[Indexed as: One 2 One v. Styers]
[Indexed as: one2one3g.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0293
Commenced: 13 April 2000
Judgment: 20 June 2000
Presiding Panelist: Christopher Tootal
Domain name Domain name dispute resolution process Trademarks Confusingly similar Legitimate interests Bad faith Primary purpose Recognition.
Complainant was registrant of trademark ONE2ONE. Respondent registered the domain name, one2one3g.com. Complainant argued that the name is identical or confusingly similar to its registered marks, subject to the addition of 3g. However, 3g is commonly known by the public as an acronym for UK telephone operators such as the Complainant. Complainant also alleged that Respondent registered and used the name in bad faith.
Held, Name transferred to Complainant.
Complainant must establish both bad faith registration and bad faith
use.
The addition of 3g suggests that this name emanates from the Complainant,
which is widely known throughout the UK in the field of mobile phones.
Thus, the registered domain name is confusingly similar to the trademark.
The Respondent has no legitimate rights with respect to the domain
name. Respondent registered the domain name with the sole intention
of selling it to Complainant for profit. This is sufficient to demonstrate
a lack of legitimate rights on behalf of Respondent.
Respondent invited a bid from Complainant for the name for an amount
in excess of its direct out-of-pocket expenses. This demonstrates
both bad faith registration and bad faith use.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Tootal, Panelist: -
1. The Parties
The Complainant in this administrative proceeding is One 2 One, a UK
partnership comprising Deutsche Telekom Mobile Number 1 Limited, One 2
One Personal Communications Limited and Deutsche Telekom Mobile No. 5 Limited
of Imperial Place, Maxwell Road, Borehamwood, Hertfordshire WD6 1EA, United
Kingdom represented by Bird & Bird, solicitors, of 90 Fetter Lane,
London, EC4A 1JP, United Kingdom. The Respondent is Jason P. Styers of
59 The Marian Way, Netherton, Liverpool, Merseyside L30 3TB, United Kingdom.
2. The Domain Name and Registrar
The domain name in issue is "one2one3g.com ("the Domain Name"), the
Registrar of which is CORE Internet Council of Registrars ("CORE").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on
April 13, 2000, an e-mail and on April 17, 2000, a hard copy of the Complaint
and accompanying documents. The Center verified that the Complaint satisfies
the formal requirements of the ICANN Uniform Domain Name Dispute Resolution
Policy ("the Policy"), and the Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the Supplemental Rules). The Complainant made
the required payment to the Center. On May 3, 2000, the Center formally
notified the Respondent that this administrative proceeding had been commenced,
and that date is the formal date of the commencement of this administrative
proceeding.
On April 20, 2000, the Center transmitted via e-mail to CORE a request
for registrar verification in connection with this case. On April 27, 2000,
CORE transmitted via e-mail to the Center COREs Verification Response,
confirming that the registrant is J.P. Styers, www footballdomains co uk,
of 59 Marian Way, as above.
No formal Response has been received by the Center, but as will be
apparent from what follows, the Respondent has been fully aware of the
Complaint, and has commented on it in various e-mails.
4. Factual Background
The Complaint is based on the following trade marks (the "Trade Marks"),
both of which are registered with the UK Trade Marks Registry and OHIM
in the name of the Complainant (formerly known as Mercury Personal Communications):
Mark Registration No. Class Filing Date
ONE2ONEONE 2 ONE GB2106621A 9,16,18,21,25,26,28 01.08.96
ONE2ONE EM30429 9,3,38 01.04.96
The Trade Marks are registered for a wide variety of goods, but for present purposes it is sufficient to note that these include "telephone and telecommunications apparatus and instruments".
5. The Complaint
The grounds set out in the Complaint can be summarized as follows:-
(a) The Domain Name is confusingly similar to the Trade Marks. It is
identical to the Trade Marks subject to the addition of "3g". The addition
of "3g" is the addition of an element recognized in the telecommunications
industry and amongst the general public owing to the media coverage of
the applications for these licences by UK mobile telephone operators such
as the Complainant as meaning "third generation", for which "3G" is the
commonly known acronym. Accordingly, the Domain Name is confusingly similar
to the Trade Marks because it indicates a 3G service from the Complainant.
(b) The Respondent has no rights or legitimate interests in respect
of the Domain Name. The Respondent is not licensed or otherwise authorised
by the Complainant to use the Trade Marks.
(c) The Domain Name has been registered and is being used by the Respondent
in bad faith. The Respondent knew of the Complainants trade mark rights
and nevertheless applied for the Domain Name in spite of that knowledge.
The Respondent has sought commercial gain as a result and the Respondents
activities are likely to cause detriment to the goodwill, reputation and
distinctiveness of the Trade Marks.
