Decision for dispute CAC-UDRP-101997

None of which the Panel is aware

Globally, the Complainant holds many hundreds of registered trade marks around the world that either comprise or incorporate the term "Vodafone". They include registered marks in the United Kingdom, the European Union, the United States and India.

By way of example, these marks include European Union registered trade mark 134890, filed on 4 April 1996 and proceeding to registration on 16 April 1998, for the work mark "Vodafone" in classes 9, 36, 37 and 38.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a mobile communications network operator with its headquarters in Berkshire, England, United Kingdom. It is one of the world’s largest mobile communications companies by revenue, operating across the globe through numerous subsidiaries and providing a wide range of communications services. The Complainant has ordinary shares traded on the London Stock Exchange and American Depository Shares traded on the NASDAQ. The Complainant has a market capitalisation of approximately £62.79 billion. The Complainant generated approximately £41bn in revenue and has 462 million customers.

The Complainant provides mobile networks in 26 countries and has partnership agreements in a further 57 markets.

Through extensive sales, advertising and marketing around the world, the Complainant has acquired a very substantial reputation in both the Vodafone brand and associated brands. The 2014 BrandFinance Global 500, the world’s most comprehensive brand value league table, ranked Vodafone as the 16th most valuable brand in the world and the 5th most valuable global telecommunications brand.

In addition to its registered trade marks, the Complainant owns over 200 domain names consisting exclusively of the mark VODAFONE as well as more than 400 domain names in which VODAFONE is used in combination with other words and/or numbers.

The disputed domain name was registered the same day as an announcement was made regarding a possible merger between Vodafone, the Complainant, and Idea, an Indian entity.

Following the lifting of the privacy shield it is apparent that there is a number of other WIPO Decisions which mirror the facts of the present case. Although the named company was different to the Respondent Contact Name and Administrative Contact Name was the same as with the disputed domain name; i.e. Mr Syed Hussain.

In particular, in case no. D2003-0748 Mr Hussain obtained a domain name relating to a proposed acquisition of companies. This was done on the day that the acquisition talks were made public.

Further the disputed domain name resolves to a page which features the use of what can be termed a “signal strength” device. This is a well-known device used on mobile phones and telecommunication services to reference signal strength. Its use in connection with the domain name containing VODAFONE can only be a reference to telecommunication service and serves to link the domain name to the Complainant.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name (the"Domain Name") is clearly confusingly similar (as that term is understood under the Policy) to a trade mark in which the Complainant has rights, in that it can only be sensibly understood as a reference to the Complainant VODAFONE mark in combination with the word "Idea" and the ".com" top level domain.

Further and notwithstanding that "Idea" is an ordinary English word, the Panel accepts that the Domain Name was registered in response to the Complainant's announcement of a possible merger between and Idea, an Indian entity.

First, the nature and fame of the Complainant mark is such that the use of the term "Vodafone" in the Domain Name can only have been intended as a reference to the Complainant, Second, the fact that the Domain Name was registered at the time or very shortly after the announcement of a possible merger with Idea, is highly unlikely to be coincidental. Third, the Panel accepts the Complainant's contention that an individual associated with the Respondent has a history of cybersquating and in particular of registering domain names associated with possible corporate acquisitions.

There is no right or legitimate interest in registering and holding a domain name in such circumstances. Further, such opportunistic registration and holding of a domain name is a clear and unambiguous example of bad faith registration and use.