondent has arranged for the said domain
name to resolve, it is submitted by the Complainant that there is a strong likelihood that
consumers will assume that the site is controlled or endorsed by the Complainant in
circumstances where the Complainant has no control over the content or presentation of
such www sites. The Complainant argues that consumers are very likely to be confused
when this domain name instead takes them to a www site other than a www site owned and
controlled by the Complainant.

The Complainant submits that if the Respondent genuinely intends to engage in the supply of
services similar to that of the Complainant, which the Complainant submits is a most unlikely
scenario given the structure of the telephone market in Ireland, and the Respondent sees
himself as a competitor to the Complainant, it is submitted that the registration of the domain
name and the setting up of a www site offering such services under the domain name would
constitute a deliberate attempt to disrupt the business of a competitor. 

The Complainant further submits that the Respondent registered the said domain name with
a view to preventing the Complainant from operating a www site incorporating its most
significant mark. 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 from the Complainant for the domain name.

The Complainant argues that the fact that the Complainant is a former employer of the
Respondent erases any possibility that the use is in some way honest, mistaken or
non?exploitative. It is submitted that the only reasonable inference to be drawn from the
registration of the mark by a recently departed employee in these circumstances is that the
registration is in bad faith. 

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
Telecom & Others v. One in a Million [1998] 4 All ER 476 in determining a dispute on the
facts of this case (although the Complainant accepts 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". The
Complainant submits that the <digifone.net> registration amounts to an instrument of fraud
within that test.

It is submitted by the Complainant that the lack of a bona fide explanation for the registration
of a domain name by a former employee incorporating his former employer’s most important
mark would be sufficient evidence of an intention to fraudulently use the mark to engage in
passing off, within the meaning of the One in a Million case, and the Complainant urges the
Panel to have regard to this decision when deciding this dispute.

The Complainant points out that a number of Administrative Panel decisions to date have
also considered the meaning of the phrase "registered and used in bad faith", in the context
of a Respondent registering a domain name but not obviously using it such as Musicwww
(WIPO Case D00?0001) and Telstra (WIPO Case D2000?003). 

It was accepted by implication in Musicwww (WIPO Case D00?0001) that the establishment
of a www site corresponding to the registered domain name would satisfy the "use"
requirement in the Policy and in Telstra (WIPO Case D2000?003) it was decided that in
certain circumstances the mere registration of a domain name in bad faith involves use of the
domain name in bad faith. In this case, the Respondent has used the domain name as an
address leading to www sites and it is submitted that these actions constitute sufficient use
of the domain name to satisfy the "registration and use" test. 

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

B. Respondent

There was no Response filed or submissions made by 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 <DIGIFONE> and further common law and statutory rights certain other
trademarks incorporating the word <DIGIFONE>. 

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. This Administrative Panel is confirmed in this
view by the fact that the Complainant has established that the Respondent was formerly an
employee of the Complainant and there is no question but that the Respondent would have
been aware of the Complainant's reputation and the use by the Complainant of the word
<DIGIFONE> as part of its corporate name and as a distinctive element in the Complainants
trademarks.

          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 that the Respondent is a former employee of the Respondent with no rights
or legitimate interest in the said domain name, this Administrative Panel concludes that the
Complainant is correct in asserting there is sufficient evidence to raise an inference that the
Respondent registered and is using the said 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. 

In the absence of any rebuttal by the Respondent, 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. However this Administrative Panel makes no determination as to
the Complainant's allegation that the <digifone.net> registration amounts to an instrument
of fraud. 

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
<digifone.net> 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 <digifone.net> should be transferred
to the Complainant.
  James Bridgeman
Presiding Panelist
Dated: August 2, 2000