Particulars
(i) The Respondent is and was, prior to registration of the Domain
Name, aware of the Complainants rights in the Trade Marks.
(ii) The Respondent has registered the Domain Name primarily for the
purpose of selling it to the Complainant or to a competitor of the Complainant
or other third party for valuable consideration in excess of his out-of-pocket
costs directly related to the Domain Name. The home page of the Respondents
www.footballdomains.co.uk website (also reached via www.footballdomains.com)
contains an advertisement for non-football domain name sales. When clicking
on this advertisement one is linked to a page of the website which offers
many non-football domain names for sale. Apart from one2one3g.com, the
list of domain names for sale includes ericsson3g.com, vodafone3g.co.uk
and nokia4g.co.uk/.com. Ericsson, Vodafone and Nokia are all names of other
businesses in the mobile telephone communications industry. Under the "Contact
Information and Making Bids" link from the home page of this website one
is told to submit bids for the domain names listed to jas[email protected].
The website further informs users that a decision on the bid should be
made within 24 hours and if accepted, payment details can be made and the
domain name transferred as quickly as possible. Footballdomains.com is
described on the website as having been recently set up "for the sale of
interesting
names to the public or business sector".
(iii) On 20 February, 2000 the Respondent contacted the Complainant
by e-mail indicating that he had the Domain Name for sale and asking whether
the Complainants marketing department would be interested in making a
bid for the same. The Respondent also indicated in this e-mail that he
had already sold the Nokia3g, Ericsson3g and Vodafone3g domain names.
(iv) As explained above, "3G" is a commonly known acronym for "third
generation" and is a reference to the new mobile telephone licenses to
be awarded by the (U.K.) government to the five highest bidders from among
the various telecommunications service providers (one of which is expected
to be the Complainant). The addition of "3g" to the ONE 2 ONE word mark
in the Domain Name would thus have a clear meaning to the general public,
trade and relevant businesses in terms of mobile telecommunications services.
By registering the Domain Name, the Respondent has prevented the Complainant
from reflecting its Trade Marks in connection with 3G services in a corresponding
domain name. As set out above, the Respondent has engaged in a pattern
of such conduct in terms of registering 3G domain names in connection with
the trade marks of other mobile telecommunications service providers.
(v) By using the Domain Name the Respondent intentionally attempts
to attract for financial gain Internet users to his website by creating
a likelihood of confusion with the Trade Marks as to the source, sponsorship,
affiliation or endorsement of his website. This is evidenced by the fact
that should Internet users attempt to visit the one2one3g.com website,
they are automatically redirected to the footballdomain.com website.
6. The Response
As mentioned above, no formal Response has been submitted by the Respondent.
However, he has communicated by e-mail, both with the Complainants solicitors
and with the Center. The Panelist considers the following of the Respondents
messages merit quotation in this Decision:-
(a) On April 14, 2000 to the Complainants solicitors:-
"Subject: Domain Sale
I am writing with regard to a letter I have just received on www.one2one3g.com
I do not wish to sell this domain to a third party and will only do
business with one2one. I have speculated on purchasing these domains to
sell to the company in question and not members of the public or other
organisations.
I am not out to hold one2one to ransom and I request a fair bid and
I will transfer the domain to one2one straight away. Surely in hindsight
one2one should of [sic] bought this domain a long time ago and not left
it for sale.
Contact me soon.
Jason Styers."
To this e-mail Bird & Bird replied on April 19, 2000, in the following
terms:-
"One2one3g.com
We act for One 2 One and write further to your e-mail of 14 April 2000.
Our client is prepared to pay you the sterling equivalent of $35 for
the transfer of the above domain name, plus any official transfer fee (on
production of evidence of the same). The $35 is calculated on the basis
of Network Solutions one year registration fee. Alternatively, our client
will pay you the sterling equivalent of the $70 fee (plus any transfer
fee) if you paid for the standard two year term on registration. If you
used an agent for registration then our client is also prepared to reimburse
the agents fees (on production of a valid receipt).
Please let us know the costs you have incurred in this respect and
we can then discuss the arrangements for the transfer by you of the domain
name to our client. On completion of such transfer, our client will withdraw
the Complaint they have made to WIPO under the Uniform Domain Name Dispute
Resolution Policy."
The Respondent replied on 20 April, 2000, as follows:-
"Subject: One2one3g.com
I am replying with regard to your recent reply on the above domain.
I realise one2one have just bid around 2.5billion for the 3g network
and I am getting offered no incentive to sell the one2one3g domain.
I have only speculated on buying these domains to sell back to the
relevant companies for a nominal profit considering there [sic] worth and
I am sure One2One realise the worth of this domain.
