One 2 One v. J.P. Styers
[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 CORE's 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 Complainant's 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 Respondent's activities are likely to cause detriment to the goodwill, reputation and distinctiveness of the Trade Marks.
(i) The Respondent is and was, prior to registration of the Domain Name, aware of the Complainant's 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 Respondent's 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 email@example.com. 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 Complainant's 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 Complainant's solicitors and with the Center. The Panelist considers the following of the Respondent's messages merit quotation in this Decision:-
(a) On April 14, 2000 to the Complainant's 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.
To this e-mail Bird & Bird replied on April 19, 2000, in the following terms:-
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:-
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,
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 Panelist's 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.
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