This domain will generate millions of pounds worth of profit a year
to one2one and surely the marketing department should have purchased it
a long time ago. I plan to keep the domain as long as possible unless I
get an offer soon."
(b) On April 23, 2000 the Respondent sent a further e-mail to Bird
& Bird:-
"Subject: Re: WIPO Domain Name Case D2000-0293
I have now read this recent dialogue and I have no intention of trading
on the One2One name.
I will only sell the domain to One2One and surely for having the foresight
to purchase this extremely valuable commodity I deserve a payment for acting
as an agent for One2One as such.
I would like One2One to consider a bid soon, if they can bid around
2.5billion pounds sterling for the One2One3g contract it is a small price
to pay me a small fee for purchasing this domain."
(c) On May 2, 2000, the Respondent e-mailed Bird & Bird once again,
as follows:-
"Subject: Re: WIPO Case D2000-0293
With regard to the Internet Doamin [sic] www.One2One3g.com
I will transfer the domain within 7 days if I do not receive a bid.
I will be transfering the domain for no fee so I will not be trading on
the One2One name.
It will be a lot easier to make a payment to me and I realise the third
generation bids have just been sorted out.
I am in negotiations for my other 3g domains and the response has been
a lot more responsive from other companies."
(d) Then on May 10, 2000, the Respondent sent to the Center an e-mail
which might be regarded as a Response:-
"Subject: Domain Dispute with One2One Complaint No. D2000-0293
Dear Mr. Wilbers,
I am writing with regard to my defence with the current dispute between
myself and One2One. I bought the said domain with the sole intention of
selling to One2One for a profit by speculating that the company would get
the 3g contract but as I purchased the domain with no trouble I thought
it would be within my rights to do so.
I believe that there is no trademark by the name of One2One3g but
only as One2One so is it within there [sic] rights to just use bully boy
tactics to take this domain without payment after spending £4 billion
pounds sterling on the 3g network.
I am not willing to sell the domain to any other rival company or any
other persons except the One2One company. I hope to get a payment from
One2One for this domain for purely speculating on the purchase and they
should be having stern words with there [sic] marketing company for not
purchasing the domain themselves rather than bringing down the small man
in the street.
This domain will bring millions of pounds worth of custom to One2One
and I really think this decision should be awarded in my favour. I believe
they have only been forwarding you email I have sent them that puts the
onus on me being the person in the wrong and leaving theselves in a good
light so they are awarded the my [sic] domain.
Thanks for your time Mr. Wilbers,
Jason Styers."
7. Discussion
The onus is on the Complainant to prove each of the three elements
set out in paragraph 4(a) of the ICANN policy, as follows:-
(i) the domain name is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect
of the domain name; and
(iii) the domain name has been registered and is being used in bad
faith.
As to element (i), the Domain Name comprises two elements, "one2one"
and "3g", and is accordingly not identical to the trade mark ONE2ONE. However,
the Panelist has no hesitation in deciding that the Domain Name is confusingly
similar to that trade mark. The addition of the letters "3g" (for "third
generation") as a suffix simply suggests that this is a domain name emanating
from the Claimant, which is very well known throughout the United Kingdom
in the field of mobile telephones.
As to element (ii), it is plain from the e-mail quoted in paragraph
6(d) above that the Respondent registered the Domain Name as a speculative
venture ("with the sole intention of selling to One2One for a profit").
This frank admission alone is sufficient, in the Panelists view, to demonstrate
that the Respondent has no rights or legitimate interests in respect of
the Domain Name. Clearly, the Respondent cannot establish any of the circumstances
set out in paragraph 4(c) of the Policy.
Lastly, has the Complainant established element (iii)? Paragraph 4(b)(i)
of the Policy indicates to a respondent that the following circumstances
shall be evidence of registration and use of a domain name in bad faith:-
"circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs
directly related to the domain name;"
The Panelist concludes that the conduct of the Respondent set out in
paragraph 6 above, coupled with the fact (see paragraph 5(c)(iii) above)
that the Respondent as early as February 20, 2000 invited a bid from the
Complainant, is clear evidence establishing both registration and use in
bad faith. The Panelist draws particular attention to the e-mail from the
Respondent dated 20 April (see paragraph 6(a) above) which makes clear
that he has been seeking a payment well in excess of his documented out-of-pocket
costs.
8. Decision
In the light of the findings in paragraph 7 above, the Panelist concludes
that:-
· the domain name "one2one3g.com" is confusingly similar to
the trademark ONE2ONE of the Complainant;
· the Respondent has no rights or legitimate interests in the
domain name;
· the domain name has been registered and is being used in bad
faith.
Accordingly, the Panelist orders that the domain name "one2one3g.com"
be transferred to the Complainant, ONE 2 ONE.
Domain Name Transferred